After a 7-day trial, a jury in the Western District of Washington awarded a verdict in the amount of $ 1,694,480 against Sears, Roebuck, and Co. (“Sears”) and its ad agency, Young & Rubican Inc. (“Y&R”), for Sears’ infringement of Lucky Break Wishbone’s “Wishbone sculpture” (VA 1,325,348) copyright and  Sears and Y&R’s infringement of the “Lucky break wishbone product warning” (TX 6,594,959) copyright.

On March 6, 2006, Lucky Break Wishbone sued Y&R and Sears for violating its copyright in the Lucky Wishbone Sculpture.  Sears moved to dismiss the complaint claiming that the Lucky Break wishbone sculpture “lacks even the modicum of originality required to merit copyright protection.” According to Sears,  it was just a copy of a natural item, not subject to copyright protection and, even if it were it would be a “thin copyright” at best.  Additionally, because Sears allegedly infringed the copyright before Lucky Break registered the sculpture with the copyright office, Sears argued that “the Copyright Act precludes recovery of statutory damages and attorneys’ fees where the infringement commences before the effective date of the work’s registration.”

 

Lucky Break first published its Wishbone Sculpture in 2004, but only registered copyright in December 2005; Sears’ infringement occurred in November 2005.

 

In a November 16, 2006, ruling from the bench, Judge Thomas S. Zilly ruled on Sears’ motion dismissing Lucky Break’s attorneys’ fees, trademark, and consumer protection claims, but upholding its copyright claim, with the understanding that “it should be the law of this case that any right to copyrightable claims should be governed by the requirements of thin copyright protection under Ninth Circuit law, and where that will take us will await another day.” (Hearing Transcript.)

 

A thin copyright typically means that there is not much original copyrightable expression in a particular work. Therefore, a plaintiff must show almost identical copying to establish infringement.

 

Plaintiff responded by filing an amended complaint, alleging only copyright infringement. Followed by a second amended complaint alleging copyright infringement of both the sculpture and the product warning. Despite numerous procedural motions brought by Sears and the higher burden of showing infringement of a thin copyright, plaintiff was able to demonstrate to the jury that Sears had obtained prototypes of the Wishbone sculpture, sent it to China to be copied, distributed it as a promotion to stores with copy of Plaintiff’s product warning, and that the promotion increased Sears sales. Therefore, Lucky Break was entitled to a reasonable licensing fee for each of the infringing wishbone’s sold, for the infringing copy of the product warning, and for the increased profits caused by the infringing promotion.

 

Chalk one up for the little guy.

 

 An Original work of authorship.

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