Court Determines That This Duck Doesn't Look Enough Like Another Duck To Be Infringing

Copyright

from the looks-like-a-duck-in-sunglasses dept

Well, here’s a different kind of a “looks like a duck” test when it comes to copyright law:

As established at trial, ducks in nature are often yellow and usually have wings, bills, and tails. But ?[d]ucks do not naturally wear sunglasses in the wild.?

As pointed out by lawyer Rick Sanders, a copyright lawsuit over two floating pool ducks has ended (after a trial!?!) with the court finding that just because you have two inflatable floating pool toys that are yellow ducks with sunglasses, that doesn’t make one of them infringing. Straight from the complaint, here is the floatable duck produced by the Great American Duck Races Inc. company (the plaintiff in the case):

And… here is the duck produced by “Kangaroo Manufacturing”:

Apparently, there is some sort of rule that such floatation toys must be advertised with women in bikinis. Who knew? This case certainly is reminiscent of the fight over copycat banana costumes. In fact, that case also involved… Kangaroo Manufacturing as the defendant. Indeed, as the ruling in this case lays out, Kangaroo is very much in the business of finding hot products online and making something of a copycat product:

Ligeri and Kangaroo experienced substantial success selling products on Amazon…. At one point, Ligeri offered live seminars to teach other individuals how to successfully sell products on Amazon. In advertising those seminars, Ligeri very confidently appeared in a video where he presented his business model. What he would enlighten others to do was to ?create a product for Amazon that people are looking for already.? … At trial, Ligeri explained that statement meant he instructed people to ?to look for what people are searching for . . . and then improve upon what the marketplace is offering.? … In practice, it was clear that Ligeri and his companies would identify successful products on Amazon and then make slightly different versions of those products without apparent concern about possible intellectual property violations. That design process was described in detail at trial.

According to Bernard Oliver, Kangaroo?s product designer, he received design instructions from David Follett, Kangaroo?s Executive Director…. Follett would ?come in with a product that was already in the field, and he would say: This is a product we are going to produce under Kangaroo.? … Follett did not instruct Oliver to copy the product in its entirety. Instead, Follett would hand Oliver the ?product and say: We want to make something like this, bigger, brighter. It has got to be better, but basically, this is the product we are making.? … In other words, the Kangaroo product was meant to be ?bigger and better? but it was meant to ?look in [the same] realm? as the existing products…. When asked whether Kangaroo investigated intellectual property rights before producing its products, Oliver stated he was ?not really part of . . . those types of discussions.? In addition, Oliver did not have time to investigate intellectual property rights because Kangaroo was operated ?like a sweatshop? where he ?worked all day? and only left when he was ?exhausted.?

In late 2015 or early 2016, Follett decided Kangaroo should manufacture ?novelty pool floats.? … Follett looked at the available pool floats and discovered four duck pool floats sold by four different companies…. Follett provided the other companies? products to Oliver and instructed Oliver to ?create the design of a pool float in the form of a yellow duck with sunglasses [but] make it different from the yellow duck pool floats? already on the market…. Oliver designed the new pool float and Kangaroo manufactured its own duck-wearing-sunglasses pool float. In other words, Oliver had the Derby Duck when designing Kangaroo?s duck and, to some extent, modeled Kangaroo?s duck after the Derby Duck. Oliver did not, however, slavishly copy the Derby Duck. Thus, while there are some similarities, there are also significant differences.

It turns out that those “significant differences” are what saves Kangaroo’s bacon. Even though it seems clear that Kangaroo at least partially copied the other duck as its inspiration, it is different enough that it’s not deemed infringing.

In the present case, GAME?s copyright cannot prevent others from depicting yellow ducks, with a bill, wings, a tail, and a crest on the head. All of those attributes are found on ducks in nature. Moreover, the general design and coloring of the duck has become a ?stock or standard feature[].? Rentmeester v. Nike, Inc., 883 F.3d 1111, 1118 (9th Cir. 2018). As noted earlier, the GAME duck resembles the Rubber Duckie from Sesame Street and many other examples.4 Therefore, there are very few protectable elements in the Derby Duck. The parties have focused on the addition of sunglasses as the crucial protectable element. And the Court agrees that the sunglasses are the key protectable element of the Derby Duck. But even there, GAME?s copyright provides no protection to the idea of a duck float wearing sunglasses. Rather, GAME?s copyright only protects the particular expression of that idea. See Bikram?s Yoga Coll. of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032, 1037 (9th Cir. 2015) (noting copyright law provides no protection to an ?idea? but only to a particular ?expression?). That is, GAME is entitled to protection only for the way it expressed the idea of a duck wearing sunglasses.

And, it seems, that the sunglasses are kind of different.

When confronted with the two ducks, and focusing on the sunglasses, there are a few striking differences. The sunglasses on the Derby Duck consist of a double bridge, are solid black, and most importantly are separately inflatable. The fact that the sunglasses are inflatable make the sunglasses a very prominent feature of the Derby Duck. By contrast, the sunglasses on the Kangaroo duck have a single bridge, are not solid black, and are merely painted on the duck?s head. An ?ordinary observer? confronted with the two works and focusing on the sunglasses would not be ?disposed to overlook? these differences. Rentmeester, 883 F.3d at 1122. While the Derby Duck and Kangaroo?s duck undoubtedly share the general idea or concept of a duck wearing sunglasses, GAME ?cannot claim an exclusive right to ideas or concepts at that level of generality.?

The court also notes some other differences:

The parties? ducks are very different when compared with any care. The Derby Duck has a red bill that is open. Kangaroo?s duck has an orange bill that is closed. The Derby Duck is a flat float while Kangaroo?s duck is a ring float. Finally, the Derby Duck?s sunglasses are all black and exceptionally prominent. The Kangaroo duck?s sunglasses are only partially black and not especially prominent. In short, the ?total concept and feel? of the two ducks preclude a finding of liability on the copyright claim.

It’s that whole idea/expression dichotomy. In the form of an inflatable duck.

And thus, the copyright claim fails even though the trial produced significant evidence that Kangaroo was deliberately “copying” the idea of the floating duck. As the court notes at one point: “the fact that Kangaroo copied the Derby Duck does not establish liability.”

A separate trademark claim also fails. The court goes through the long list of relevant factors for the “likelihood of confusion,” and concludes that while some go in each direction (and some are neutral), in the end there’s little real likelihood of confusion:

Even though more factors support GAME than Kangaroo, evaluating the factors as a whole, and in light of all the other evidence, GAME has not established a probability of confusion. To be sure, there is some ?possibility? of confusion. But that is not enough. Murray v. Cable NBC, 86 F.3d 858, 861 (9th Cir. 1996). The products and their boxes are sufficiently different such that consumers would not be confused into concluding Kangaroo?s product were manufactured by GAME. The trademark infringement claim fails.

Finally, the court rejects the unfair competition claim, in large part because literally no one seems to have the necessary evidence. At issue: Kangaroo posted its duck to Amazon, but quickly took it down after Great American Duck Races complained, and no one seems to still have a copy of what the Amazon product page looked like — which is necessary for the unfair competition claim.

It does seem notable that even after Amazon agreed to pull the product, Great American Duck Races still sued Kangaroo. And it seems like that may have backfired, since now Kangaroo may be able to go back to Amazon and point to this ruling as evidence that it can sell its product there. The case has been dismissed without prejudice, so it is still possible that Great American could file an amended complaint, but it’s difficult to see what will change this ruling.

Oh, and also, this is neither here nor there, but if this is going to show up in a court order, how can I not mention the thinking behind putting sunglasses on a duck:

When asked why Kangaroo decided to put sunglasses on its duck, Follett explained that ?[s]unglasses are cool? and because ?[p]eople wear sunglasses at the beach.? … Kangaroo manufactures other floats depicting animals wearing sunglasses, such as a flamingo… Kangaroo also manufactures a duck float that does not have sunglasses.

Sunglasses are cool, people.

Filed Under: copyright, ducks, inflatable ducks, trademark
Companies: great american duck races, kangaroo, kangaroo manufacturing