Case 2:16-cv-01380-ADS-ARL Document 16 Filed 11/03/16 Page 1 of 8 PageID #: 108
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`Memorandum of
`Decision & Order
`16-cv-1380 (ADS)(ARL)
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
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`WELL-MADE TOY M’FG CORPORATION, a corporation of the
`State of New York,
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`Plaintiff,
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`-against-
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`FLOWERS, INC. (d/b/a Burton & Burton), a corporation of
`Georgia,
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`Defendant.
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`APPEARANCES:
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`The Law Office of Gerard F. Dunne, P.C.
`Attorneys for the Plaintiff
`41 Union Square West, Suite 1125
`New York, NY 10003
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`By: Gerard F. Dunne, Esq., Of Counsel
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`Wilson Elser Moskowitz Edelman & Dicker LLP
`Attorneys for the Defendant
`150 E. 42nd Street, 21st Floor
`New York, NY 10017
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`By:
`Jura C. Zibas, Esq.
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`Stephen J. Barrett, Esq., Of Counsel
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`SPATT, District Judge:
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`This case involves allegations of copyright infringement in the design of ballerina ragdolls.
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`On March 21, 2016, the Plaintiff Well-Made Toy Manufacturing Corporation commenced
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`this infringement action against the Defendant Flowers, Inc., alleging that the Defendant illegally
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`appropriated design features of a copyrighted ragdoll produced by the Plaintiff, in violation of the
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`federal Copyright Act of 1976 (the “Copyright Act”), 17 U.S.C. § 101 et seq., and various foreign laws
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`and international treaties.
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`On April 20, 2016, the Defendant filed a motion, pursuant to Federal Rule of Civil Procedure
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`(“FED. R. CIV. P.”) 12(b)(6), seeking to dismiss the complaint on the ground that it fails to state a
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`cognizable violation of the Copyright Act. Further, the Defendant contends that, in the absence of a
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`1
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`FILED 
`CLERK 
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`  
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`U.S. DISTRICT COURT 
`EASTERN DISTRICT OF NEW YORK 
`LONG ISLAND OFFICE 
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`11/3/2016 11:32 am
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`Case 2:16-cv-01380-ADS-ARL Document 16 Filed 11/03/16 Page 2 of 8 PageID #: 109
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`viable
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`infringement claim, the remaining causes of action should be dismissed under
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`FED. R. CIV. P. 12(b)(3), as the Eastern District of New York is an improper venue for resolving
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`claims based on violations of foreign law.
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`For the reasons that follow, the Defendant’s motion to dismiss is denied.
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`I.
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`BACKGROUND
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`Unless otherwise noted, the following facts are drawn from the complaint and construed in
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`favor of the Plaintiff.
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`The Plaintiff, a resident corporation with offices in Queens, is involved in the design and
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`marketing of toys, including a product known as “Debbie Dancer,” a ballerina ragdoll. The Plaintiff
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`owns a valid copyright in the three-dimensional body sculpture and two-dimensional facial artwork
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`for Debbie Dancer.
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`The gravamen of this action is that, subsequent to the Plaintiff’s introduction into the
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`market of Debbie Dancer, the Defendant, a Georgia corporation, without authorization, introduced a
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`substantially similar product. The allegedly infringing ragdoll does not appear to have a name, so the
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`Court will refer to it as the “Defendant’s Dancer.”
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`The Plaintiff alleges that the Defendant’s Dancer is a direct copy of, and impermissibly
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`infringes upon the copyrighted artwork and sculptural features of Debbie Dancer. To illustrate this
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`allegation, in the complaint, the Plaintiff includes a color photograph of the two dolls positioned
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`side-by-side.
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`By this action, the Plaintiff seeks equitable relief in the form of: (1) an injunction preventing
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`the Defendant from manufacturing, importing, offering for sale, advertising, promoting, or
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`distributing the Defendant’s Dancer; (2) a mandatory injunction requiring the Defendant to deliver
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`up for destruction any allegedly infringing products and merchandise in its possession; and (3) a
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`mandatory injunction requiring the Defendant to diligently attempt to recall any allegedly infringing
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`products that have already been put out to market.
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`2
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`Further, the Plaintiff seeks an award of monetary damages, representing: (1) the profits
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`received by the Defendant from the sale of the Defendant’s Dancer; (2) the loss sustained by the
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`Plaintiff as a result of product sales that were diverted to the Defendant due to the presence of the
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`Defendant’s Dancer on the market; and (3) statutory damages and penalties, including punitive
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`damages, interest, and costs.
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`A.
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`The Applicable Legal Standards
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`II.
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`DISCUSSION
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`“[I]n order to establish a claim of copyright infringement, ‘a plaintiff with a valid copyright
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`must demonstrate that: (1) the defendant has actually copied the plaintiff’s work; and (2) the
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`copying is illegal because a substantial similarity exists between the defendant’s work and the
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`protectable elements of plaintiff’s.’ ” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 64,
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`63 (2d Cir. 2010) (quoting Hamil Am. Inc. v. GFI, 193 F.3d 92, 99 (2d Cir. 1999)).
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`In this regard, the Second Circuit has long deemed “the determination of the extent of
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`similarity that will constitute a substantial, and hence infringing, similarity” to “present[ ] one of the
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`most difficult questions in copyright law, and one that is the least susceptible of helpful
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`generalizations.’ ” Peter F. Gaito Architecture, LLC, 602 F.3d at 63 (quoting 4-13 NIMMER ON
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`COPYRIGHT § 13.03 (2009)) (emphasis in original). “For that reason, and because the question of
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`substantial similarity typically presents an extremely close question of fact, questions of non-
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`infringement have traditionally been reserved for the trier of fact.” Id. (citations omitted).
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`Under Rule 12(b)(6), a party may move to dismiss a cause of action that “fail[s] to state a
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`claim upon which relief can be granted.” Thus, “[t]o survive a motion to dismiss, the complaint must
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`plead ‘enough facts to state a claim to relief that is plausible on its face,’ Bell Atl. Corp. v. Twombly, 550
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`U.S. 544, 570, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007), and ‘allow[ ] the court to draw the reasonable
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`inference that the defendant is liable for the misconduct alleged,’ Ashcroft v. Iqbal, 556 U.S. 662, 678,
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`3
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`Case 2:16-cv-01380-ADS-ARL Document 16 Filed 11/03/16 Page 4 of 8 PageID #: 111
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`129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009).” Otis-Wisher v. Medtronic, Inc., No. 14-cv-3491, 2015 U.S. App.
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`LEXIS 9565, at *2 (2d Cir. June 9, 2015).
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`However, in the copyright context, the Second Circuit has authorized district courts to
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`undertake a merits-based “substantial similarity” analysis where all the materials needed to make a
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`side-by-side comparison of the copyrighted work and the allegedly infringing work are attached to
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`the complaint.
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`In particular, the Second Circuit has explained that:
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`[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 fact-
`finding 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).
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`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. . . .
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`Peter F. Gaito Architecture, 602 F.3d at 64, 65.
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`In this regard, the Second Circuit has clarified that, at the pleading stage, resolving an
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`infringement claim as a matter of law is only appropriate when: (1) “the similarity concerns only
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`noncopyrightable elements of plaintiff[’s] work”; or (2) “when no reasonable trier of fact could find
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`the works substantially similar.” Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir. 1986).
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`Case 2:16-cv-01380-ADS-ARL Document 16 Filed 11/03/16 Page 5 of 8 PageID #: 112
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`B.
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`The Present Record is Insufficient to Warrant Dismissal as a Matter of Law
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`Notwithstanding the pre-answer, pre-discovery posture of this case, the Defendant contends
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`that the present motion record is sufficient to permit the Court to resolve the Plaintiff’s copyright
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`infringement claim as matter of law. In particular, the Defendant asserts that the color photograph
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`annexed to the complaint, featuring a side-by-side depiction of the dolls in question, is all that is
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`required for the Court to determine that the two works are not substantially similar, and therefore,
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`that the Plaintiff’s allegations do not plausibly give rise to an entitlement to relief. The Court
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`disagrees.
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`Although the photograph shows enough general similarities between the two products to
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`make the Plaintiff’s allegations of illegal copying plausible, in the Court’s view, it is insufficient to
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`permit a conclusive comparison of the kind requested by the Defendant.
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`Specifically, it is noted that neither party submitted exemplars of the three-dimensional
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`objects for the Court to physically inspect, despite the fact that one of the main components of the
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`Plaintiff’s copyright is Debbie Dancer’s three-dimensional body sculpture. Unlike cases involving
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`works of two-dimensional art, photographs, books, manuscripts, or articles that are readily
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`comparable by a reviewing court, in the Court’s view, the photograph of three-dimensional figures in
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`this case does not permit an ultimate-issue determination on a paper record. Cf. Wiren v. Shubert
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`Treatre Corp., 5 F. Supp. 358, 362 (S.D.N.Y 1933) (“There seems to be no good reason why where one
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`book is claimed to be an infringement of a copyrighted book, and both books are attached to the bill
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`of complaint and the pleadings permit it, a reading and comparison of the books themselves should
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`not dispose of the claim of infringement . . .”).
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`Nor did either party submit scaled images of the dolls or otherwise provide corresponding
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`measurements of the products – this despite the Defendant’s heavy reliance on disparate body
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`proportions as a basis for a finding of non-similarity. In this regard, it is noted that other courts to
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`engage in similar analyses have identified the slightest measurable discrepancies as relevant to
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`Case 2:16-cv-01380-ADS-ARL Document 16 Filed 11/03/16 Page 6 of 8 PageID #: 113
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`findings of non-similarity. See, e.g. Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 501 (2d Cir. 1982)
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`(Lumbard, J., dissenting) (in a case involving plush dolls, characterizing the majority opinion as
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`basing its substantial similarity analysis on “nose widths, lip lengths, eyes spaces, and button
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`diameters [that] differ by fractions of an inch”).
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`Nor is there any allegation or supporting evidence regarding the conditions under which the
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`photograph was taken. Therefore, contrary to the Defendant’s suggestion, the Court is unwilling to
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`rely on this image alone to conclude, as a matter of law, that the dolls have substantially dissimilar
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`skin tones. In the Court’s view, it is not at all clear that the apparent differentiation in the colors of
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`the dolls’ skin results from discretionary elements of the products’ designs, as opposed to natural
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`conditions, such as shadows and imperfect lighting, affecting the quality of the photograph.
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`Also, the photograph in question appears to have been taken using a digital camera;
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`uploaded to a computer; and then printed onto a sheet of white paper using an ordinary office
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`printer. With reasonable certainty, each step of this process could distort the coloration of the
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`image to an unknown degree.
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`Under these circumstances, the Court finds it unfeasible to render any reasoned decision on
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`this subject based solely on the photograph in the record. Stated otherwise, on the current record,
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`the Court is unable to conclude that any similarities in the product concern only noncopyrightable
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`elements of the Plaintiff’s work; or that no reasonable trier of fact could find the products
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`substantially similar. See Walker, 784 F.2d at 48.
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`On the contrary, in the Court’s view, notwithstanding the discrepancies identified in the
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`Defendant’s legal memorandum, based solely on the Plaintiff’s complaint and the attached materials,
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`an ordinary observer would regard the aesthetic appeal of these dolls as nearly identical. See Yurman
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`Designs, Inc. v. PAJ, Inc., 262 F.3d 101, 111 (2d Cir. 2001).
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`Accordingly, the Defendant’s motion to dismiss the portion of the first cause of action based
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`on federal copyright infringement is denied.
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`C.
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`As to the Remaining Causes of Action Based on Violations of Foreign Laws
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`As noted above, relying on a theory of forum non conveniens, the Defendant also moves under
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`FED. R. CIV. P. 12(b)(3) to dismiss the remainder of the Plaintiff’s claims on the ground that, in the
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`absence of a viable claim under the Copyright Act, venue in this judicial district is improper.
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`Initially, courts in this Circuit have recognized that Rule 12(b)(3) “is not the correct vehicle
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`for” the relief the Defendant seeks because “forum non conveniens is a separate and [discrete] doctrine
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`which rests on the ‘inherent authority of the federal courts’ rather than on any statute or court
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`rules.” See Bank of Am. Corp. v. Braga Lemgruber, 385 F. Supp. 2d 200, 206 n.2 (S.D.N.Y. 2005) (quoting
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`Monegasque De Reassurances S.A.M. v. Nak Naftogaz of Ukraine, 158 F. Supp. 2d 377, 379 n.3 (S.D.N.Y. 2001),
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`aff’d, 311 F.3d 488 (2d Cir. 2002)).
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`Accordingly, notwithstanding the Defendant’s reliance on FED. R. CIV. P. 12(b)(3), the Court
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`will construe this portion of its motion as seeking dismissal based on the doctrine of forum non
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`conveniens.
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`Even so, as the Defendant concedes, venue in this judicial district would only become
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`inconvenient “in the absence of any claims arising under United States law.” Def. Reply Memo of
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`Law at 8. Thus, given the Court’s determination that the complaint states a viable claim for
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`infringement under the federal Copyright Act, the Court discerns no substantial basis for concluding
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`that the Eastern District is an inconvenient forum in which to adjudicate the Plaintiff’s foreign law
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`claims.
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`Accordingly, the Defendant’s motion to dismiss the portion of the first cause of action based
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`on foreign copyright laws and related international treaties is denied.
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`7
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`III.
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`CONCLUSION
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`Based on the foregoing, the Court denies the Defendant’s motion to dismiss the complaint in
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`all respects. This matter is respectfully referred to United States Magistrate Judge Arlene R. Lindsay
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`/s/ Arthur D. Spatt____________________________________________
`ARTHUR D. SPATT
`United States District Judge
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`for discovery.
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`It is SO ORDERED:
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`Dated: Central Islip, New York
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`November 3, 2016
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`8
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