Beverly Hills Teddy Bear Company v. Best Brands Consumer Products, Inc.

Background

Beverly Hills sued Best Brands for copyright infringement, alleging that Best Brands’s “Fuzzy Squishy” toys infringed copyrights covering Beverly Hills’s “Squeezamals” stuffed toys. After discovery ended, Best Brands moved under 17 U.S.C. § 411(b)(2) for the court to refer questions to the Register of Copyrights. That statute concerns allegedly inaccurate information in a copyright-registration application and requires the court to obtain the Register’s advice before deciding whether an inaccuracy would have caused the Register to refuse registration.

Best Brands identified five alleged inaccuracies: the registrations listed Benson Tjio as the author of three-dimensional sculptures even though he created two-dimensional artwork; they listed Tjio as the sole author without identifying Francesca Ibba’s contribution of the toys’ eyes; they listed allegedly incorrect dates of first publication; they identified the United States as the nation of first publication even though some designs or samples were shown at a Hong Kong trade show; and they did not identify preexisting works on which the Squeezamals were allegedly based.

Legal standard

The court explained that a registration certificate generally satisfies the registration requirement for an infringement action even if it contains inaccurate information. Under § 411(b)(1), the alleged inaccuracy must have been included knowingly and, if known, would have caused the Register to refuse registration. The court held that it could first require the party seeking invalidation to establish factually that the registration contained an inaccuracy and that the registrant knowingly included it. If the record is insufficient, the court may delay referral until further factual development at summary judgment or trial.

Analysis

For authorship, the court held that an author of a two-dimensional work can also be the author of a three-dimensional reproduction unless someone else adds new, original, copyrightable authorship. Best Brands did not provide evidence that someone other than Tjio made such an original contribution to the final sculptures. The evidence instead suggested that Beverly Hills and a manufacturer tried to make the toys resemble Tjio’s designs as closely as possible.

Regarding Ibba’s contribution, the court found that creating the eyes did not necessarily make Ibba the sole author or require her to be listed on the registration. Best Brands did not identify where her contribution should have been disclosed and did not allege facts showing that Ibba and Tjio intended to be coauthors, which is required for a co-authorship claim.

Regarding publication dates and nation of first publication, the court found that displaying works at a trade show did not by itself establish publication. The evidence suggested that samples were shown privately to selected potential buyers and that some material was treated as confidential. Best Brands also did not provide facts showing when the products became available for distribution before their documented shipping dates. Because the alleged earlier publication was not established, the court likewise found no basis at that time to refer the nation-of-first-publication issue.

For preexisting works, the court explained that a registration must identify works on which a derivative work is based or that it incorporates. General inspiration from other plush toys or trends was not enough, because copyright protects particular expression rather than general ideas. Best Brands’s allegations that the Squeezamals copied elements from a BC Mini product and Hasbro’s “Littlest Pet Shop” toys raised factual questions, but Best Brands did not establish that the Squeezamals copied protected expression. The court therefore found the record insufficient for a referral.

Disposition

The court denied without prejudice Best Brands’s motion for issuance of a request to the Register of Copyrights. It did not refer any of the proposed questions at that time and directed the Clerk of Court to terminate the motions at Docket Numbers 54 and 55. The court’s ruling was based on the insufficient factual record supporting the alleged registration inaccuracies.