Well-Made Toy M'fg. Corporation v. Flowers, Inc.
MEMORANDUM OF DECISION & ORDER denying 10 Motion to Dismiss for Failure to State a Claim - Based on the foregoing, the Court denies the Defendants motion to dismiss the complaint in all respects. This matter is respectfully referred to United States Magistrate Judge Arlene R. Lindsay for discovery. So Ordered by Judge Arthur D. Spatt on 11/3/2016. (Coleman, Laurie)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
WELL-MADE TOY M’FG CORPORATION, a corporation of the
State of New York,
11/3/2016 11:32 am
U.S. DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
LONG ISLAND OFFICE
-againstFLOWERS, INC. (d/b/a Burton & Burton), a corporation of
Decision & Order
The Law Office of Gerard F. Dunne, P.C.
Attorneys for the Plaintiff
41 Union Square West, Suite 1125
New York, NY 10003
By: Gerard F. Dunne, Esq., Of Counsel
Wilson Elser Moskowitz Edelman & Dicker LLP
Attorneys for the Defendant
150 E. 42nd Street, 21st Floor
New York, NY 10017
By: Jura C. Zibas, Esq.
Stephen J. Barrett, Esq., Of Counsel
SPATT, District Judge:
This case involves allegations of copyright infringement in the design of ballerina ragdolls.
On March 21, 2016, the Plaintiff Well-Made Toy Manufacturing Corporation commenced
this infringement action against the Defendant Flowers, Inc., alleging that the Defendant illegally
appropriated design features of a copyrighted ragdoll produced by the Plaintiff, in violation of the
federal Copyright Act of 1976 (the “Copyright Act”), 17 U.S.C. § 101 et seq., and various foreign laws
and international treaties.
On April 20, 2016, the Defendant filed a motion, pursuant to Federal Rule of Civil Procedure
(“FED. R. CIV. P.”) 12(b)(6), seeking to dismiss the complaint on the ground that it fails to state a
cognizable violation of the Copyright Act. Further, the Defendant contends that, in the absence of a
viable infringement claim, the remaining causes of action should be dismissed under
FED. R. CIV. P. 12(b)(3), as the Eastern District of New York is an improper venue for resolving
claims based on violations of foreign law.
For the reasons that follow, the Defendant’s motion to dismiss is denied.
Unless otherwise noted, the following facts are drawn from the complaint and construed in
favor of the Plaintiff.
The Plaintiff, a resident corporation with offices in Queens, is involved in the design and
marketing of toys, including a product known as “Debbie Dancer,” a ballerina ragdoll. The Plaintiff
owns a valid copyright in the three-dimensional body sculpture and two-dimensional facial artwork
for Debbie Dancer.
The gravamen of this action is that, subsequent to the Plaintiff’s introduction into the
market of Debbie Dancer, the Defendant, a Georgia corporation, without authorization, introduced a
substantially similar product. The allegedly infringing ragdoll does not appear to have a name, so the
Court will refer to it as the “Defendant’s Dancer.”
The Plaintiff alleges that the Defendant’s Dancer is a direct copy of, and impermissibly
infringes upon the copyrighted artwork and sculptural features of Debbie Dancer. To illustrate this
allegation, in the complaint, the Plaintiff includes a color photograph of the two dolls positioned
By this action, the Plaintiff seeks equitable relief in the form of: (1) an injunction preventing
the Defendant from manufacturing, importing, offering for sale, advertising, promoting, or
distributing the Defendant’s Dancer; (2) a mandatory injunction requiring the Defendant to deliver
up for destruction any allegedly infringing products and merchandise in its possession; and (3) a
mandatory injunction requiring the Defendant to diligently attempt to recall any allegedly infringing
products that have already been put out to market.
Further, the Plaintiff seeks an award of monetary damages, representing: (1) the profits
received by the Defendant from the sale of the Defendant’s Dancer; (2) the loss sustained by the
Plaintiff as a result of product sales that were diverted to the Defendant due to the presence of the
Defendant’s Dancer on the market; and (3) statutory damages and penalties, including punitive
damages, interest, and costs.
The Applicable Legal Standards
“[I]n order to establish a claim of copyright infringement, ‘a plaintiff with a valid copyright
must demonstrate that: (1) the defendant has actually copied the plaintiff’s work; and (2) the
copying is illegal because a substantial similarity exists between the defendant’s work and the
protectable elements of plaintiff’s.’ ” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64,
63 (2d Cir. 2010) (quoting Hamil Am. Inc. v. GFI, 193 F.3d 92, 99 (2d Cir. 1999)).
In this regard, the Second Circuit has long deemed “the determination of the extent of
similarity that will constitute a substantial, and hence infringing, similarity” to “present[ ] one of the
most difficult questions in copyright law, and one that is the least susceptible of helpful
generalizations.’ ” Peter F. Gaito Architecture, LLC, 602 F.3d at 63 (quoting 4-13 NIMMER
COPYRIGHT § 13.03 (2009)) (emphasis in original). “For that reason, and because the question of
substantial similarity typically presents an extremely close question of fact, questions of noninfringement have traditionally been reserved for the trier of fact.” Id. (citations omitted).
Under Rule 12(b)(6), a party may move to dismiss a cause of action that “fail[s] to state a
claim upon which relief can be granted.” Thus, “[t]o survive a motion to dismiss, the complaint must
plead ‘enough facts to state a claim to relief that is plausible on its face,’ Bell Atl. Corp. v. Twombly, 550
U.S. 544, 570, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007), and ‘allow[ ] the court to draw the reasonable
inference that the defendant is liable for the misconduct alleged,’ Ashcroft v. Iqbal, 556 U.S. 662, 678,
129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009).” Otis-Wisher v. Medtronic, Inc., No. 14-cv-3491, 2015 U.S. App.
LEXIS 9565, at *2 (2d Cir. June 9, 2015).
However, in the copyright context, the Second Circuit has authorized district courts to
undertake a merits-based “substantial similarity” analysis where all the materials needed to make a
side-by-side comparison of the copyrighted work and the allegedly infringing work are attached to
In particular, the Second Circuit has explained that:
[I]n ruling on [a Rule 12(b)(6)] motion, a district court may consider “the facts as asserted
within the four corners of the complaint” together with “the documents attached to the
complaint as exhibits, and any documents incorporated in the complaint by reference.”
McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 191 (2d Cir. 2007). In copyright infringement
actions, “the works themselves supersede and control contrary descriptions of them,” Walker
[v. Time Life Films, Inc.], 784 F.2d [44,] 48 [2d Cir. 1986], including “any contrary allegations,
conclusions or descriptions of the works contained in the pleadings.” 3-12 NIMMER ON
COPYRIGHT § 12.10. See Walker v. Time Life Films, Inc., 615 F. Supp. 430, 434 (S.D.N.Y. 1985);
Shipman v. R.K.O. Radio Pictures, Inc., 20 F. Supp. 249, 249 (S.D.N.Y. 1937). When a court is
called upon to consider whether the works are substantially similar, no discovery or factfinding is typically necessary, because “what is required is only a visual comparison of the
works.” Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 766 (2d Cir. 1991).
Thus, where, as here, the works in question are attached to a plaintiff’s complaint, it
is entirely appropriate for the district court to consider the similarity between those works
in connection with a motion to dismiss, because the court has before it all that is necessary
in order to make such an evaluation. If, in making that evaluation, the district court
determines that the two works are “not substantially similar as a matter of law,” Kregos v. A.P.,
3 F.3d 656, 664 (2d Cir. 1993), the district court can properly conclude that the plaintiff’s
complaint, together with the works incorporated therein, do not “plausibly give rise to an
entitlement to relief.” Iqbal, 129 S. Ct. at 1950. . . .
Peter F. Gaito Architecture, 602 F.3d at 64, 65.
In this regard, the Second Circuit has clarified that, at the pleading stage, resolving an
infringement claim as a matter of law is only appropriate when: (1) “the similarity concerns only
noncopyrightable elements of plaintiff[’s] work”; or (2) “when no reasonable trier of fact could find
the works substantially similar.” Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986).
The Present Record is Insufficient to Warrant Dismissal as a Matter of Law
Notwithstanding the pre-answer, pre-discovery posture of this case, the Defendant contends
that the present motion record is sufficient to permit the Court to resolve the Plaintiff’s copyright
infringement claim as matter of law. In particular, the Defendant asserts that the color photograph
annexed to the complaint, featuring a side-by-side depiction of the dolls in question, is all that is
required for the Court to determine that the two works are not substantially similar, and therefore,
that the Plaintiff’s allegations do not plausibly give rise to an entitlement to relief. The Court
Although the photograph shows enough general similarities between the two products to
make the Plaintiff’s allegations of illegal copying plausible, in the Court’s view, it is insufficient to
permit a conclusive comparison of the kind requested by the Defendant.
Specifically, it is noted that neither party submitted exemplars of the three-dimensional
objects for the Court to physically inspect, despite the fact that one of the main components of the
Plaintiff’s copyright is Debbie Dancer’s three-dimensional body sculpture. Unlike cases involving
works of two-dimensional art, photographs, books, manuscripts, or articles that are readily
comparable by a reviewing court, in the Court’s view, the photograph of three-dimensional figures in
this case does not permit an ultimate-issue determination on a paper record. Cf. Wiren v. Shubert
Treatre Corp., 5 F. Supp. 358, 362 (S.D.N.Y 1933) (“There seems to be no good reason why where one
book is claimed to be an infringement of a copyrighted book, and both books are attached to the bill
of complaint and the pleadings permit it, a reading and comparison of the books themselves should
not dispose of the claim of infringement . . .”).
Nor did either party submit scaled images of the dolls or otherwise provide corresponding
measurements of the products – this despite the Defendant’s heavy reliance on disparate body
proportions as a basis for a finding of non-similarity. In this regard, it is noted that other courts to
engage in similar analyses have identified the slightest measurable discrepancies as relevant to
findings of non-similarity. See, e.g. Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 501 (2d Cir. 1982)
(Lumbard, J., dissenting) (in a case involving plush dolls, characterizing the majority opinion as
basing its substantial similarity analysis on “nose widths, lip lengths, eyes spaces, and button
diameters [that] differ by fractions of an inch”).
Nor is there any allegation or supporting evidence regarding the conditions under which the
photograph was taken. Therefore, contrary to the Defendant’s suggestion, the Court is unwilling to
rely on this image alone to conclude, as a matter of law, that the dolls have substantially dissimilar
skin tones. In the Court’s view, it is not at all clear that the apparent differentiation in the colors of
the dolls’ skin results from discretionary elements of the products’ designs, as opposed to natural
conditions, such as shadows and imperfect lighting, affecting the quality of the photograph.
Also, the photograph in question appears to have been taken using a digital camera;
uploaded to a computer; and then printed onto a sheet of white paper using an ordinary office
printer. With reasonable certainty, each step of this process could distort the coloration of the
image to an unknown degree.
Under these circumstances, the Court finds it unfeasible to render any reasoned decision on
this subject based solely on the photograph in the record. Stated otherwise, on the current record,
the Court is unable to conclude that any similarities in the product concern only noncopyrightable
elements of the Plaintiff’s work; or that no reasonable trier of fact could find the products
substantially similar. See Walker, 784 F.2d at 48.
On the contrary, in the Court’s view, notwithstanding the discrepancies identified in the
Defendant’s legal memorandum, based solely on the Plaintiff’s complaint and the attached materials,
an ordinary observer would regard the aesthetic appeal of these dolls as nearly identical. See Yurman
Designs, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir. 2001).
Accordingly, the Defendant’s motion to dismiss the portion of the first cause of action based
on federal copyright infringement is denied.
As to the Remaining Causes of Action Based on Violations of Foreign Laws
As noted above, relying on a theory of forum non conveniens, the Defendant also moves under
FED. R. CIV. P. 12(b)(3) to dismiss the remainder of the Plaintiff’s claims on the ground that, in the
absence of a viable claim under the Copyright Act, venue in this judicial district is improper.
Initially, courts in this Circuit have recognized that Rule 12(b)(3) “is not the correct vehicle
for” the relief the Defendant seeks because “forum non conveniens is a separate and [discrete] doctrine
which rests on the ‘inherent authority of the federal courts’ rather than on any statute or court
rules.” See Bank of Am. Corp. v. Braga Lemgruber, 385 F. Supp. 2d 200, 206 n.2 (S.D.N.Y. 2005) (quoting
Monegasque De Reassurances S.A.M. v. Nak Naftogaz of Ukraine, 158 F. Supp. 2d 377, 379 n.3 (S.D.N.Y. 2001),
aff’d, 311 F.3d 488 (2d Cir. 2002)).
Accordingly, notwithstanding the Defendant’s reliance on FED. R. CIV. P. 12(b)(3), the Court
will construe this portion of its motion as seeking dismissal based on the doctrine of forum non
Even so, as the Defendant concedes, venue in this judicial district would only become
inconvenient “in the absence of any claims arising under United States law.” Def. Reply Memo of
Law at 8. Thus, given the Court’s determination that the complaint states a viable claim for
infringement under the federal Copyright Act, the Court discerns no substantial basis for concluding
that the Eastern District is an inconvenient forum in which to adjudicate the Plaintiff’s foreign law
Accordingly, the Defendant’s motion to dismiss the portion of the first cause of action based
on foreign copyright laws and related international treaties is denied.
Based on the foregoing, the Court denies the Defendant’s motion to dismiss the complaint in
all respects. This matter is respectfully referred to United States Magistrate Judge Arlene R. Lindsay
It is SO ORDERED:
Dated: Central Islip, New York
November 3, 2016
/s/ Arthur D. Spatt____________________________________________
ARTHUR D. SPATT
United States District Judge
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