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Just as children outgrow their toys, the toys themselvescan outgrow their copyrights. That was the message the 2nd U.S. Circuit Court of Appeals sent last week in ruling that a big doll did not infringe on asmaller doll’s copyright, even though the big doll was derived from the smallerdoll’s enlarged version. The controversy centered on a 4-foot-tall rag doll made bytoy manufacturer Goffa International. The plaintiff, Well-Made Toy Manufacturing Corp., producesrag dolls in two sizes, a small doll and a grown-up version the same size asGoffa’s doll. Well-Made copyrighted only the smaller version, but in itssuit it argued Goffa’s doll infringed because it was a derivative of aderivative, or “transitively derivative” of the plaintiff’s smallerdoll, regardless of any lack of substantial similarity between the two. The court disagreed, ruling in Well-Made Toy Mfg. Corp.v. Goffa Int’l Corp., that evenif Goffa’s doll is a derivative of the bigger doll, “it does not followthat Goffa violated Well-Made’s right to control the preparation of works”derived from the smaller one. Writing for a unanimous panel, Judge Robert D. Sack wrotethat the proper comparison was between Goffa’s doll and Well-Made’s littledoll. And comparing the two, the court found that they had “little incommon.” The other members of the panel were Judges Guido Calabresiand Nicholas G. Garaufis, an Eastern District of New York judge who was sittingby designation. So despite sharing a protectable similarity — its shape –with Well-Made’s bigger doll, the fact that Goffa’s doll did not share thatsimilarity with the little doll controlled, and there was no copyrightviolation, the court ruled. William A. Alper of Cohen, Pontani, Liberman & Pavane,who argued the case for the defendant, said the decision made sense, because aderivative is not a copy, since it incorporates parts of the original but makeschanges to it as well. As a result, “the further away you get from theoriginal, the less like the original it will be,” he said. But Gerard F. Dunne, who represented the plaintiff, saidthat the court overlooked an important point. “They missed the fact that actual copying was proved andunder � 106 [of the Copyright Act], that’s an infringement,” he said. In a first in the circuit, the appellate court also foundthat it lacked jurisdiction over an infringement action for the plaintiff’suncopyrighted bigger doll, since the features it shared with the smaller dollhad not been registered under the latter’s copyright. The lesson here is “spend the $30 bucks to registeryour copyright,” Alper said. But Dunne disputed that a copyright was needed for thebigger doll since it was “so clearly a derivative work.” DUELING DOLLS Well-Made started making a 20-inch rag doll in 1995, whichit named “Sweetie Mine,” and registered it with the copyright officethe following year, according to the lower court’s opinion, which set forth thefacts as referenced by the 2nd Circuit. Two years later, Well-Made developed a 48-inch version byphotocopying paper drawings of the smaller toy and then adjusting theproportions. This was done to preserve the doll’s aesthetic appeal, since asthe designer testified, simply enlarging the littler doll would have resultedin a “fat, very klutzy looking doll.” The product of Well-Made’s efforts was instead “anattractive, perky looking four-foot companion for a preteen child,” versusthe “sweet and cuddlesome” 20-incher appropriate for a toddler. The four-footer caught the eye of Goffa president DouglasSong, who had learned that it was selling well in the United States and decidedto introduce a competitor. Song sent his Shanghai factory a larger Sweetie Mine,as well as a Chinese knock-off as an example of “how nice other peoplemake it.” Based on the samples sent by Song and some of Goffa’sown dolls, the factory designed and began manufacturing the “HuggableLovable” for sale in the United States. In late 1998, Well-Made warned Goffa that it believed theHuggable Lovable infringed on its copyrights and in early 1999, Goffaredesigned its doll and ceased production of the allegedly infringing version. Well-Made sued its rival in the U.S. District Court inBrooklyn for damages it suffered in the interim, and the dispute landed beforeJudge Jack B. Weinstein, who issued the opinion that was affirmed by the 2ndCircuit last week. The case went to a bench trial, during which the judge satthe two bigger dolls in the jury box, where they were jokingly described asjurors by counsel. (Presumably the infant Sweetie Mine was recused on thegrounds of extreme youth.) In the decision that followed, Weinstein ruled that”where the pre-existing work is registered, but the derivative work isnot, a suit for infringement may be maintained as to protected elementcontained in the registered preexisting work but not as to any element originalto the unregistered derivative work.” The court then applied the test for copyright infringementunder Feist Publ’ns, Inc. v. Rural Tel. Serv. Co. It found that Well-Made owned a valid copyright to thelittle Sweetie Mine doll, meeting the first prong of the test. Goffa also directly copied “large parts” of thelarger Sweetie Mine that Song sent to his factory, satisfying the actualcopying prong of the Feist test. But Well-Made’s infringement claim fell short because itwas unable to establish a “substantial similarity” between theprotectable elements of its doll and the Goffa doll, Weinstein found. The judge found that the smaller Sweetie Mine “has aconsiderably younger, winsome look” than the Huggable Lovable, due todifferences in size, proportions, facial features and clothing. “Size matters,” the court wrote, quoting thesculptor Robert Morris. “It is obvious yet important to take note of thefact that things smaller than ourselves are seen differently than thingslarger.” Furthermore, the defendant’s doll, with its adult-likeproportions, “is not the expanded twin” of the smaller Sweetie Mine,with its infant proportions, “but more like its older sister or firstcousin,” the judge wrote. The doll’s faces were also dissimilar “in obvious andimportant respects,” the court wrote. While the Sweetie Mine sported a”sugary” face with an “expression of pleasantsatisfaction,” the Huggable Lovable had a “less sophisticatedlook” featuring an open-mouthed “expression of joy.” All in all, the lower court found, compared with the twoSweetie Mines, the Huggable Lovable “looks like a slightly less alert andattractive relative” of the bigger version, “but definitely not likea twin of either.” In conclusion, Weinstein found, “judgment fordefendant is required because small dolls, like humans, grow up withsubstantially changed proportions.”

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