Eden Toys, Inc. v. Marshall Field & Company
675 F.2d 498
2d Cir.
1982
Check Treatment

*2 LUMBARD, Wit, Before MANSFIELD and buyers, one of Marshall Field’s filed GRAAFEILAND, Judges. VAN Circuit several affidavits in connection with these a motions. Wit averred that while on rou- GRAAFEILAND, Judge: VAN Circuit March, purchasing trip tine to the Orient in appeal judg- This is summary toy an from a had been a he shown stuffed ment of the States District Court by Ryuo Kwang snowman manufactured York, for the of New Moolsan, Southern District producer plush toys. a Korean of J., Gagliardi, dismissing Eden Toys’ copy- expressed Wit interest snow- had an in this right infringement action. We affirm. requested man Ryuo Kwang and that Mool- change

san the material used for the scarf I and the hat. centering the of snowman’s agreed The Korean manufacturer to make nationally Eden Inc. is Toys, a known changes, placed the and Marshall Field a stuffed, plush of In toys. manufacturer changes order. that sizeable Wit denied designed began Eden to and manufac- were intended to increase resemblance ture toy a stuffed snowman. This snow- between the Korean Eden’s snowman and (Snowman I) tall, man was feet a two had products. cheeks, large shaped body, rosy diamond a hat and tattersall scarf. Eden copyrighted 16, 1981, opinion April In Judge an dated Snowman I in 1973. In Eden revised Gagliardi granted cross- Marshall Field’s its design, creating snowman a ver- smaller judgment. Although motion summary for significant changes. sion with The new upheld he of Eden’s validity copyrights, (Snowman II) squarish ap- was in he that Field not in- ruled Marshall had pearance hat, green a floppy with scarf and these Eden’s fringed copyrights because plush, bright red I’s buttons. Snowman snowmen and the Korean snowman were rosy and cheeks distinctive smile re- were Gagliardi substantially Judge similar. placed thin, by plain a white face and a I found and the Korean that Snowman tightly drawn mouth. Eden copyrighted anoth- snowman bore no resemblance to one Snowman II in 1979. er be- similarity and that whatever existed item, proved popular Snowman II a to be tween II the Korean product Snowman and and Eden sold a number the toys of to retail exclusively was com- result features department during stores 1978 Christ- he Accordingly, mon to all snowmen. dis- mas season. One of these appel- stores was complaint. appeal missed Eden’s This lee & In Company. January, Marshall Field only portion judgment cerns of the 1979, Eden supply offered to Marshall Field dismissing Eden’s II claim. Snowman with II Snowman for the 1979 Christmas season. Marshall Field responded to Eden’s II October, 1979, offer in stating no it longer purchase copyright II. To in- would Snowman establish claim Short- “ thereafter, ly fringement, plaintiff several of Eden’s ‘must show owner- employees by went to ship copying one Marshall Field’s valid stores and of a ” selling discovered it toy that was a stuffed defendant.’ Warner Brothers v. Ameri- Broadcasting snowman manufactured another compa- Companies, can ny. 1981) (quoting Novelty Textile ordinary to the observer

Mills, appear man would Corp., 558 F.2d Inc. v. Joan Fabrics fact that both are 1977)). solely Field from the Marshall result Novelty Textile Inc. copy- snowmen.1 validity does not contest the of Eden’s ****See Corp., supra, 558 F.2d at v. Joan right appeal. on this Fabrics 1093; Ltd., 360 Toy Corp. Ideal v. Fab-lu may established circum *3 Copying be 1021, (2d 1966). F.2d 1022 Cir. the defendant stantially by showing roughly two snowmen are While the copyrighted the work and that had access to size, concept feel” the same their “total and substantially similar. the two works are Warner substantially are different. See Novelty Textile Inc. v. Joan Fabrics Broadcasting Compa 1092, Brothers v. American Corp., supra, 558 F.2d at Arnstein v. nies, The head and supra, 654 F.2d at 211. Porter, (2d 1946). 154 468 F.2d Cir. body plaintiff’s shaped of snowman are sub access, Because Marshall Field has conceded form, stitching with the stantially in block only the issue this is whether before Court edges of each perpendicular ribs at the four Judge Gagliardi finding erred in a lack of body block. The and of defendant’s head The snowmen in similarity. substantial snowman are in the traditional rounded question being custody, now in our we have snowballs, shape stitching of with on each the benefit this of our own observations on side the Because of this differ and back. issue. shapes, plaintiff’s ence in snowman has protection copy The afforded face, is flat while the face of defendant’s righted only partic work covers the work’s rounded. idea, expression ular an not the idea of eyes Both have black button snowmen itself, Stein, 201, 217-18, Mazer v. 347 U.S. However, approximately xh" in diameter. 460, 470-471, (1954); 74 98 630 S.Ct. L.Ed. eyes plaintiff’s toy are about Vh" on Studios, A. Hoehling City A. v. Universal are apart, eyes while the on defendant’s (2d 1980); 618 F.2d 978 Cir. 17 U.S.C. has a apart. about \" Plaintiff’s snowman Thus, 102(b). question threshold is § “[t]he in diame small black button nose about xh" appellant’s design what characteristics of approximate ter. has a nose Defendant’s gained protection.” have Her ly have xh" in diameter. Both snowmen bert Jewelry Corp. Rosenthal v. Honora However, the total V-shaj>ed mouths. Co., Jewelry (2d 1974). 509 F.2d 65 Cir. lips The length plaintiff’s of the on is 1". Although process separating of the un total is The length of defendant’s FA". protected protected expres idea from the space lips the outer ends of the on between arduous, sion Reyher can sometimes be v. plaintiff’s snowman is about 7/«". The same Children’s Workshop, Television 533 F.2d and space on defendant’s is between IV2" 1976), 91 Cir. the instant case does 17/h". present in any regard. difficulties this For generations, countless children and the has two red buttons. Each snowman However, young at plaintiff’s approximately heart have built snowmen roll are FA" ing moist snow In and are made of a soft placing into balls and them to 2" diameter one atop objects clipped yarn. approxi the other. Dark colored Defendant’s are such lumps mately as of coal are then used to 1" in diameter and have a texture edge upper simulate top facial features and buttons. Bear more like felt. The ing toy in is about below plaintiff’s mind the traditional characteristics button on xh" snowmen, of all Judge green we in scarf that encircles its neck. find no error The Gagliardi’s upper button on defendant’s any similarity top edge conclusion that of the between below the black and white II and the Korean snow- is about lVz" Snowman granting Dis See Doran v. Sunset House The district court not err in sum- cial notice. did (S.D.Cal. mary tributing F.Supp. judgment receiving Corp., 197 944 without first evidence , 1961) Distribut on the nom. Sunset House characteristics common to all snowmen. aff'd sub Doran, (9th ing Corp. The traditional features of a snowman are ; 201(b)(1). (cid:127) generally judi- 1962) appropriate known and thus F.R.E. space they it scarf that wears. There is a violate circuit’s rule that products l'/i" plaintiff’s substantially between buttons on snowman if ordinary are similar “the space observer, to 2" and a 1%" defendant’s. unless he set out detect disparities would disposed be to overlook II floppy Snowman has a black hat set them, regard and their aesthetic appeal as back kelly green off its forehead and a the same. is enough; That and indeed it is scarf with white fringes. toy Defendant’s said, protection all that can be unless has a shaped black hat with a red band that against infringement to be is denied be- is shading eyes its a black and white purpose cause of variants irrelevant to the striped with fringes. scarf red The two for which the is intended.” Peter noticeably snowmen are made of different Fabrics, Weiner, Pan Inc. v. Martin material, plaintiff’s being softer and 1960) (L. Hand). F.2d The fluffier. key to ordinary observer test is similari- These numerous differences furnished *4 ties, Industries, not differences. Durham ample support for the district court’s find- Tomy Corp., (2d Inc. v. F.2d 630 913 ing that the two are snowmen not substan- 1980) quoting Novelty Cir. Textile Mills v. tially Industries, similar. Inc. Durham v. Joan Corp., Fabrics F.2d 558 1093 n.4 Tomy Corp., (2d 1980). 630 913 F.2d Cir. 1977). (2d Considering Cir. the “primary produce Marshall failure Field’s to snowmen, Mills, elements” of the Malden evidence that Korean snowman was Mills, Inc., Regency Inc. v. 626 F.2d Ryuo Kwang indepen Moolsan’s completely 1980), I think these are similar dent creation did contrary not mandate a toys and I toy buyers think will them find finding. independent Evidence of creation similar too. may be by introduced a defendant to rebut toy buyers The will have the two side plaintiff’s a prima infringe facie case of by comparison side for as we did. Nor will Novelty ment. v. Textile Inc. Joan they carry rulers to detect that the snow- Corp., n.2; supra, Fabrics 558 F.2d at 1092 widths, men’s lip lengths, spaces nose eye Co., Toys My-Toy Fisher-Price v. 385 and button by diameters differ fractions of F.Supp. (S.D.N.Y.1974). The ab pause an inch. will they Nor for serious sence of such evidence is not determinative investigation stitching of the different or however, of liability, when two are works No; average contours. observer’s not so substantially similar as to raise the glanee will on light one with the favor same inference copying. alleged Even if an on as They compo- other. share similar “ copy work, is on copyrighted based ‘a snowballs, (two buttons, scarf, sition two may legitimately defendant infringe avoid hat), they face share similar ex- facial ment intentionally making sufficient and, pressions, in general, they share the changes ain work which would otherwise same appeal.” “aesthetic regarded be as substantially similar to that ” It plaintiff is true that cannot plaintiff’s.’ Warner Brothers v. the “idea” of a Toys snowman. But Eden American Broadcasting Companies, supra, something special created in its current 654 F.2d at 210 (quoting 3 Nimmer *5 BLUE CROSS & BLUE SHIELD OF

CONNECTICUT, INC.,

Defendant-Appellee.

No. Docket 81-7671. Appeals, Court of States

Second Circuit.

Argued Feb. 1982. April

Decided snowman. The notes majority that Snow- Copyright 13.03[B], (rev. at § 13-37 ed. II, I, replacing man Snowman won 1980)). following. Toys’ siderable Eden design and The judgment of the district court is af- artwork the public’s earned favor. It is firmed. design copy- and that artwork that the right protect. laws are to It intended is LUMBARD, Judge, Circuit dissenting: and artwork —with its attend- I dissent. ant commercial success—that Marshall placed The snowmen were before the Field has In sanctioning misap- taken. this court, my brethren propriation, looked for differences majority open leaves to fu- so, and of course doing found them. But in copyists ture chance seize the essence liability through escaping while work of a circuit today, changes. minor Until practice. Concord on such a See frowned Fabrics, Corp., Marcus Bros. Textile Inc. v. 1969) (per cu- riam). judgment of the dis- I would reverse the proceed- and remand for further trict court ings. MEDICAL ARTS PHARMACY OF STAMFORD, INC., al., et Plamtiffs-Appellants,