Wednesday 21 October 2015

The World’s Cutest Dog too commonly shaped to be copyright protected

Here, courtesy of Denise Verdoold (Banning), is a gripping tale of some canine capers from the Netherlands. This is what she writes:
Boo looking cool
Recognise the act of spending an entire afternoon watching and flicking through entertaining yet distracting-you-from-what-you-are-actually-supposed-to-be-doing clips and pictures of charming children and frolicking animals? Well, if you do, you will certainly have come across Boo, the world’s cutest dog. The adorable Pomeranian dog with its distinctive hair-cut has undeniably caused many a smile, appearing dressed up in colourful dog jumpers or taking a walk together with its canine brother Buddy. Since his first appearance in 2007, Boo has become very popular, its own Facebook page having already been ‘liked’ by more than 17 million people. Boo merchandise includes stuffed toys, puzzles, books and calendars.
And here he is again
Boohoo, the creators of Boo must therefore have been surprised when the Presiding Judge of District Court The Hague (Loos J) in summary injunction proceedings on 12 October 2015 ruled that the stuffed toy likeness of Boo was not protected by copyright. The Presiding Judge considered the characteristics of Boo to be, on the one hand, a realistic copy of the real Boo and, on the other hand, common for stuffed animals. Boo might be the cutest dog in the world, but that now seems not enough to entitle him to claim copyrights in its appearance.

A, the owner of Boo whose name is anonymised in the judgement, established Buddy Boo Inc. (‘Buddy Boo’), a company which, inter alia, develops and markets Boo merchandise. Gund, subsidiary company of Enesco LLC (‘Enesco’), incorporated under the laws of the United States of America, develops and distributes toys. Buddy Boo and Enesco entered into a licence agreement under which Buddy Boo granted Enesco (for the benefit of Gund) the exclusive right to make, to have produced, to sell and have sold items, including stuffed animals, under the name and in the likeness of Boo. One of the products marketed by Gund under the licence agreement is a plush stuffed Boo dog, which is available in various sizes, with and without (removable) clothes.

On 21 August 2014, Buddy Boo obtained from the United States Copyright Office a Certificate of Registration for the work ‘Boo - World’s Cutest Dog - 8” Version’, with the description ‘Plush representation of a living dog’. The certificate states 1 March 2012 as the date of first publication of the work.

Dino Trading B.V., incorporated under Dutch law, markets, inter alia, (stuffed) toys, including the stuffed dog Pom. Pom, like the stuffed Boo, is available in different sizes, with and without an (removable) outfit.

Below, images of the Boo stuffed dog and the Pom stuffed dog, are pictured in proximity to one another.

Pom stuffed dog
Boo stuffed dog
Enesco, acting as the claimant in this matter on the basis of the licence agreement granting Enesco this right, demanded Dino Trading to cease and desist the production and sale of the Pom stuffed dog on the basis that it constitutes a copyright infringement of Boo’s stuffed likeness. After the demand letter to Dino Trading turned out not to have the desired effect, Enesco requested the Presiding Judge of the District Court Gelderland to grant an order to seize before judgement 15,131 stuffed Pom dogs and have them sequestrated in order to secure the surrender of the seized goods on the basis of article 28 of the Dutch Copyright Act.

Following the seizure, Enesco instituted summary injunctive proceedings before the Presiding Judge of the District Court The Hague, requesting the court, inter alia, to order Dino Trading to cease and desist the infringement of the copyrights in the Boo stuffed dog and destroy the remaining stock of Pom stuffed animals, both claims subject to an incremental penalty, and order Dino Trading to remunerate the legal costs Enesco incurred in the proceedings.

Substantiating its claims, Enesco argues that the Boo stuffed toy dog is a creative adaptation of the appearance of Boo - which in itself is alleged to be both original and creative - which does not naturally occur. A number of subjective choices were made designing the stuffed Boo toy, rendering the toy to be a copyright protected work in all countries of the European Union as a result of the concept of ‘work’ having been harmonised throughout the EU.

Enesco put forward 7 characteristics vested in the appearance of Boo the (real) dog and no less than 29 elements relating to the adaption of the appearance for the purpose of the stuffed Boo toy. Boo’s real life characteristics include, inter alia, the fur which is cut relatively short, the choice of cutting the hair of the dog’s face in such a way that it seems to have cheeks and a chin, the seemingly disproportionally large size of the dog’s head created by cutting the hair in a round shape and the choice of cutting the hair on and around the ears in such a way that they seem relatively short and round. A selection of the elements characteristic of the stuffed likeness of Boo includes the disproportionally large head, the positioning of the eyes, nose and mouth, the slightly opened mouth which creates a smile, the shape of the face, the choice of the stitching, materials and colour and the clothes that the Boo stuffed dogs wear.

According to Enesco, the Pom stuffed animal contains all the elements included in the design of the Boo toy and therefore creates the same total impression as Boo’s stuffed likeness.

Dino Trading disagrees, arguing that the stuffed Boo toy enjoys no copyright protection. Furthermore, the appearance of the Pom stuffed dog is not derived from Boo or the Boo stuffed dog, but from a dog Jiff, also a Pomeranian dog which has its own Facebook page and can even be booked as an actor. Therefore, Dino Trading requests the Presiding Judge to reject Enesco’s claims and lift the seizure of the stuffed Pom dogs.

The Presiding Judge of the District Court The Hague denied Enesco’s claim, ruling that the Boo stuffed dog is not copyright protected.

The design of the stuffed Boo dog constitutes a realistic representation of the appearance of the real Boo. As results, the characteristics of the stuffed animal listed by Enesco as copyright protected which are also vested in the real dog, lack originality, according to the Presiding Judge. This is all the more true, as Enesco failed to show that the appearance of Boo is original for a Pomeranian dog, nor that Boo was the first dog having that appearance. Dino Trading, in substantiating its defence, claimed that the so-called ‘Teddy Bear cut’, which corresponds to Boo’s hair cut (Pomeranian dogs naturally having long hair), had been known before 2007, the year in which Boo had its first Teddy Bear cut. Dino Trading also submitted various pictures of dogs having had a Teddy Bear cut, including Jiff, and referred to a number of internet discussions about this cut, all dating from before 2007. Enesco failed to contest Dino Trading’s arguments sufficiently, merely putting forward that the Teddy Bear cut - even if it would be held that this cut existed before Boo had his - has only enjoyed fame since Boo’s introduction.

Regarding the elements characteristics of Boo’s stuffed likeness, the Presiding Judge held these are all either based on the (unprotected) appearance of real life Boo or are commonly used in stuffed animals. Dino Trading had submitted various pictures of stuffed animals to prove this point. Therefore, the characteristics of the Boo stuffed dog were ruled to be trivial, if not functional or having a technical effect. Even the outfits designed for plush Boo were held to be trivial.

Enesco’s claim that the combination of the characteristics rendered the design of the Boo stuffed dog original nonetheless, was also rejected by the Presiding Judge. The design of the Boo stuffed animal consists of, on the one hand, characteristics of the real dog Boo which were copied as realistically as possible and, on the other hand, (non-creative) choices of material and shapes which are common in stuffed animals and meet the functional requirements of such toys. Accordingly the individual elements, nor the combination thereof, can, according to the Presiding Judge, be regarded as the author’s own intellectual creation. Boo the stuffed dog therefore does not enjoy copyright protection.

As a result of the harmonised concept of ‘work’, the conclusion that the Boo stuffed toy does not enjoy copyright protection in the Netherlands, implies that the toy will also not be held to be copyright protected in other EU countries. Therefore, as Enesco failed to submit other circumstances justifying that Boo’s stuffed likeness would be regarded as a copyright protected work in other EU countries, the EU-wide order claimed by Enesco was also rejected by the Presiding Judge.

As a consequence of the Presiding Judge rejecting the claim that the stuffed Boo dog enjoys copyright protection, the prejudgement attachment of the Pom stuffed dogs was lifted. Enesco is therefore required to return the seized toys to Dino Trading.

Enesco was ordered to compensate the legal costs incurred by Dino Trading, amounting to a total sum of EUR 23,782.01.

Every dog has its day, but Boo’s day turned out not to be on the day of the judgment of the Presiding Judge of the District Court The Hague.

The decision (in Dutch) is available here.

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