Archives for posts with tag: dora the explorer

This opinion is about discovery in an infringement case involving POWERWHEELS, Dora the Explorer, Spider-Man, Strawberry Shortcake and Ninja – under the ‘Lil Quad and PowerQuad marks.

dora explorer powerquad spider man powerquad

and FISHER-PRICE, INC., Plaintiffs,

2008 U.S. Dist. LEXIS 89439

Decided November 4, 2008, Opinion by: Honorable Hugh B. Scott, United States Magistrate Judge:

This is a trademark and copyright infringement and common law unfair competition action regarding toy ride-on quad vehicles. The plaintiffs claim trade dress infringement and copyright infringement of their “‘LIL QUAD” battery powered ride-on quad vehicles under their POWERWHEELS(R) brand, bearing the Nickelodeon channel characters Dora the Explorer and Diego. Plaintiffs allege that defendant’s “POWER QUAD” bearing the indicia of Marvel Comics’ Spider-Man infringes on their ‘LIL QUAD design and claims that defendant has been selling these infringing ‘LIL QUAD toys since 2006. (See Docket No. 29, Pls. Memo. at 2; see generally Docket No. 1, Compl.)

On October 30, 2007, plaintiffs served their Interrogatories and requests for production (id. at 3; Docket No. 29, Kane Decl. P 2, Exs. A (Interrogatories), B (requests for production)). After over three months (including repeated requests for a response), defendant served plaintiff with its discovery responses (Docket No. 29, Pls. Memo. at 3; Docket No. 29, Kane Decl. PP 3-4, 5, Exs. C, D, E (Interrogatory responses), F (document production responses)). On February 15, 2008, plaintiffs wrote to defendant about the deficiencies in defendant’s production, outlining several non-responsive Interrogatory responses and categories of documents not produced (id.; Docket No. 29, Kane Decl. P 6, Ex. G).

Defendant basically responded with information about the Spider-Man POWER QUAD. Plaintiffs allege that defendant infringes on their LIL QUAD mark with other toys (for example POWER QUAD toys with Strawberry Shortcake, Ninja, and Marvel Heroes trade dress) and defendant thus needs to supplement its production as to these other toys (see Docket No. 29, Kane Decl., Ex. G, at 1-3). Interrogatory Number 8 sought defendant to identify which part of the LIL QUAD design was functional or otherwise not protectable by copyrights, but defendant objected that it was premature since it had not examined plaintiffs’ products (Docket No. 29, Kane Decl., Ex. A, Interrog. No. 8; Docket No. 29, Kane Decl., Ex. G at 3-4). Plaintiffs sought documents regarding defendant’s distribution of the POWER QUAD toys, the costs to produce, documents regarding adverting and marketing of these toys, and communications with retailers about advertising and about this action (Docket No. 29, Kane Decl., Ex. G, at 4-5).

Plaintiff’s motions are granted in part and denied in part. The granted motions are about packaging materials and access to employees responsible for packaging materials.

This case is about the patent of a collapsible structure, specifically pop-up goals available for sale at Target. The producer of the goods is a United Arab Emerites based corporation called Ninja Corp.

Patent Category Corp.
Target Corp. and Franklin Sports, Inc.

CV 06-7311 CAS (CWx); 567 F. Supp. 2d 1171

Honorable Christina Snyder, July 16, 2008, decided:

Plaintiff Patent Category Corp. (“plaintiff” or “PCC”) owns the rights to U.S. Patent No. 6,266,904 (“the ‘904 patent”) issued on July 31, 2001, and U.S. Patent No. 6,604,537 (“the ‘537 patent”), issued on August 12, 2003. On November 15, 2006, plaintiff filed the instant suit against defendants Target Corp. (“Target”) and Franklin Sports, Inc. (“Franklin”) alleging that defendants are infringing plaintiff’s patents. Defendant Franklin is a distributor of at least fifteen models of collapsible, spring-form soccer goals (“Pop-Up Goals”), which plaintiff alleges infringe its patents. [FN1] Franklin purchased these accused products from The Ninja Corp. UAE (“Ninja“). 2 Id. Defendant Target Corp. (“Target”) sells Pop-Up Goals to consumers pursuant to an agreement with Franklin.

=== Footnotes ===
FN1 At the hearing held herein, the parties provided the Court with two examples of the accused products. Exhibit 1, the Dora the Explorer Pop-Up Goal, is accused of infringing the ‘537 patent only. Exhibit 2 is accused of infringing both the ‘537 patent and the ‘904 patent. The Court will refer to these exhibits in deciding the issue of infringement, or non-infringement as the case may be.2 On March 9, 2007, Ninja, a corporation organized under the laws of the United Arab Emirates, filed suit against plaintiff in the United States District Court for the Southern District of Texas, seeking a declaration that its products do not infringe the ‘904 and ‘537 patents, and that these patents are invalid. The action was then transferred to the United States District Court for the Central District of California in September 2007, and assigned to this Court as a case related to the present action.

dora the explorer pop up goal target

Recall the connection of multicultural cartoons associated to this Ninja word. Here it is a UAE corporation, sending children’s toy products for consumer distribution at Target. It is perhaps merely a coincidental connection but in the context of this rhetorical study of words, it is a notable that there is this seemingly unnecessary connection of the Dora character. Recall Teenage Mutant Ninja Turtles role in Federal Court ruling the general idea of multicultural cartoons was not protected by copyright.

This actual patent case about the Pop Up Goals remained unresolved at the end of the Courts opinion. The Court denied all the summary judgment motions because of factual issues about obviousness; whether there is a “continuous frame member” and the effect of a prior art on “flexible frame”.

Patent ‘537 is for “Collapsible structures” (US Patent 6,604,537)
Patent ‘904 is for “Collapsible structures supported on a pole ” (US Patent 6,266,904)

I dunno. They look obvious. Ha just kidding. I have no idea.

In 1994, The Burger King Kids Club teamed up with the Teenage Mutant Ninja Turtles to summarily dismiss a claim by the Curious Kids, an unproduced idea that claimed to be the original version of a multi-ethnic, multi-racial cartoon.

92 Civ. 1488 (CSH)
1994 U.S. Dist. LEXIS 13934; Copy. L. Rep. (CCH) P27,325
Decided – September 29, 1994

Judge Haight for the Court explains:

In this copyright action, defendants move for summary judgment pursuant to Fed. R. Civ. P. 56 to dismiss plaintiff’s complaint. Plaintiff claims that Burger King’s “Kids Club,” a series of child cartoon characters featured in Burger King commercials and in-store promotional materials, infringes on plaintiff’s unproduced proposal for television commercials and specials featuring its own group of child cartoon characters called the “Curious Kids.” Defendants claim that Burger King’s Kids Club lacks any substantial similarity to the protectable elements of the Curious Kids.

The Court continues:

This case presents the familiar copyright question of substantial similarity in the novel context of two groups of multi-ethnic, multi-racial cartoon children.

WAIT, what? HAHA. It’s 1994. And so “multi-ethnic, multi-racial cartoon children” is a “novel context” HA! Dora the Explorer won’t air for another six years.

Explaining the characters in question:

The characters in the Burger King Kids Club, in contrast [to the plaintiff’s characters, the Curious Kids], are extreme stereotypes. The commercials and promotional materials before the Court portray the Kids Club personalities as one-dimensional cartoons. The tone of defendants’ commercials demonstrates the lightweight, playful nature of the Kids Club. While the Curious Kids deal with significant social issues, the Kids Club deals with issues no more weighty than how children can obtain promotional items such as Teenage Mutant Ninja Turtle badges, plastic toy hamburgers, fries, or shakes at participating Burger King restaurants.

Continuing about the Kids Club:

The visual presentation of the Kids Club commercials demonstrates the fundamental differences in tone and structure between the Kids Club and the Curious Kids. The Kids Club commercials rely on special effects and highly stylized graphics. These commercials show the Kids Club members being magically transported in and out of different places, soaring through the air on a flying cheeseburger, ducking to avoid self-propelled french fries and milk shakes that fly into paper bags, and zapping Teenage Mutant Ninja Turtles with a stun ray.

Continuing to contrast, the Court notes:

while the Curious Kids wear normal, everyday clothes typical for young teens, the Kids Club members each wear highly stylized outfits exaggerating their stereotypical character type. For example, Kid Vid is outfitted with a plethora of remote controls, headphones, portable stereo equipment, and some type of goggles, and Wheels wears a spacesuit. This magical, high-tech style contrasts with the realistic portrayal of the Curious Kids.

Is that why the Court has twice highlighted the TMNT connection? This is not the first time a Federal Court opinion has unnecessarily mentioned a Ninja Turtle promotional item – See previous NinjaLaw posts about TMNT in cola wars and TMNT in ooze products and TMNT in movie distribution. Is it used in these cases to set the social context or just because judges like ninja turtles? In the Kids Clubs case is it used to further the pronouncement of exaggerated stereotypical character types? Is TMNT, in this way, an early example of multi-ethnic, multi-racial cartoon characters? At the very least they seem to be important supporting characters.

Conclusion of the Court:

Defendants have established that any similarities between the Kids Club and the Curious Kids relate only to unprotectable elements, and that no reasonable jury could find the works substantially similar. Defendants are therefore entitled to judgment as a matter of law.

A rehearing of this case was denied and the appellate court affirmed by the Second Circuit (122 F.3d 1055) without issuing an opinion.

I love when Judges decide that no reasonable jury could find a work similar. In this case the proof of copying was weak, the plaintiff’s characters had never been produced and the connection between the plaintiff’s and Burger King’s advertising agency was tenuous. But the Court does not decide there is no copying, rather that there were no protectable elements of intellectual property. The idea of a group of multi-ethnic, multi-racial characters with one in a wheelchair, is not protectable – or else surely one of these parties might own rights to Glee too.

Note the Court also wrote:

given racial and gender stereotypes of leadership it is unfortunately no surprise that the only white, male, non-handicapped, non-“nerd” member of each group assumes the leadership role. See Selmon v. Hasbro Bradley, Inc., 669 F. Supp. at 1272-73 (not unusual that lion-like creature assigned role of “king of the jungle”).

wheels artie arty glee

burger king kids club glee cartoon

glee cartoon kids club

Judge Haight’s opinion in the Kids Club case has been cited six times for the following propositions:

1) “Copyright law will not protect characters where ‘it is virtually impossible to write about a particular fictional theme without employing certain stock or standard literary devices.’ … theme of diverse group of children sharing adventures unprotectible under copyright law” in Robinson v. Viacom 1995 U.S. Dist. LEXIS 9781, Copy. L. Rep. (CCH) P27480 (S.D.N.Y. July 13, 1995)

2) “concepts and ideas may not be copyrighted, and that only a particular expression of an idea may be copyrighted.” Proctor and Gamble v. Colgate-Palmolive and Young and Rubicam, 1998 U.S. Dist. LEXIS 17773 (S.D.N.Y. Nov. 5, 1998), citing Robinson v. Viacom, Id.

3) “shared trait, by itself, is insufficient to establish substantial similarity between the characters.” Hogan v. DC Comics, 48 F. Supp. 2d 298 (S.D.N.Y. 1999) comparing “the main characters in Matchsticks and Dhampire [in] that they share the same name: Nicholas Gaunt”

4) Willis v. HBO, 2001 U.S. Dist. LEXIS 17887, 60 U.S.P.Q.2d (BNA) 1916 (S.D.N.Y. Nov. 5, 2001) comparing characters in Arli$$ and Schmoozers:

‘The essence of infringement lies in taking not a general theme, but its particular expression through similarities of treatment, details, scenes, events and characterization.’ Reyher, 533 F.2d at 91. ‘The law will not grant an author a monopoly over the unparticularized expression of an idea at such a level of abstraction or generality as unduly to inhibit independent creation by others.’ Gund, Inc. v. Smile Int’l, Inc., 691 F. Supp. 642, 644 (S.D.N.Y. 1988), aff’d mem., 872 F.2d 1021 (2d Cir. 1989). Consistent with these principles, copyright law does not protect stock characters, incidents or settings that are as a practical matter indispensable or standard in the treatment of a given topic. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir.), cert. denied, 449 U.S. 841, 66 L. Ed. 2d 49, 101 S. Ct. 121 (1980).

5) “concepts and ideas may not be copyrighted and that only a particular expression of an idea may be copyrighted.” CBS Survivor v. ABC Granada, 2003 U.S. Dist. LEXIS 20258 (S.D.N.Y. Jan. 13, 2003) comparing Big Brother and Survivor to “I’m a Celebrity get me out of here” in regards to elements like island survival and “serial elimination”. The court finds for Celebrity and thus is born an era of vote-off reality TV shows in the style of Big Brother and Survivor – a style not protectable by copyright. NBC and Donald Trump’s “The Apprentice” premiered the following year.

6) And most recently cited regarding children’s book characters in Lewinson v. Henry Holt & Co., LLC, 659 F. Supp. 2d 547 S.D.N.Y. 2009) “[C]opyright law does not protect stock characters . . . standard in the treatment of a given topic.” “[T]he broad theme of a diverse group of children sharing adventures and experiences is by itself unprotectable under the copyright laws.”