Eden Toys, Inc., Cross-Appellee v. Florelee Undergarment Co., Inc., Cross-Appellant

Eden Toys, Inc. (“Eden”) appeals from an order of the Southern District of New York, 526 F.Supp. 1187, Robert L. Carter, Judge, granting summary judgment dismissing its claim against Florelee Undergarment Co., Inc. (“Florelee”) for copyright infringement. Florelee cross-appeals from the district court’s grant of summary judgment enforcing Eden’s claim against it under the Lanham Act. We affirm in part and reverse and remand in part.

The subject of this case is the alleged copying of a drawing of the copyrighted fictional character Paddington Bear, the central figure in a series of children's books written by Michael Bond. 1 Paddington and Company, Limited (“Paddington”), a British corporation, holds all rights to these books, and to the characters therein. In 1975 Paddington entered into an agreement with Eden, an American corporation, granting Eden exclusive North American rights to *30 produce and sell, and to sublicense the production and sale of, a number of Padding-ton products. 2 This agreement was amended in 1980 to grant Eden the exclusive North American rights to produce and sub-license all Paddington products except books, tapes and records, stage plays, motion pictures, and radio and television productions.

At some point between 1975 and 1977 Ivor Wood, the illustrator of the Padding-ton Bear books, drew a series of sketches (“the Ivor Wood sketches”) for the use of Eden and its sublicensees. There is evidence in the record that in July 1980 Eden obtained in its own name U.S. copyright registration certificate No. TXU 50-185 for these sketches as “derivative” works. Using the Ivor Wood sketches as a point of departure, the C.R. Gibson Company (“Gibson”), pursuant to a sublicense from Eden, produced a design for gift wrap that included seven drawings of Paddington Bear (“the Eden/Gibson drawings”). This gift wrap was first published in January 1978. In March 1980, Eden registered the gift wrap design with the Copyright Office as a derivative work.

In November 1979, Eden discovered that Florelee was selling a nightshirt featuring a print of a bear later found by the district court to be “identical in almost all respects” *31 to one of the Eden/Gibson drawings of Paddington Bear. The nightshirt bore the legend “© Fred Original.” After discovering a second nightshirt with the same apparent “knockoff” of the Eden/Gibson drawing Eden filed suit against Floretee in April 1980, alleging both that Floretee had violated Eden’s rights under the Copyright Act and that Floretee had made a “false designation of origin” or “false description” of its product, in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976), by printing “© Fred Original” on its shirts. Following cross-motions for summary judgment, Judge Carter granted Florelee’s motion for summary judgment dismissing the copyright claim, and Eden’s motion for summary judgment enforcing the Lanham Act claim.

Reprinted below are (1) a drawing from page 8 of The Great Big Paddington Book, copyrighted by Paddington; (2) the Ivor Wood sketch used as a model by Gibson, and apparently copyrighted by Eden; (3) the Eden/Gibson drawing, copyrighted by Eden and infringed by Floretee, and (4) Florelee’s “Fred Bear” drawing.

Drawing of original Paddington Bear, from pre-existing book copyrighted by Paddington. U.S. Copyright Reg. No. VA 11-588.