{"id":2895,"date":"2019-08-09T13:52:38","date_gmt":"2019-08-09T13:52:38","guid":{"rendered":"https:\/\/www.dekuzu.com\/en\/?p=2895"},"modified":"2020-02-04T17:24:04","modified_gmt":"2020-02-04T17:24:04","slug":"there-is-no-copyright-infringement-in-similarity-caused-by-nature","status":"publish","type":"post","link":"https:\/\/www.dekuzu.com\/en\/2019\/08\/there-is-no-copyright-infringement-in-similarity-caused-by-nature.html","title":{"rendered":"There is no copyright infringement in similarity caused by nature"},"content":{"rendered":"\n
\"\"
GAME Duck<\/figcaption><\/figure>\n\n\n\n

In 1988, Eric Schechter started GAME. At the time, GAME was focused on conducting fundraising activities. The fundraising concept was for individuals to \u201cadopt\u201d a small toy duck and then all the ducks would \u201crace\u201d on a waterway, such as the Salt River Canal or in New York Harbor. The person who had adopted the duck that finished first would win \u201ca new car or prizes,\u201d which had been donated. The sponsoring organization would then retain all the \u201cadoption\u201d fees.<\/span><\/p>\n

<\/span><\/p>\n

Hoping to prevent knockoffs, Schechter realized he needed to \u201cbrand\u201d or make GAME\u2019s races \u201cunique.\u201d \u201cOne of the ways to do that was the duck itself.\u201d Thus, Schechter and a few other individuals designed a unique plastic duck to use in the fundraising activities. Schechter and his collaborators designed a small duck from \u201cscratch.\u201d GAME\u2019s original duck was similar to the familiar Rubber Duckie of Sesame Street fame with one crucial alteration: sunglasses. As explained by Schechter, the sunglasses served no functional purpose. Rather, the sunglasses were merely to differentiate GAME\u2019s duck from other similar ducks already available in the market.<\/span><\/p>\n

GAME experienced great success in its fundraising business. In 2001, a major retailer approached GAME and asked \u201cto take the duck and make it into some pool products.\u201d That inquiry resulted in GAME producing a few products, such as a \u201cpool-dispensing chlorinator\u201d with the distinctive GAME duck on the top. In 2012 or 2013, other retailers asked GAME to make a large inflatable in the shape of GAME\u2019s duck. In 2015, GAME produced what it calls the \u201cGiant Inflatable Derby Duck.\u201d That product was offered for sale in 2016 and it became an immediate hit. The Derby Duck is yellow and has a red bill, which is open. The Derby Duck is a \u201cflatbed float\u201d which means there is a flat surface where individuals can sit or lie down without touching the water.<\/span><\/p>\n

GAME has sold tens of thousands of its Derby Duck through numerous retailers. The Derby Duck has appeared in the press and in viral videos. When purchasing the Derby Duck, consumers encounter either the product box or two-dimensional pictures. Consumers usually do not see the Derby Duck inflated prior to purchasing. GAME owns various copyrights and trademarks involving a duck wearing sunglasses. GAME has devoted considerable resources in promoting, advertising, and marketing its products and services using its trademarks. GAME registered the Derby Duck with the United States Copyright Office. That Copyright is titled \u201cGiant Inflatable Derby Duck.\u201d A few years after the Derby Duck was first sold, competitors began to emerge.<\/span><\/p>\n

Defendant Justin Ligeri was responsible for production of one of the Derby Duck\u2019s competitors. Ligeri is the owner of Defendants Kangaroo and Yagoozon, Inc. Ligeri and Kangaroo experienced substantial success selling products on Amazon. At one point, Ligeri offered live seminars to teach other individuals how to successfully sell products on Amazon. In advertising those seminars, Ligeri very confidently appeared in a video where he presented his business model. What he would enlighten others to do was to \u201ccreate a product for Amazon that people are looking for already.\u201d In practice, it was clear that Ligeri and his companies would identify successful products on Amazon and then make slightly different versions of those products without apparent concern about possible intellectual property violations.<\/span><\/p>\n

Bernard Oliver, Kangaroo\u2019s product designer, did not have time to investigate intellectual property rights because Kangaroo was operated \u201clike a sweatshop\u201d where he \u201cworked all day\u201d and only left when he was \u201cexhausted.\u201d In late 2015 or early 2016, it has been decided that Kangaroo should manufacture \u201cnovelty pool floats.\u201d Kangaroo\u2019s executive looked at the available pool floats and discovered four duck pool floats sold by four different companies.<\/span><\/p>\n

Oliver has been instructed to \u201ccreate the design of a pool float in the form of a yellow duck with sunglasses but make it different from the yellow duck pool floats\u201d already on the market. Oliver designed the new pool float and Kangaroo manufactured its own duck-wearing-sunglasses pool float. In other words, Oliver had the Derby Duck when designing Kangaroo\u2019s duck and, to some extent, modeled Kangaroo\u2019s duck after the Derby Duck. Oliver did not, however, slavishly copy the Derby Duck. Thus, while there are some similarities, there are also significant differences.<\/span><\/p>\n

\"Kangaroo<\/a>
Kangaroo Duck<\/span><\/figcaption><\/figure>\n

\"\"Sometime in 2016, Kangaroo and Yagoozon began selli<\/span>ng their duck-wearing-sunglasses float on Amazon. However, GAME was not able to present evidence establishing how Kangaroo\u2019s duck was listed on Amazon because the information was destroyed or was otherwise unavailable. Thus, it is unknown whether Kangaroo\u2019s Amazon listing included a picture of the box or merely displayed pictures of the duck. It is also unknown how prominently Kangaroo identified itself in the listing. In short, the Court has no material and admissible evidence of how Kangaroo marketed its duck or how consumers encountered the Kangaroo duck.<\/span><\/p>\n

Around January 2017, GAME saw Kangaroo\u2019s duck listed for sale on Amazon. GAME complained to Amazon and Amazon immediately removed the listing. GAME also wrote to Kangaroo and claimed Kangaroo had \u201cbeen selling a strikingly similar, knock-off version\u201d of the Derby Duck. According to GAME, Kangaroo\u2019s duck had \u201cvirtually the same appearance as\u201d the Derby Duck. GAME requested Kangaroo \u201cimmediately stop all sales and distribution\u201d of its duck. It is unclear whether Kangaroo responded to that letter but GAME filed the present suit a few days later. There was no evidence at trial that Kangaroo continued to sell its duck.<\/span><\/p>\n

Pursuant to the operative complaint, GAME believes Kangaroo\u2019s duck infringes its copyright for the Derby Duck. GAME also believes Kangaroo has committed trademark infringement as well as federal and common law unfair competition. To prevail on its copyright infringement action, GAME needed to prove two things: (1) that it owns a valid copyright in the Derby Duck and (2) Defendants copied protected elements of the Derby Duck. The parties stipulated that GAME owns a valid copyright, leaving only the second element at issue. \u201cThe second element has two distinct components: \u2018copying\u2019 and \u2018unlawful appropriation.\u2019\u201d The evidence at trial established Kangaroo \u201ccopied\u201d the Derby Duck when designing its own duck. That evidence is sufficient to satisfy the \u201ccopying\u201d requirement.<\/span><\/p>\n

Contrary to GAME\u2019s position at trial, the fact that Kangaroo copied the Derby Duck does not establish liability. Even once GAME established \u201ccopying,\u201d it still had to prove \u201cunlawful appropriation.\u201d \u201cTo prove unlawful appropriation the similarities between the two works must be \u201c\u2018substantial\u2019 and they must involve protected elements of the plaintiff\u2019s work.\u201d This requires \u201ca two-part analysis consisting of the \u2018extrinsic test\u2019 and the \u2018intrinsic test.\u2019\u201d To prevail, GAME had to \u201cprove substantial similarity under both tests.\u201d<\/span><\/p>\n

\u201cThe extrinsic test assesses the objective similarities of the two works, focusing only on the protectable elements of the plaintiff\u2019s expression.\u201d In conducting this test, the Court must \u201c\u2018filter out\u2019 the unprotectable elements of the plaintiff\u2019s work\u201d and then compare the protectable elements in the plaintiff\u2019s work with the \u201ccorresponding elements of the defendant\u2019s work to assess similarities in the objective details of the works.\u201d In the present case, GAME\u2019s copyright cannot prevent others from depicting yellow ducks, with a bill, wings, a tail, and a crest on the head. All of those attributes are found on ducks in nature.<\/span><\/p>\n

Moreover, the general design and coloring of the duck has become a \u201cstock or standard feature.\u201d <\/span>There are very few protectable elements in the Derby Duck. The parties have focused on the addition of sunglasses as the crucial protectable element. And the Court agrees that the sunglasses are the key protectable element of the Derby Duck. But even there, GAME\u2019s copyright provides no protection to the idea of a duck float wearing sunglasses. Rather, GAME\u2019s copyright only protects the particular expression of that idea. That is, GAME is entitled to protection only for the way it expressed the idea of a duck wearing sunglasses.<\/span><\/p>\n

The Court\u2019s task is to determine whether the two expressions of the sunglasses-on-a-duck idea are so similar that \u201cthe ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them.\u201d When confronted with the two ducks, and focusing on the sunglasses, there are a few striking differences. The sunglasses on the Derby Duck consist of a double bridge, are solid black, and most importantly are separately inflatable. The fact that the sunglasses are inflatable make the sunglasses a very prominent feature of the Derby Duck. By contrast, the sunglasses on the Kangaroo duck have a single bridge, are not solid black, and are merely painted on the duck\u2019s head.<\/span><\/p>\n

An \u201cordinary observer\u201d confronted with the two works and focusing on the sunglasses would not be \u201cdisposed to overlook\u201d these differences. While the Derby Duck and Kangaroo\u2019s duck undoubtedly share the general idea or concept of a duck wearing sunglasses, GAME \u201ccannot claim an exclusive right to ideas or concepts at that level of generality.\u201d The similarity of the protectable elements is not enough for GAME to pass the extrinsic test. Therefore, the Court need not continue and conduct the intrinsic test. But even if GAME had passed the extrinsic test, its copyright claim would fail.<\/span><\/p>\n

The intrinsic test requires the Court conduct \u201ca more holistic, subjective comparison of the works to determine whether they are substantially similar in \u2018total concept and feel.\u2019\u201d The two ducks do not meet this test. The parties\u2019 ducks are very different when compared with any care. The Derby <\/span>Duck has a red bill that is open. Kangaroo\u2019s duck has an orange bill that is closed. The Derby Duck is a flat float while Kangaroo\u2019s duck is a ring float. Finally, the Derby Duck\u2019s sunglasses are all black and exceptionally prominent. The Kangaroo duck\u2019s sunglasses are only partially black and not especially prominent. In short, the \u201ctotal concept and feel\u201d of the two ducks preclude a finding of liability on the copyright claim.<\/span><\/p>\n

Trademark Infringement<\/strong><\/span><\/p>\n

Here, GAME\u2019s trademarks fall into the \u201cdescriptive\u201d or \u201cgeneric\u201d category. The trademarks are just stylized versions of the underlying products. A consumer does not need to exercise any imagination to associate the mark with GAME\u2019s products. Thus, GAME\u2019s marks have relatively little conceptual strength. Here, there was no evidence offered that consumers associate GAME\u2019s marks with GAME. But there was evidence that GAME has used its trademarks in advertising and had a substantial amount of sales. That advertising and sales mean GAME\u2019s marks have some \u201ccommercial strength\u201d but the absence of any indication that consumers recognize the mark undercuts that strength to a significant degree. On balance, the lack of conceptual strength and the absence of any meaningful evidence of consumer recognition (i.e., limited commercial strength) means the \u201cstrength of the mark\u201d factor weighs in favor of Kangaroo.<\/span><\/p>\n

While the products are related, there is insufficient evidence to determine whether the manner in which the products were presented or advertised would have caused consumers to assume there was an association between GAME and Kangaroo. Even though more factors support GAME than Kangaroo, evaluating the factors as a whole, and in light of all the other evidence, GAME has not established a probability of confusion. To be sure, there is some \u201cpossibility\u201d of confusion. But that is not enough. The products and their boxes are sufficiently different such that consumers would not be confused into concluding Kangaroo\u2019s product were manufactured by GAME. The trademark infringement claim fails.<\/span><\/p>\n

GAME has not established<\/a> by a preponderance of the evidence that Defendants committed copyright infringement, trademark infringement, or unfair competition under federal or Arizona law.<\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

To prove unlawful appropriation the similarities between the two works must be \u201c\u2018substantial\u2019 and they must involve protected elements of the plaintiff\u2019s work<\/p>\n

Continue readingThere is no copyright infringement in similarity caused by nature<\/span><\/a><\/div>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[6,14,5,4,17,36,19],"tags":[],"class_list":["post-2895","post","type-post","status-publish","format-standard","hentry","category-intellectual-property","category-competition","category-copyright","category-internet","category-litigation","category-online-platforms","category-works-similarity","entry"],"_links":{"self":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/2895","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/comments?post=2895"}],"version-history":[{"count":10,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/2895\/revisions"}],"predecessor-version":[{"id":3109,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/2895\/revisions\/3109"}],"wp:attachment":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/media?parent=2895"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/categories?post=2895"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/tags?post=2895"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}