`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`PRIMA CREATIONS, INC.,:
`:
`Plaintiff,:CIVIL ACTION
`:
`v.:NO. 11-CV-1649
`:
`SANTA’S BEST CRAFT, L.L.C.,:
`et al.,:
`:
`Defendants.:
`MEMORANDUM AND ORDER
`Joyner, C.J.July 21, 2011
`
`This case comes before the Court as the result of the motion of
`Defendant, Santa’s Best Craft, L.L.C., to dismiss Count I of
`Plaintiff’s, Prima Creations, Inc., complaint for failure to
`state a claim upon which relief can be granted, pursuant to Fed.
`R. Civ. P. 12(b)(6).
`I. Facts
`Prima Creations, Inc., (Plaintiff), creates and sells seasonal
`products, such as those used for holidays, to major retailers
`throughout the United States, making its products widely
`available. (Compl., ¶¶ 7-9, Doc. No. 1). Plaintiff applied for
`and obtained a copyright registration for its “Elf Hat” which was
`registered on February 25, 2009 and was assigned registration
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`number VA1-664-992. (Compl., ¶ 10, Doc. No. 1). Plaintiff has
`sold its Elf Hat to major retailers throughout the United States
`beginning in 2000 and has continued selling the item through
`2010. (Compl., ¶ 12, Doc. No. 1). After becoming aware, during
`the 2009 Christmas holiday season, that Santa’s Best Craft,
`L.L.C., (Defendant), was selling an elf hat nearly identical to
`Plaintiff’s copyrighted Elf Hat, Plaintiff, through its attorney,
`informed Defendant on or about November 6, 2009 of its copyright
`registration and informed Defendant of the alleged infringement.
`(Compl., ¶¶ 13-14, Doc. No. 1).
`Defendant responded through legal counsel to Plaintiff’s letter
`on December 22, 2009, but refused to cease sale of the allegedly
`infringing product. (Compl., ¶ 16, Doc. No. 1). Plaintiff
`further contends that Defendant sold the infringing elf hat,
`though slightly modified from the previous year, again during the
`Christmas holiday season of 2010. (Compl., ¶ 17, Doc. No. 1).
`As a result, on March 8, 2011, Plaintiff filed a complaint
`alleging copyright infringement and unfair competition against
`Defendant. (Doc. No. 1).
`II. Standard of Law
`A Rule 12(b)(6) motion to dismiss for failure to state a claim
`upon which relief can be granted “do[es] not require heightened
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`fact pleading of specifics, but only enough facts to state a
`claim to relief that is plausible on its face.” Bell Atlantic
`Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 167 L. Ed.
`2d 929 (2007). A 12(b)(6) motion is proper, “if it appears to a
`certainty that no relief could be granted under any set of facts
`which could be proved.” Motown Record Co. L.P., v. Kovalcik, No.
`07-4702, 2009 WL 455137, at *2 (E.D. Pa. Feb. 23, 2009) (quoting
`D.P. Enter., Inc. v. Bucks County Cmty. Coll., 725 F.2d 943, 944
`(3d Cir. 1984)). When examining the validity of a 12(b)(6)
`motion, “all well-pleaded allegations of the complaint must be
`taken as true and interpreted in the light most favorable to the
`plaintiffs, and all inferences must be drawn in favor of them.”
`McTernan v. City of York, Penn., 577 F.3d 521, 526 (3d Cir. 2009)
`(quoting Schrob v. Catterson, 948 F.2d 1402, 1408 (3d Cir.
`1991)).
`III. Discussion
`Presently, Defendant moves to dismiss the Plaintiff’s claim for
`copyright infringement, contesting the validity of Plaintiff’s
`copyright over the Elf Hat. (Def.’s Mot., Pg. 1, Doc. No. 10).
` “The elements of a copyright infringement action are (1)
`ownership of a valid copyright and (2) copying by the alleged
`infringer.” Masquerade Novelty, Inc. v. Unique Industries, Inc.,
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`912 F.2d 663, 667 (3d Cir. 1990) (quoting Whimsicality, Inc. v.
`Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir. 1989)). As
`established by the Copyright Law, 17 U.S.C. §101, et. seq.,
`“pictorial, graphic, and sculptural works” may be protected as
`original works of authorship. 17 U.S.C. § 102(a)(5).
`Specifically, 17 U.S.C. § 101, provides in pertinent part:
`Pictorial, graphic and sculptural works include two-dimensional
`and three dimensional works of fine, graphic, and applied art,
`photographs, prints and art reproductions, maps, globes, charts,
`diagrams, models, and technical drawings, including architectural
`plans. Such works shall include works of artistic craftsmanship
`insofar as their form but not their mechanical or utilitarian
`aspects are concerned; the design of a useful article, as defined
`in this section, shall be considered a pictorial graphic, or
`sculptural work only if, and only to the extent that, such design
`incorporates pictorial, graphic, or sculptural features that can
`be identified separately from, and are capable of existing
`independently of, the utilitarian aspects of the article.
`Further, a useful article is defined as, “an article having an
`intrinsic utilitarian function that is not merely to portray the
`appearance of the article or to convey information.” 17 U.S.C.
`§ 101.
`Here, there does not appear to be any dispute that the
`plaintiff was granted a copyright for its Elf Hat. Rather, the
`defendant challenges the validity of that copyright registration
`by asserting that the plaintiff failed to honestly represent the
`nature and characteristics of its product. Indeed, Defendant
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`contends that Plaintiff committed fraud on the Copyright Office
`by declaring the Elf Hat to be a sculpture, while the only
`practical use of the item is as clothes and/or holiday costume.
`(Def. Mot., Doc. No. 10). “The evidentiary weight to be accorded
`the certificate of registration made five years after the first
`publication of the work falls within the discretion of the
`court.” 17 U.S.C. § 410(c). When effectively challenged by the
`defendant, the burden of proof will shift, and the plaintiff will
`be forced to prove the validity of the copyright in order to
`maintain a copyright infringement action. Masquerade, 912 F.2d
`663, 667.
` “It has been consistently held that a plaintiff’s knowing
`failure to advise the Copyright Office of facts which might have
`led to the rejection of a registration application constitutes
`grounds for holding the registration invalid and incapable of
`supporting an infringement action.” Masquerade, 912 F.2d 663, at
`667. Plaintiff filed the item in question with the Copyright
`Office under the name “ELF HAT,” with the nature of the work
`indicated as “ornamentation on hat.” (Doc. No. 10). Such
`disclosure to the Copyright Office adequately counters any claims
`of fraudulent or misleading practices in attempting to secure a
`copyright. See Masquerade, 912 F.2d 663, 668 (holding that the
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`term “nose mask” sufficiently described the articles for which
`copyright was sought by the Plaintiff to the Copyright Office,
`and distinguishing the case from the blatant deception seen in
`Whimsicality).
`In Masquerade, the Third Circuit overturned a grant of
`summary judgement in favor of the defendants, which found that
`the relevant products made by the plaintiff, masks designed to
`resemble animal noses, were “useful articles under 17 U.S.C. §
`101 and were not copyrightable “because their sculptural elements
`could not be separated from their utilitarian purpose of allowing
`a person to create humor by masquerading in an animal’s nose.”
`Id. at 664. Also reversed was the district court’s ruling that
`the plaintiff’s registration applications did not adequately
`inform the Copyright Office that the masks were to be worn by
`humans. Id. at 667. The Third Circuit reversed, reasoning that
`the masks were not “useful articles” as defined by the Copyright
`statute, and were in fact copyrightable as sculptures. Id. at
`670-71. Further, because the defendants never asserted that the
`plaintiff’s nose masks served any purpose unrelated to their
`appearance, such as to protect the nose in some way, the court
`held that the district court erred in “regarding as a utilitarian
`function the effect, humor, produced by the only utility the nose
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`masks have, which is in their portrayal of animal noses.” Id. at
`670.
`
`Defendant argues that the present case should be governed by
`the law set forth in Whimsicality; however, this case is
`distinguishable. In Whimsicality, the Second Circuit affirmed
`the dismissal of plaintiff’s copyright claim and denial of
`injunctive relief, holding that the plaintiff obtained its
`copyright registrations by misrepresentation of its costumes to
`the United States Copyright Office. Whimsicality, 891 F.2d 452,
`453. The plaintiff in Whimsicality submitted applications to the
`Copyright Office for six creations that were referred to as soft
`sculptures, failing to mention anywhere that the items in
`question were meant to be used as costumes and that they lacked a
`firm form unless they were laid out flat or worn by an
`individual. Id. at 454. With regard to this misrepresentation,
`the court stated that, “the evidence demonstrates not only that
`the costumes were not soft sculpture, but that Whimsicality knew
`full well that no reasonable observer could believe that the
`costumes were soft sculpture.” Id. at 456. Further, the court
`“decline[d] to reach the issue of copyrightability, since proper
`registration is a prerequisite to an action for infringement.”
`Id. at 453. However, the Whimsicality court did take the time to
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`distinguish its case from Animal Fair, Inc. v. Amfesco Indus.,
`Inc., 620 F. Supp. 175 (D. Minn. 1985) on the grounds that “a
`slipper, unlike a costume, has a relatively firm form which can
`be identified for copyright purposes,” and because the title of
`the work listed on the Copyright application in Animal Fair was
`“BEARFOOT slipper,” making clear the item sought to be protected.
`Whimsicality, 891 F.2d 452, 456. Instant Plaintiff referred to
`the article at issue as an Elf Hat on the application to the
`Copyright Office, and as can be seen in the pictures supplied
`with Defendant’s Memorandum in Support of the Motion to Dismiss,
`the sculpture is recognizable without being worn or carefully
`laid out.
`The Ninth Circuit has previously ruled “that costumes have
`an intrinsic utilitarian function; thus they cannot be
`copyrighted as costumes.’... The costumes are copyrightable, if
`at all, to the extent that they have features which can be
`identified separately and are capable of existing independently
`as a work of art.” Nat’l Theme Productions, Inc. v. Jerry B.
`Beck, Inc., 696 F. Supp. 1348, 1352 (S.D. Cal. 1988). It is a
`difficult, if not impossible task to separate an article’s
`functional aspects from its sculptural aspects, but “this
`analysis is only required where an article is first determined to
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`be a useful one under § 101.” Masquerade, 912 F.2d 663, 670. In
`Masquerade, the Third Circuit reversed a decision from the
`Eastern District of Pennsylvania that concluded animal masks were
`“useful articles” and that they were not entitled to copyright
`protection “because their sculptural elements could not be
`separated from their utilitarian purpose of allowing a person to
`create humor by masquerading in an animal’s nose.” Id. at 666-
`667. The Court stated that the nose masks were not useful
`articles, as their only purpose was in their portrayal of animal
`noses. Id. at 670. Defendant asserts that the only purpose of
`the Elf Hat is to be worn as a person to masquerade as an elf.
`(Doc. No. 10, 7). When applying the logic of the Masquerade
`court, Plaintiff’s Elf Hat cannot be considered a “useful
`article,” because it has no utility that doesn’t derive from its
`appearance, and is therefore copyrightable under 17 U.S.C. § 102
`(a)(5).
`However, even assuming that the Elf Hat is a “useful
`article,” it would still be entitled to copyright protection. In
`Animal Fair, the defendant did not contest the ownership of a
`copyright, but, as in the present instant case, challenged the
`validity of the copyright. Animal Fair, 620 F. Supp. 175, 185.
`The court chose to assume that the Bear Slipper at issue in
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`Animal Fair was a “useful article” under 17 U.S.C. § 101, but
`acknowledged that the plaintiffs made a strong argument that the
`BEARFOOTTM slipper was a novelty item, and not a useful article.
`Id. at 187. The Animal Fair court held that, “plaintiff’s design
`features are conceptually separate from the utilitarian aspects
`of its slipper,” and as such, the entire exterior design of the
`slipper is protectable under the Copyright Act. Id. at 187-88.
`In the instant case, the large elf ears and the pattern on
`the Elf Hat are conceptually separate from the utilitarian
`aspects of the hat, and we find would still be protectable if the
`hat was deemed a useful article. Defendant’s challenge to the
`validity of Plaintiff’s copyright fails, and since Plaintiff has
`sufficiently alleged copyright ownership and infringement we find
`that the complaint adequately states a claim upon which relief
`may be granted.
`
`IV. Conclusion
`For all of the foregoing reasons, the Defendant’s Motion to
`Dismiss is denied as set forth in the attached order.
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