Cite as 673 F.Supp. 1233 (S.D.N.Y. 1987)
tional fabric for the muzzle of the Swank lion, the absence of affirmative evidence of the origin of the Swank lion, the availability and disappearance of Roarry as a model for the Swank manufacturer, and the appearance, form and effect of the two lions, it is inferred that the Swank lion is a substantial copy of Roarry, not an identical copy, but a knock-off.
The Swank lion is of a lesser quality compared to Roarry. The sewing of the seams is not neatly done, is not even on each side, and there are no protective patches which would prevent the eye or nose pieces from coming out. The stuffing of the Swank lion is polyester, rather than “acrylic” as specified on its label. It is substantially less soft and cuddly.
The two lions compete, even though the Swank lion is a premium give-away. For example, the Swank lion is a premium available at Bloomingdale’s jewelry department, while the Gund Roarry lion is sold in the “Gotta Getta Gund” shop or the toy department at Bloomingdale’s. The sales of Roarry declined in 1986 but increased in 1987. Gund is selling significant quantities of the Roarry product at the present time and plans to continue that product in its 1988 catalog. There is, however, no direct evidence of lost Roarry sales attributable to the Swank promotion.
Conclusions
The court has proper venue and jurisdiction over the action and the parties. 28 U.S.C. 1338(a); 28 U.S.C. 1400(a).
Gund created an original work of art, namely a soft sculpture stuffed plush toy lion identified as Roarry Style No. 2705, which is also made in a smaller version identified as Roarry Style No. 2700. The Roarry lion is a derivative work. It includes the Mugwump’s head and a new body shape and configuration, and it consists of material that is original with Gund and that is copyrightable under the copyright laws. See 17 U.S.C. § 101, 17 U.S.C. § 106(2). Roarry has been sold with notice of copyright affixed thereto, and Swank had complete access to Roarry.
The errors in Gund’s Copyright Certificate VA 220–777, effective April 8, 1986, for the Roarry Style No. 2705 lion include an improper year of creation, 1981 rather than 1979, and a failure to refer to the Roarry lion as being a derivative work of the Mugwumps lion. The original work is the subject of a separate Gund copyright and is not in the public domain. Thus, the errors, committed without deceptive intent, are harmless and do not invalidate the copyright. Iris Arc v. S.S. Sarna, Inc., 621 F.Supp. 916 (E.D.N.Y. 1985); Uneeda Doll Co. v. Regent Baby Products Corp., 355 F.Supp. 438 (E.D.N.Y. 1972).
The copyright for the Roarry lion carries a presumption of validity, since it was registered effective April 8, 1986, which is within five years of its publication, February, 1982. 17 U.S.C. § 410(c). This presumption has not been overcome by Swank.
Gund, having established a probable case of infringement of its copyright, is entitled to enjoin any further use or promotion of the Swank lion. Concord Fabrics Inc. v. Marcus Brothers Textile Corp., 409 F.2d 1315 (2d Cir.1969); Houghton Mifflin Co. v. Stackpole Sons, Inc., 104 F.2d 306, 307 (2d Cir.1939).
Balancing the equities of the parties, including the need of Gund for protection, the one-time aspect of Swank’s promotion, the difficulties presented by the recall requested by Gund during the Christmas season, and the availability of monetary damages, the request for a recall is denied.
Gund is entitled to costs, legal fees and its lost profits on the 39,000 units.
Settle judgment on notice.
IT IS SO ORDERED.
