‘Family Guy’ creator Seth MacFarlane’s character Ted, the profane, womanising teddy bear, has been the subject of two separate lawsuits in relation to alleged intellectual property infringement of trade dress and copyright. These claims provide some interesting insights into IP disputes over valuable creative content, and it’s worth considering how they would be handled if similar claims were filed in an Irish Court.
Claim 1 - Ted Talking Bottle Opener
Michael Cram has filed proceedings in Federal Court in California claiming that MacFarlane, along with others such as Universal Studios and Target Stores, released a DVD of the movie ‘Ted’, which was packaged with a ‘Ted’-themed talking bottle opener. Cram alleges the Ted talking bottle opener was “practically an identical knock-off” of his own talking bottle opener and infringed his trade dress.
Cram claims that he is the sole inventor, designer and distributor of a ‘uniquely designed’ talking bottle opener containing sound activation elements. The lawsuit claims Cram has sold over 10 million branded talking bottle openers under licenses from the National Football League, Major League Baseball and movie and television studios. MacFarlane’s animated sitcom ‘Family Guy’ allegedly has a licensing deal with Cram’s company, and therefore Cram asserts that MacFarlane and the other defendants had prior knowledge of Cram’s intellectual property ownership rights in the bottle opener. Cram is seeking damages equal to nine times the amount of damages actually suffered him, an order that defendants pay for corrective advertising, and further relief.
Trade dress infringement / passing off under Irish law
If Cram had brought his claim in Ireland he would seek to protect his trade dress under the law of passing off. Passing off is the general principle that ‘no man may sell his goods under the pretence that they are the goods of another’.
The definitive test for passing off is a three stage test set out by the English House of Lords in Reckitt & Coleman Products Ltd v Borden Ink(known as the ‘Jif Lemon case’). The Irish High Court held in in Jacob Fruitfield v United Biscuits that the three stage test in Jif Lemon case was applicable in Ireland as well as England.
Accordingly, if Cram decided to bring his claim in Ireland, he would have to prove:
- the existence of a reputation or goodwill in his talking bottle opener product including, where appropriate, in the get-up;
- the risk of confusion between the allegedly offending Ted talking bottle opener sold at Target and Cram’s product; and
- damage to Cram’s goodwill by virtue of any such confusion has been established.
Passing off is a tort so if Cram was successful under Irish law the infringement could be restrained by injunction and damages could also be awarded.
Claim 2 - Charlie the Abusive Teddy Bear
The other Ted-based proceedings served on MacFarlane in the last twelve months relates to a copyright infringement claim by a small TV production company. The company claims that they created a screenplay called Acting School Academy in 2008 featuring a vulgar, womanizing teddy bear called ‘Charlie the Abusive Teddy Bear’ who lives in a "human, adult world with all human friends” and smoke and drinks. The creators of Charlie claim that they are the legal owner of the copyright for the work entitled ‘Charlie the Abusive Teddy Bear’. Their lawsuit alleges that Charlie and Ted are “strikingly similar” and that MacFarlane and the other defendants copied Charlie to create the Ted character without the production company’s authorisation, which under US law constitutes infringement of their copyright in the Charlie character.
Copyright of fictional characters under Irish law
If the Charlie creators had brought their copyright infringement claim under Irish law, the Copyright and Related Rights Act 2000 (as amended) (“CRRA”) would apply. To make a finding of copyright infringement an Irish court would have to answer ‘yes’ to two questions:
Question 1 - Is the Charlie character protected by copyright?
Charlie was registered with the United States Copyright Office in 2009. There is no requirement to register copyright in Ireland and therefore, unlike the US, there is no Irish copyright register. Under Irish law, the act of creating a work also creates copyright. To prove that the Charlie character is protected by copyright in Ireland, the creators of Charlie would have to prove that the character, Charlie, is an original expression of an author. Usually a fictional character is protected by copyright law within the context of the work in which the character appears. Pursuant to section 17(2) of the CRRA, copyright can subsist in the sound recording or film of ‘Charlie the Abusive Teddy Bear’ series along with the copyright in the script.
Question 2 - Is the particular use made by MacFarlane infringing?
Under Irish law, the copyright in a work is infringed by a person who, without the licence of the copyright owner, undertakes, or authorises another to undertake, any of the acts restricted by copyright such as copying the work, making the work available to the public or making an adaptation of the work. The CRRA states that copyright protection does not extend to the ideas or principles which underlie any element of a work, procedures, methods of operation or mathematical concepts. Copyright in a fictional character is not infringed if another author borrows certain incidental traits or characteristics from the first character. In other words, the less developed the character, the less it can be copyrighted. This means that in a claim brought under Irish law, the creators of Charlie would have to show that Ted was a copy or adaption of Charlie that did not have their consent and could not simply argue that MacFarlane ‘stole their idea’ for a profane anthropomorphised teddy bear.
Importance of IP Due Diligence
MacFarlane and the other defendants have yet to comment on the lawsuits. It remains to be seen if the claims are pursued to a full hearing, discontinued or settled out of court. While the risk of intellectual property infringement claims can never be excluded, if you are considering acquiring or obtaining a licence in respect of a third party’s intellectual property assets, the ‘Ted infringement claims’ illustrate the importance of carrying out sufficient audit and due diligence to minimise the risk.