HQ 453696: Suspected infringement of Russ Berrie's Troll doll copyright(U.S. Copyright Office Registration No. VA 462-387; CustomsRecordation Issuance No. Cop 91-00300)

Native CBP ruling rendition. Applicability is fact-specific; modification/revocation relationships and original publisher date are retained. Publisher sentinel year0001 means unknown date, not a historical legal adoption.

                            HQ 453696

                         October 5, 1992

TRA CO:I:IT:I  453696 TPT

CATEGORY:  Copyright

District Director of Customs
U.S. Customs
ATTN: Olga Galvan
300 S. Ferry Street
San Pedro, CA   90731

Re:  Suspected infringement of Russ Berrie's Troll doll copyright
(U.S. Copyright Office Registration No. VA 462-387; Customs
Recordation Issuance No. Cop 91-00300)

Dear Sir:

     This is in response to your memorandum dated July 29, 1992,
wherein you requested that this office provide a legal opinion as
to whether certain detained troll dolls infringe the copyrights
referenced above.  

FACTS:

     Customs notified the importer by a letter dated March 20,
1992, that twenty cartons of Trollkin watches were being detained
for suspected copyright infringement of the above referenced
copyright.  

     In a letter dated April 3, 1992, the importer denied the
allegation of infringement.

     In accordance with section 133.43 of the Customs Regulations
(19 C.F.R. 133.43), Customs notified the copyright owner
regarding this shipment.  The copyright owner, through counsel,
responded and requested that Customs deny entry to the shipment
and deposited a bond in the amount of $5,078.16.

ISSUE:

     Whether the imported Trollkin watch incorporates features
which are substantially similar to the copyrighted troll doll
referenced above to constitute infringement?



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LAW AND ANALYSIS:

     The role of Customs in issuing substantive decisions of
copyright infringement as to imported merchandise was addressed
recently in The Miss America Organization v. Mattel, Inc., 945
F.2d 536 (2nd Cir. 1991).  Citing section 603 of the Copyright
Law (17 U.S.C. 603) the court recognized Customs authority to
enforce the provisions of the law prohibiting importations of
infringing goods.  Mattel, 945 F.2d at 538.  Also, the court
acknowledged that as a result of its duties, Customs has
developed expertise in determining whether merchandise does or
does not infringe.  Id. at 539.  Further, the court stated that
since sections 602 and 603 (17 U.S.C. 602, 603) direct the
Secretary of Treasury to enact regulations to aid in combatting
copyright infringement, it is implicit in these directions that
the agency (Customs) would be involved in making infringement
determinations.  Id. at 541.  Therefore, because the Treasury
Department has been assigned the duty to enforce the copyright
laws in cases where there is a reason to believe infringement
exists as to an imported item, it follows that it is within
Customs jurisdiction to take any action to fulfill this duty. 
Id. at 542.

     Customs has some independence and autonomy in making
infringement determinations regarding imported merchandise.  Id.
at 544.  The court stated that there is no reason to enjoin
Customs from performing its statutory duties so long as the
agency proceeds in conformity with the statutory scheme.  Id. 

     A party claiming infringement of its copyright must prove
that it owns the copyright, that the alleged infringer had access
to the copyrighted work, and that there is substantial similarity
between the copyrighted work and the alleged infringing work. 
Aliotti v. R. Dakin & Co., 831 F.2d 898, 900 (9th Cir. 1987).  A
party makes a prima facie case as to copyright ownership by
submitting the copyright registration which carries with it a
presumption of validity and ownership.  17 U.S.C. 410(c); Folio
Impressions, Inc. v. Byer California, 752 F. Supp. 583, 585
(S.D.N.Y. 1990), aff'd, 937 F.2d 759 (2nd Cir. 1991); Quaker Oats
Co. v. Mel Appel Enterprises, Inc., 703 F. Supp. 1054, 1058
(S.D.N.Y. 1989).  Upon presentation of a registration certificate
the burden of proof shifts to the defendant to introduce evidence
of invalidity.  Original Appalachian Artworks, Inc. v. The Toy
Loft, Inc., 684 F.2d 821 (11th Cir. 1982).

     Access to a copyrighted work may be established by direct
proof of copying or by circumstantial evidence that an alleged
infringer had access to the copyrighted work.  Gund, Inc. v. Russ
Berrie and Co., Inc., 701 F. Supp. 1013, 1018 (S.D.N.Y. 1988). 
Whether a work is substantially similar to another is determined
by the "ordinary observer" test which is whether the ordinary
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observer would be disposed to overlook the disparities of the
works and regard their aesthetic appeal as the same.  Id. at
1018.  A determination that copying has taken place does not
require a finding that every detail is the same, the key being
the similarities rather than the differences.  Id. at 1018.

     Imported articles which infringe a copyright are prohibited
importations under section 602(b) of the Copyright Act  and such
articles are subject to seizure and forfeiture under section
603(c) of the Copyright Act.  These articles are seized and
forfeited in the same manner as goods imported in violation of
the Customs revenue laws.  17 U.S.C. 603.  Alternatively,
infringing articles may be returned to the country of export
whenever it is shown to the satisfaction of the Secretary of the
Treasury (Customs) that the importer had no reasonable grounds
for believing that its acts constituted a violation of law.  19
C.F.R. 133.47.  The party claiming that an imported article is
infringing shall bear the burden of proof.  19 C.F.R.
133.43(c)(1).

     Russ Berrie asserts that all the trolls recorded with
Customs are covered by U.S. Copyright Office registrations which
constitute prima facie presumption of validity.  Masquerade
Novelty, Inc. v. Unique Industries, Inc., 912 F.2d 663 (3rd Cir.
1990).  It further argues that the copyrighted troll figure is
derived from two dimensional photographs of an earlier version of
a Russ troll doll and, thus, the current three dimensional work
is a derivative work subject to copyright protection under
section 103 of the Copyright Law (17 U.S.C. 103).

     Russ Berrie states that it made full disclosure to the
Copyright Office in applying for its copyright registration.  It
asserts that full disclosure was made of the two dimensional
troll from which its three dimensional troll was derived.  In
Scandia House Enterprises, Inc. v. Dam Things, Est., 243 F. Supp.
450 (D.D.C. 1965) the court found troll dolls to be in the public
domain.  Russ Berrie argues that the detained troll watches are
infringing because the sculptural elements of the detained item
are "virtually verbatim" from the copyrighted item.  The
copyright owner points to the closeness of the chin line to the
lips, the colors of the eyes, the roundness of the cheeks, and
most prominently the shape and location of the ears.  

     The copyright owner asserts that there is no question but
that the importer had access to its work.  Russ Berrie argues
that it has successfully marketed its product nationally since
1990 and is a market leader of troll dolls.  Therefore, it
contends that the only issue is whether the imported item is
substantially similar to the copyrighted item.


                                4


     In asserting that the imported item is substantially similar
to its troll, the copyright owner states that the expression on
the imported item is appropriated from its troll.  The copyright
owner argues that the imported item incorporates a friendlier,
more human-like look, that the location of and the shape of the
rounded ears, more rounded eyes, the smile, the rounded cheeks,
and chin line are appropriated from the protected expression.
     
     The importer argues that the any similarity between its item
and Russ Berrie's relates more to the idea of a troll rather than
the expression.  The importer contends that the upstanding
colored hair, round eyes, circular ridge around the eyes, bulbous
nose, and round cheeks were found in the original Norfin troll
doll, the Russ Berrie troll and is incorporated in the imported
item, thereby constituting features in the public domain. 
Therefore, the importer argues that its item does not infringe
the Russ Berrie copyright referenced above.

CUSTOMS DETERMINATION

     Initially, we disagree with the copyright owner, Russ
Berrie, that the Scandia case is irrelevant to this case.  We
must be cognizant of those characteristics and features of the
troll doll which are in the public domain and may be copied by
any one.  Works substantially derived from pre-existing works,
whether copyrighted or in the public domain, are subject to
copyright protection so long as the derivative work itself is
original as long as the original aspects are nontrivial and do
not affect the underlying work.  Knickerbocker Toy Co., Inc.
v.Winterbrook  Corp., 554 F. Supp. 1309, 1317 (D.N.H. 1982).

     We now turn to the actual comparison of the troll facial
features.  We see that the public domain doll, the copyrighted
doll, and the imported item have bulbous noses, round eyes, and
the rounded ridges over the eyes leading down to the nose.  The
ears on all three items are different.  The public domain doll
has pointed ears, the copyrighted doll has rounded ears with a
circular shaped line in the mold, and the imported item has
rounded ears which protrude more than on the copyrighted item. 
The mouth on the imported doll appears to be more like the public
domain doll in that the lower lip is the end of the facial
features and has no chin, unlike a smoother curl of the lower lip
on the copyrighted doll.  Finally, the double row of ridges
around the eyes of the imported item give the face a different
appearance than on the copyrighted work.

     Based upon the foregoing comparison, we conclude that the
imported item is not substantially similar to the copyrighted
work and, therefore, does not infringe the above referenced
copyright.

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HOLDING:

     We find that the imported item does not infringe the Russ
Berrie copyright referenced above and shall be released.  The
bond deposited by the copyright owner, and returned herein, shall
be provided to the importer along with a copy of this decision.

                              Sincerely,




                              John F. Atwood, Chief
                              Intellectual Property Rights Branch