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Spring 2006Newsletter

Clothing For Toy Bears May Be Copyrightable

Intellectual Property Update

For the purposes of copyright law, a line is drawn between useful articles and works of art. Useful articles are not copyrightable, even if they are artistically designed; whereas purely artistic objects have no utility except to express or portray, and therefore are copyrightable. For example, automobiles are useful articles, and therefore not copyrightable even though most of them are artfully styled. Their usefulness takes precedence over their attractiveness; so automobiles are protectable by patents, but not by copyrights.

Similarly, a garment is a useful article and therefore not copyrightable, even though clothing is often highly styled and the haute couture industry would love to have copyright protection in order to prevent 7th Avenue knock-offs. But the courts have taken the position that clothing has primarily utilitarian functions (warmth, modesty), no matter how attractive it may be. So, like automobiles, its usefulness takes precedence over its attractiveness.

Even some costumes have been held not copyrightable. In a case reported in an earlier issue of this newsletter, for example, uniforms for casino employees which included elaborate masquerade-type costumes and unique head-gear were held not copyrightable because the designer of these garments could not show that they were marketable independently of their utilitarian function as uniforms.

However, jewelry has been held copyrightable, although it is worn on the body. Artistic belt buckles have been treated as copyrightable jewelry, rather than as utilitarian devices for holding up a pair of pants. A swimsuit which was designed purely as wearable art, and would never be used for a dip in the pool, was held copyrightable. Humorous masks configured to resemble the nose of a pig, elephant or parrot have been granted copyright protection, even though they are worn on the face.

And in another case recently reported in this newsletter, a court refused to rule out copyright protection for animal-themed children’s Halloween costumes consisting of a bodysuit and a sculpted hood where each hood had attached to it a plush sculpture exhibiting animal head features and at the ends of the sleeves of some of the suits were elements resembling hands or claws.

Why these exceptions? Because jewelry is not necessary for warmth or modesty; non-swimming swim suits serve an artistic purpose, not a utilitarian one; and masks and Halloween costumes are worn for fun, not necessity (criminals excluded).

And now comes a new case in this area which has inspired so much previous litigation: Boyds Collection Ltd. v. Bearington Collection Inc., 74 U.S.P.Q.2D 1511 (M.D. Pa. 2005).

Stuffed toy bears are big business; revenues in the collectible teddy bear industry approached $1 billion in the late 1990’s. Stuffed animals are clearly copyrightable as sculpture. The plaintiff Boyds Collection copyrighted a basic teddy bear design, and then followed that up by copyrighting a line of additional teddy bears which differed from the basic design primarily by the different clothing they wore. Boyds then accused the defendant Bearington Collection of infringing its copyrights, including the copyrights on those latter bears.

The court noted that, since the latter Boyds bears differed only by their clothing from the original Boyds bears, the copyrights on the latter bears would not be valid unless the differences in the clothing alone constituted copyrightable increments over the originals. In other words, this case presented the issue of whether clothing for toy bears is copyrightable. If the answer was no, some of Boyds’ copyrights on the latter bears might be invalid for lack of originality over the original Boyds bears.

The defendant Bearington argued that clothing is simply not copyrightable, even if it is only for toy bears rather than for people. And the U.S. Copyright Office agreed with the defendant’s position in several administrative rulings that were called to the attention of the court in this case.

But the court ruled otherwise. It reasoned that the clothing did not serve to protect the teddy bears’ warmth or modesty; it served only to alter their appearance, which is an expressive rather than a utilitarian function. Therefore the court refused to hold any of the plaintiff’s copyrights invalid for lack of originality.

The defendant then requested reconsideration of that ruling, arguing “that clothing on plush bears serves ‘utilitarian functions’ of protection and preservation and should be considered ‘useful articles’ under copyright law.” But in Boyds Collection Ltd. v. Bearington Collection Inc., 75 U.S.P.Q.2D 1155 (M.D. Pa. 2005), the court handed down a second opinion adhering to its original ruling. It said:

The clothing for the Boyds bears does not serve to protect the bears from exterior elements. It does not serve to cover indecent aspects of the bears. It does not serve any purpose except appearance differentiation. It has no independent "utilitarian function" and is not a "useful article."

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