In affirming a grant of partial summary judgment on the issue of liability for copyright infringement, the U.S. Court of Appeals for the Seventh Circuit found the particular embodiment of "Pull My Finger® Fred," a farting plush doll, protected by copyright and thus, infringed by defendant’s copying of plaintiff’s protected work. JCW Investments, Inc. v. Novelty, Inc., Case No. 05-2498 (7th Cir., Mar. 20, 2007) (Wood, J.).
The plaintiff, doing business as Tekky Toys, designs and sells a line of "farting dolls." "Pull My Finger® Fred" was its first such doll. The creators applied for and received a copyright registration on Fred, which they subsequently assigned to Tekky. The defendant, Novelty, manufactures and sells a similar product entitled "Fartman." As described by Judge Wood, "Fartman could be Fred’s twin." Tekky first learned of Fartman in March 2002, and it filed suit three months later, alleging copyright infringement, Lanham Act trademark infringement (for use of the phrase "Pull My Finger") and Illinois unfair competition. Tekky won on all claims, after finding Novelty liable for willful trademark infringement the district court awarded Tekky $50,000 in punitive damages. Novelty appealed.
Novelty argued that the district court’s protection of Tekky’s doll extended beyond the expression to the common elements knows as scenes a faire. Novelty also challenged the district court’s finding that it had access to Fred, that defendant’s toy was copied from Fartman (rather than independently created) and that the two toys were "substantially similar." The Seventh Circuit was not persuaded.
To prove copyright infringement, one must establish two elements: ownership of a valid copyright and copying of constituent elements of the work that are original. Although copying may be proven by direct evidence, it may also be inferred "where the defendant had access to the copyrighted work and the accused work is substantially similar." Here, Tekky had a valid copyright in Fred, a fact that raised presumptions of ownership and validity which Novelty never challenged. Although Novelty’s president admitted to having access to Fred, Tekky still had to show substantial similarity. The Seventh Circuit concluded that "no objective person would find these dolls to be more than minimally distinguishable." In rejecting Novelty’s claim that it was merely copying ideas, the Court stated that "[i]t 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 middle-aged farting man that would seem nothing like Fred."
On Tekky’s claim that it should receive punitive damages based on its state unfair competition claim, Novelty argued that the Lanham Act preempts the award of punitive damages under Illinois state law. The Court affirmed the district court, reasoning that had Congress intended the Lanham Act to displace state punitive damage remedies, it would have "acted more clearly."
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
