Copyrights/Validity

A tiger costume deserves copyright protection because its sculptural head is physically and conceptually separable from the rest of the utilitarian garment, the U.S. District Court for the Southern District of Indiana held Dec. 12 (Celebration International Inc. v. Chosun International Inc., S.D. Ind., No. IP 1:02-cv-1463-LJM/WTL, 12/12/02).

However, the court declined to issue a preliminary injunction against an accused infringer, citing evidence that its similar costume was an earlier, independent creation, not a copy of the plaintiff's design. The court also made clear that the scope of protection for the plaintiff's costume was limited due to its effort to reproduce a real, lifelike tiger.

Preliminary Relief Sought.

Plaintiff Celebration International Inc. sued defendant Chosun International Inc. for infringing the copyright on its "San Diego Zoo" tiger costumes. Celebration moved for a preliminary injunction.

Copyright Protection: Physical Separability.

Chief Judge Larry J. McKinney acknowledged that Celebration's registration for its tiger costume is prima facie evidence of a valid copyright. However, he pointed out that courts have discretion to make an independent determination as to whether a work is copyrightable, and that Chosun has challenged the validity of Celebration's copyright.

There is also some dispute about whether costumes are copyrightable at all, the court continued. Because the Copyright Act protects pictorial, graphic and sculptural works, it observed, Celebration referred to its tiger costume as "sculpture" in its registration application.

However, costumes, like clothing, clearly have a utilitarian aspect which suffices to qualify them as "useful articles" under Section 101 of the Copyright Act, Judge McKinney noted. Copyright in the design of such works may be claimed only to the extent that the design incorporates sculptural features that can be identified separately from, and can exist independently of, the article's utilitarian aspects, he added.

There is also debate about whether the Section 101 "separability rule" requires both physical and conceptual separability, the court observed, and the Seventh Circuit has not endorsed any of the possible separability tests. However, Circuit Judge Frank Easterbrook, sitting by designation in a district court case, found Professor Goldstein's test for conceptual separability most convincing, Judge McKinney related, citing Pivot Point Int'l Inc. v. Charlene Prods. Inc.,170 F.Supp.2d 828 (N.D. Ill. 2001).

Applying that analysis, the court was convinced that the San Diego tiger's sculptural aspect (the head) was physically separable from the costume's utilitarian function (clothing). The tiger's head is physically separable in the same way as was the ornamental belt buckle referred to by the Second Circuit in Carol Barnhart Inc. v. Econ. Cover Corp.,773 F.2d 411, 228 USPQ 385 (2d Cir. 1985) (30 PTCJ 576, 10/2/85), Judge McKinney explained, adding "it was in no way required by the clothing garment aspect of the costume." He elaborated further:

The costume is a full body clothing garment with a hood that has a tiger's head added to, or superimposed upon, the otherwise utilitarian garment. The tiger's head could easily be removed from the hood, and the remaining garment's utility would be unaltered.

Judge Easterbrook described the physical separability test as "whether the features to be copyrighted could be sliced off for separate display," and gave examples of physically separable, copyrightable aspects from other cases: "a lamp without a dancer carved into its base still illuminates the room, and a sculpture of a Balinese dancer may be sold separately. Likewise a decorated belt may be sold as an objet d'artto someone who does not need it to hold up his pants." … Like the lamp without a Balinese dancer sculpture at its base still illuminating the room, the garment portion of the costume without the tiger's head would still keep the wearer warm. Moreover, the stuffed tiger's head could also be sold separately from the clothing garment. Accordingly, this Court concludes that the sculptural aspects of the tiger costume are physically separable from the utilitarian features.

Conceptual Separability.

The court arrived at the same conclusion under Professor Goldstein's two-part test for conceptual separability. The tiger's head clearly satisfies the second prong of that test, Judge McKinney observed, noting that the costume would be "equally useful" as clothing if the head were removed.

Whether, under the first prong, the tiger's head could "stand alone as a work of art" is a more difficult question, the court acknowledged. Although a tiger's head is not the type of art that would be accepted by a museum, the court conceded, Professor Goldstein's notion of conceptual separability is not that narrow. Judge McKinney quoted Professor Goldstein's reference to a novelty slipper made to look like a bear paw, which has conceptual separability "because the bear's paw can stand alone as a--albeit modest--work of art."

"In the same way," Judge McKinney wrote, "Celebration's tiger costume would be equally useful without the tiger's head on the hood and could stand alone as a --albeit modest--work of art."

Limited Scope of Protection.

The court went on to consider the scope of protection for the protectable portion of the tiger costume, the sculptural aspect of its head.

Although the head has some creative, imaginative expression, Judge McKinney acknowledged, a few factors weigh against granting Celebration extensive copyright protection for this tiger. First, he explained, is the source of the tiger, noting that it was based on a catalog picture of a tiger in the San Diego Zoo.

Testimony from Celebration's president suggests that the tiger was supposed to look like a real tiger, and that simple departures were permitted due to financial constraints, not because of creative expression, the court observed. Moreover, Judge McKinney added, the tiger is not humanized and has no facial expression.

A second concern, according to the court, is that the head, mane, and skin color of the tiger were common or typical of those used by many manufacturers in the plush animal business.

On the other hand, the tiger was also supposed to be cute, the court admitted, pointing to its soft, plush fur, the lack of an imposing mouth and teeth, and the white side burns and nose. On balance, the court concluded that although the tiger does have some particularized expression, its expressiveness is limited due to the effort to reproduce a real, lifelike tiger. "As such," Judge McKinney wrote, "the Celebration tiger will only be afforded limited copyright protection."

Copying: Access and Similarity.

Although there is no direct evidence of copying, infringement may be inferred by showing that Chosun had access to Celebration's copyrighted work and that Chosun's accused costume is substantially similar to Celebration's, the court went on.

Chosun had access to Celebration's tiger because it was widely available at stores, Judge McKinney found. And while a side-by-side comparison of the Chosun and Celebration tigers reveals differences, those dissimilarities do not preclude a finding of substantial similarity, the court maintained, adding "a shopper in the aisles of Wal-Mart of Kmart could easily overlook them."

The court accordingly concluded that Celebration has a "better than negligible" chance of showing substantial similarity.

Independent Creation.

Even if the tigers are substantially similar, however, Chosun maintained that its tiger was arrived at independently without copying because its source was a stuffed animal tiger it came up with long before the Celebration tiger was designed.

The court, reviewing the testimony of Chosun officials, agreed that the Chosun tiger was derived from a stuffed animal pictured in Chosun's catalog four years before the Celebration tiger was designed.

"Accordingly," Judge McKinney wrote, "Chosun has established an earlier, independent creation and rebutted Celebration's showing of substantial similarity. Thus, the Court concludes that Celebration has not carried its burden to show a reasonable likelihood of success on the merits of its copyright claim."

Other Preliminary Injunction Factors.

Having concluded that Celebration failed to carry its burden on that threshold issue, the court found no need to consider the other preliminary injunction issues.

However, Judge McKinney noted that Celebration also failed to show irreparable harm, another threshold issue. Specifically, the court pointed to Celebration's delay of over three years in filing the suit after learning of the alleged infringement from a customer. Such tardiness, although not dispositive, weighs against a plaintiff's claim of irreparable harm, especially if, as was the case here, the delay is not excused, the court explained.

"Thus," the court concluded, "even if Celebration had carried its burden with respect to likelihood of success on the merits, it has not carried its burden of demonstrating irreparable harm."

Celebration's motion for preliminary injunction was denied.

Thomas Blessing, Stewart & Irwin P.C., of Indianapolis, Ind., represented Celebration. Anthony H. Handal, Handal & Morofsky LLC, of Norwalk, Conn., represented Chosun.

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