It’s a Bead Dog Eat Bead Dog World!

The Fifth Circuit Court of Appeals:  “This case concerns the intersection between intellectual property rights and a Mardi Gras tradition.”  New Orleans Mardi Gras parade onlookers receive strands of beads thrown by parade “krewes.”   The onlookers can create “bead dogs” by twisting the strands of beads into the shape of a dog.  Haydel Enterprises, which also owns a bakery that sells special Mardi Gras cakes, commissioned an artist to design a “Mardi Gras Bead Dog” mascot.  Haydel’s jewelry mascot is made of sterling silver.  Haydel received USPTO trademark registrations for the MARDI GRAS BEAD DOG word mark and for its design mark.  Haydel also received a copyright registration from the Copyright Office for its jewelry design.

Raquel Duarte sells jewelry and accessories through her business, Nola Spice Designs.  Duarte sells a bead dog that she makes from beads and wire, which she learned to do as a child.  Nola Spice Designs received a cease and desist letter from Haydel.  Nola Spice Designs sued Haydel for a declaratory judgment that its actions do not violate trademark law and sought the cancellation of Haydel’s trademark.  Haydel asserted trademark infringement and copyright infringement counterclaims against Nola Spice.  This post focuses on the Fifth Circuit’s copyright infringement discussion.

The district court granted Nola Spice’s summary judgment motion on its declaratory judgment claim that it was not infringing Haydel’s trademarks and cancelled those trademarks.  The district court also granted summary judgment to Nola Spice on Haydel’s copyright infringement claim.  The Fifth Circuit Court of Appeals affirmed the district court’s decision on these issues.  There were also some unfair competition and state law claims that are not discussed in this post.  The Appendix to the Fifth Circuits opinion contains pictures of Haydel’s bead dogs, Nola Spices’ bead dog and a traditional bead dog.

Proving copyright infringement requires the plaintiff to establish 1) ownership of a valid copyright, 2) factual copying; and 3) substantial similarity.

“In its application for a copyright registration for its bead dog design, Haydel acknowledged that the image ‘brings to mind the traditional bead dog.’” (Opinion pdf page 16).  In response to Haydel’s copyright registration application, the Copyright Office indicated that “Mardi Gras bead dogs have apparently become well-known and traditional parts of Mardi Gras.” (Opinion pdf page 9).  The Copyright Office nevertheless issued a registration certificate.

However, the district court did not assess the validity of the copyright.  Nola Spice did not argue that Haydel’s work as a whole was unprotectable.  Nola Spice also did not argue against a factual copying finding.  Nola Spice argued that its works were not substantially similar to Haydel’s bead dog design.

The district court applied the merger doctrine to grant summary judgment on Nola Spice’s behalf on Haydel’s copyright infringement claim.  The merger doctrine applies when an idea is susceptible to only one form of expression.  The idea and expression merge, excluding the expression from copyright protection. 

The Fifth Circuit disagreed with the district court’s merger doctrine application.

Examples of bead dogs in the record make clear that the idea of a bead dog may be expressed in various ways. The merger doctrine therefore does not alone preclude a finding of copyright infringement. Still, we may affirm the district court’s decision on any ground supported by the record, even if it was not the basis for the judgment.  We find that the grant of summary judgment was appropriate based on the absence of substantial similarity between Haydel’s and Nola Spice’s bead dogs.

(Opinion pdf page 29).

The Fifth Circuit described its substantial similarity test.

To assess substantial similarity, we have often cited the following test:  A side-by-side comparison must be made between the original and the copy to determine whether a layman would view the two works as ‘substantially similar.’  However, where the copyrighted work contains unprotectable elements, the first step is to distinguish between protectable and unprotectable elements of the copyrighted work.  The next inquiry is whether the allegedly infringing work bears a substantial similarity to the protectable aspects of the original work.  This determination should be based on the perspective of a ‘layman’ or ‘ordinary observer.’ Our precedents also support consideration of the importance of the copied protectable elements to the copyrighted work as a whole.

(Opinion pdf pages 30 – 31).

The Fifth Circuit discussed the unprotectable elements of Haydel’s bead dog design.  Haydel admitted that its bead dog design is a derivative work.  A derivative work is a work based on one or more preexisting works.  The copyright in a derivative work covers only the material contributed by the author of the derivative work, i.e. the copyright covers only the new material. 

Haydel concedes that the body of its bead dog design is unprotectable as preexisting material because it mimics the body of a traditional bead dog. Haydel nevertheless contends that its original contributions include, among other things, the selection and arrangement of a necklace, nose, eyes, and a tail, all made of smaller beads. However, anatomical features on replicas of animals are ideas not entitled to copyright protection.  As for the “necklace” in Haydel’s design, the ring of spheres around the neck of Haydel’s bead dog may be characterized as a collar. Collars on dogs, like anatomical features, are common ideas that belong to the public domain. Still, while the idea of eyes, a nose, a tail, and a collar are not protectable, the manner in which Haydel expresses these features may be protectable, as long as that expression is original and not dictated by the underlying idea.

(Opinion pdf pages 31 – 32).

The Fifth Circuit compared Nola Spice’s bead dog to the protectable elements of Haydel’s bead dog from an ordinary observer’s standpoint, and considering the significance of the protectable elements to Haydel’s work as a whole.

Focusing on the protectable elements of Haydel’s design, the similarity between Nola Spice’s and Haydel’s bead dogs is the expression of the collar as a ring of small spheres. As for the differences, the torso of Haydel’s bead dog has three spheres, while the torso of Nola Spice’s bead dog has one sphere. The spheres that make up Haydel’s bead dog are pressed together, whereas visible wire connects the spheres that make up Nola Spice’s bead dogs. Whereas the tail of Haydel’s bead dog consists of two spheres and no wire, the tails of Nola Spice’s bead dogs include a curled wire, either alone or atop one or two spheres. Likewise, the noses of Nola Spice’s bead dogs include a curled wire, either alone or atop a single sphere, while the nose of Haydel’s bead dog is a single sphere. Unlike Haydel’s bead dog, Nola Spice’s bead dogs do not have eyes. No reasonable juror could conclude that Nola Spice’s bead dogs bear a substantial similarity to the way in which the eyes, nose, and tail are expressed in Haydel’s bead dog. Indeed, Haydel focuses its argument on the collar, conceding that its copyright infringement claim is narrow. Only to the extent that Nola Spice copied Haydel’s original expression by, at least adding a necklace made of smaller beads to what would otherwise look like a dog trinket made of larger beads, has Nola Spice infringed Haydel’s copyrighted expression. We must therefore decide whether the collar on Nola Spice’s bead dogs could suffice to support a finding of substantial similarity in the mind of a reasonable juror.

Because the idea of a collar is unprotectable, only its expression as a string of spheres is relevant to the analysis of substantial similarity. As a threshold matter, we question whether using bead-shaped spheres for a bead dog’s collar is sufficiently original to merit copyright protection.  Although the requirement of originality demands only a creative spark, no matter how crude, humble or obvious, the level of creativity must be more than trivial. Even if a bead-shaped collar possesses the requisite creative spark, its minimal originality counsels against a finding of substantial similarity.  In addition, the collar is both qualitatively and quantitatively insignificant in relation to Haydel’s work as a whole, which is designed to represent a traditional bead dog trinket and is dominated by unprotectable elements.  In light of these considerations, no reasonable jury could find substantial similarity based solely on Haydel’s expression of a collar.

(Opinion pdf pages 32 – 34).

This case is Nola Spice Designs, L.L.C. v. Haydel Enterprises, Incorporated, No. 13-30918, Fifth Circuit Court of Appeals.

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