Question: JCW Investments, Inc. v. Novelty, Inc., 482 F.3d 910 (7th Cir. 2007)
Meet Pull My Finger® Fred. He is a white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white tank top and blue pants. Fred is a plush doll and when one squeezes Fred's extended finger on his right hand, he farts. He also makes somewhat crude, somewhat funny statements about the bodily noises he emits, such as "Did somebody step on a duck?" or "Silent but deadly." Fartman could be Fred's twin. Fartman, also a plush doll, is a white, middle-aged, overweight man with black hair and a receding hairline, sitting in an armchair wearing a white tank top and blue pants. Fartman (as his name suggests) also farts when one squeezes his extended finger; he too cracks jokes about the bodily function. Two of Fartman's seven jokes are the same as two of the 10 spoken by Fred. Needless to say, Tekky Toys, which manufactures Fred, was not happy when Novelty, Inc., began producing Fartman, nor about Novelty's production of a farting Santa doll sold under the name Pull-My-Finger Santa. Tekky sued for copyright infringement, trademark infringement, and unfair competition and eventually won on all claims. The district court awarded $116,000 based on lost profits resulting from the copyright infringement, $125,000 in lost profits attributable to trademark infringement, and $50,000 in punitive damages based on state unfair competition law.
The district court then awarded Tekky $575,099.82 in attorneys' fees. [W]e affirm.
I Somewhat to our surprise, it turns out that there is a niche market for farting dolls, and it is quite lucrative. Tekky Toys, an Illinois corporation, designs and sells a whole line of them. Fred was just the beginning. Fred's creators, Jamie Wirt and Geoff Bevington, began working on Fred in 1997, and had a finished doll in 1999. They applied for a copyright registration on Fred as a "plush toy with sound," and received a certificate of copyright on February 5, 2001; later, they assigned the certificate to Tekky. In the meantime, Tekky sent out its first Fred dolls to distributors in 1999. By the time this case arose, in addition to Fred, Tekky's line of farting plush toys had expanded to Pull My Finger® Frankie (Fred's blonde, motorcycle-riding cousin), Santa, Freddy Jr., count Fartula (purple, like the Count on Sesame Street), and Fat Bastard (character licensed from New Line Cinema's "Austin Powers" movies), among others. By March 2004, Tekky had sold more than 400,000 farting dolls. Novelty, a privately held Indiana corporation, is owned by Todd Green, its president. Green testified in his deposition, "any time we'd create an item, okay, we try to copy-or try to think of some relevant ideas."
Novelty personnel go to trade shows and take pictures of other companies' products, seeking "ideas" for their own. In early 2001, Green visited the Hong Kong showroom of TL toys, a manufacturer of Tekky's Fred doll, and he spotted Fred. In his deposition, Green testified that he might have photographed Fred since "[i]t wouldn't be unusual for us to photograph everything we see." Green admits that his idea for Fartman was based on Fred and that he described his idea to Mary Burkhart, Novelty's art director, who prepared a drawing based on Green's description. According to Burkhart, Green wanted "a plush doll that would ... fart and shake .... And make a sound ... a hillbilly-type guy, sitting in a chair that would fart and be activated by actually pulling his finger." Typically, Novelty would assign the job of drawing a new product to an artist, such as Burkhart, and the artist would then take her drawing to Green for his approval. That was the procedure it followed for Fartman. Novelty began to manufacture plush farting dolls around October 8, 2001; the first doll it released was the one it called Pull-My-Finger Santa. Fartman hit the stores one month later, on November 5, 2001. Tekky first learned of Fartman in March 2002; three months later it filed this suit. In September 2002, the district court granted a preliminary injunction, halting Novelty's sales of Fartman and his smaller relative Fartboy. [Tekky won at trial, and Novelty filed this appeal.]
II A We begin with the district court's finding that Novelty violated Tekky's copyright when it created Fartman. To establish copyright infringement, one must prove two elements: "
(1) ownership of a valid copyright, and
(2) copying of constituent elements of the work that are original."
What is required for copyright protection is "some minimal degree of creativity," or "the existence of intellectual production, of thought, and conception." Generally, copyright protection begins at the moment of creation of "original works of authorship fixed in any tangible medium of expression," including "pictorial, graphic, and sculptural" works and sound recordings. A work is "fixed" in a tangible medium of expression "when its embodiment in a copy is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." The owner of a copyright, may obtain a certificate of copyright, which is "prima facie evidence" of its validity. Once it is established that a party has a valid copyright, whether registered or not, the next question is whether another person has copied the protected work. Copying may be proven by direct evidence, but that is often hard to come by. In the alternative, copying may be inferred "where the defendant had access to the copyrighted work and the accused work is substantially similar to the copyrighted work."
It is not essential to prove access, however. If the "two works are so similar as to make it highly probable that the later one is a copy of the earlier one, the issue of access need not be addressed separately, since if the later work was a copy its creator must have had access to the original." "The more a work is both like an already copyrighted work and-for this is equally important-unlike anything that is in the public domain, the less likely it is to be an independent creation." If the inference of copying is drawn from proof of access and substantial similarity, it can be rebutted if the alleged copier can show that she instead "independently created" the allegedly infringing work. "A defendant independently created a work if it created its own work without copying anything or if it copied something other than the plaintiff's copyrighted work." Novelty contends that the district court protected too much of Tekky's toy-not just the expression but the idea or common elements known as scenes a faire, which we defined in [an earlier case] as "incidents, characters or settings which are as a practical matter indispensable or at least standard, in the treatment of a given topic." Novelty also takes issue with the district court's finding that it had access to Fred, that Burkhart copied rather than independently created Fartman, and that Fred and Fartman were substantially similar.
As we explain below, we are unpersuaded. Tekky had a valid copyright in Fred, Novelty (the company) indisputably did have access to Fred, and the two dolls are so similar that the inference of copying even without access is irresistible. Novelty does not argue that Tekky lacks a valid copyright in Fred or that Fred is so lacking in creativity that a copyright could not attach. Indeed, Fred is a far cry from a noncreative compilation of facts such as the telephone book in [Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)]. Here, we have a creative doll and a valid copyright registration. There is no doubt that there is a valid copyright. How much creativity Fred reflects and what ideas he embodies (as opposed to the way he expresses those ideas) merely help us to decide whether we can infer copying from substantial similarity. It is notable that Green, Novelty's president, admits that he saw and perhaps photographed Fred, and that Fred gave him the idea for Fartman. While Burkhart denies having seen Fred or even a picture of him, she drew the model for Fartman at Green's direction.
Moreover, Fred was already on the market in the United States at the time Fartman was created. In Moore v. Columbia Pictures Industries, Inc., 972 F.2d 939, 942 (8th Cir. 1991), the Eighth Circuit found that a "reasonable possibility of access can be established under the ‘corporate receipt doctrine,'" under which: if the defendant is a corporation, the fact that one employee of the corporation has possession of plaintiff's work should warrant a finding that another employee (who composed defendant's work) had access to plaintiff's work, where by reason of the physical propinquity between the employees the latter has the opportunity to view the work in the possession of the former. In this case, Novelty's president saw Fred, directed that the artist draw a figure that looks like Fred, and from that drawing approved the manufacture of Fartman. On those facts, the corporate receipt doctrine may just be icing on the cake; the fact that Green directed Burkhart as she created the drawing, rather than taking pencil in hand and sketching it himself, is immaterial. Novelty plainly had access to Fred and used that access in the manufacture of Fartman. Even if access existed, Tekky had to show substantial similarity between the two items in order to support an inference of copying. The test for substantial similarity is an objective one.
We look at the dolls themselves to determine substantial similarity. The similarities between Fred and Fartman go far beyond the fact that both are plush dolls of middleaged men sitting in armchairs that fart and tell jokes. Both have crooked smiles that show their teeth, balding heads with a fringe of black hair, a rather large protruding nose, blue pants that are identical colors, and white tank tops. On the other hand, Fartman has his name emblazoned in red across his chest, his shoes are a different color from Fred's, as is his chair, and Fartman wears a hat. In the end, despite the small cosmetic differences, the two dolls give off more than a similar air. The problem is not that both Fred and Fartman have black hair or white tank tops or any other single detail; the problem is that execution and combination of features on both dolls would lead an objective observer to think they were the same. We conclude that no objective person would find these dolls to be more than minimally distinguishable. To the contrary, they are substantially similar. That, in combination with Green's access, compels an inference of copying. Indeed, the dolls are so similar that an inference of copying could be drawn even without the evidence of access. Novelty contends that rather than copy, it merely made a similar doll based on the same comic archetype, that of "a typical man wearing jeans and a T-shirt in a chair doing the ‘pull my finger' joke."
That, Novelty argues, is the idea, not the expression, and the reason that the two dolls are similar is they are both based on that idea. The district court found that Novelty tried to shoehorn too much into the "idea" and that the only idea here is that of a "plush doll that makes a farting sound and articulates jokes when its finger is activated." As the district court put it: Fred-a smiling, black-haired balding Caucasian male, wearing a white tank top and blue pants, reclining in a green armchair, who makes a farting sound, vibrates and utters phrases such as "Did somebody step on a duck?" and "Silent but deadly" after the protruding finger on his right hand is pinched-is plaintiff's expression of that idea. It is, of course, a fundamental tenet of copyright law that the idea is not protected, but the original expression of the idea is. Although it is not always easy to distinguish idea from expression, by the same token the task is not always hard. Novelty urges that the similarity of the two dolls reflects the fact that Fred himself is only minimally creative, representing a combination of elements that were in the public domain or were scenes a faire. The problem with this argument is that the very combination of these elements as well as the expression that is Fred himself are creative.
Novelty wants us to take the entity that is Fred, subtract each element that it contends is common, and then consider whether Novelty copied whatever leftover components are creative. But this ignores the fact that the details-such as the appearance of Fred's face or even his chair-represent creative expression. It is not the idea of a farting, crude man that is protected, but this particular embodiment of that concept. Novelty could have created another plush doll of a middleaged farting man that would seem nothing like Fred. He could, for example, have a blond mullet and wear flannel, have a nose that is drawn on rather than protruding substantially from the rest of the head, be standing rather than ensconced in an armchair, and be wearing shorts rather than blue pants. To see how easy this could be, one need look no further than Tekky's Frankie doll, which is also a plush doll, but differs in numerous details: he is not sitting, and he has blond hair, a tattoo, and a red-and-white striped tank. Frankie is not a copy of Fred. Fartman is. We have no trouble concluding that the district court properly granted partial summary judgment to Tekky on the issue of liability for copyright infringement. *** We AFFIRM the judgment of the district court.
QUESTIONS FOR DISCUSSION FOR CASE 2.4
1. Why is a plush doll copyrightable subject matter?
2. What is the "idea" behind Fred? What is the "expression" of that idea? How are these concepts relevant to the inquiry into whether Novelty infringed on Tekky's copyright in Fred?
3. Was it necessary for Tekky to prove that Novelty had access to Fred? Why or why not? Was it necessary for Tekky to prove substantial similarity between Fartman and Fred? Why or why not?
4. What is the "corporate receipt" doctrine? How does it apply in this case?