Image of Figurine on U-Haul Carton Not Substantially Similar to Hummel's 'Hansl'

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By Anandashankar Mazumdar

Feb. 18 --An image on a U-Haul bubble wrap carton was not substantially similar to a 1930s drawing by M. I. Hummel, whose works are the basis of a popular line of porcelain figurines, the U.S. District Court for the District of Massachusetts ruled Feb. 17.

Granting a motion to dismiss some of the claims regarding the U-Haul carton, the court noted significant differences between the original drawing and the image of the figurine on the bubble wrap.

Claims that the bubble wrap carton also infringe the actual figurine based on the original drawing are still pending, subject to a dispute over whether a statute enacted by Congress in 1994 restored a copyright interest that had lapsed under the Copyright Act of 1909.

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Nun's Drawings Inspiration for Popular Figurines

In the 1930s and 1940s, Berta Hummel--a German nun known as Sister Maria Innocentia Hummel, or “M. I. Hummel,” who died in 1946--drew a series of images, 40 of which were published in 1934 in the “Hummel Book.”

Emil Fink Publishing House of Stuttgart, Germany, hired Margarete Seeman to write a preface, several poems, and other text to accompany the drawings in the “Hummel Book.”

In 1936, the book was registered in the U.S. as a foreign publication. Later, the book was published in an English language version.

In 1935, porcelain maker Franz Goebel contracted with Hummel and her order, the Congregation of Franciscan Sisters at the Convent of Siessen, for the exclusive rights to produce a series of figurines modeled on Hummel's artistic style.

W. Goebel Porcelain Manufacturing (W. Goebel Porzellanfabrik KG) of Rödental, Germany, produced the popular figurines until its bankruptcy in 2006. Since then they have been produced by Manufaktur Rödental.

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Complex Chain of Events

From 1988 to 1994, Goebel distributed its figurines in the U.S. through Schmid Bros. Inc. f/k/a Schmid Management Corp. of Boston.

Following a series of legal disputes with Schmid, Goebel formed its own subsidiary for U.S. distribution of the M. I. Hummel figurines, Goebel Art GmbH d/b/a Goebel Art of North America.

Schmid eventually declared bankruptcy, and Goebel acquired all of Schmid's interest in the “Hummel Book.”

In 1938, Goebel began producing the “Brother figurine”--based on Hummel's “Hansl u. Gretl” drawing--also known as “Village Hero” (Dorfheld) or “Hum 95,” “which depicts a small boy in the traditional folk costume of Bavaria, Germany, standing with his hands in his pockets and with the front of his shoes turned upwards showing the soles.”

In the United States, copyright protection on the Brother figurine expired pursuant to the Copyright Act of 1909 for failure to comply with the registration and renewal formalities. The parties still dispute whether copyright protection was restored in 1996 under the Uruguay Round Agreements Act of 1994, 17 U.S.C. §104A.

The rights in the original “Hansl u. Gretl” drawing descended to Alfred Hummel--Berta Hummel's nephew and director of the Berta Hummel Museum in Massing, Germany--and Berta Hummel Art Administration (Berta Hummel Kunst Verwaltungs KG). And they licensed manufacture of the Brother figurine to Manufaktur Rödental.

Alfred Hummel, the Berta Hummel Museum and Berta Hummel Art Administration assigned to Boston Copyright Associates Ltd. of Boston the U.S. rights in the works.

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Bubble Wrap for Protecting Items During Moving

U-Haul International Inc. of Phoenix, a subsidiary of Amerco Inc. of Reno, Nev., is the nation's largest moving van and rental company. U-Haul also sells a range of moving supplies, including Enviro-Bubble bubble wrap. The Enviro-Bubble carton, manufactured by Pregis Corp. of Deerfield, Ill., featured a two-dimensinal image of what looks like a black-and-white version of the Brother figurine.

Boston Copyright Associates sued U-Haul, Amerco and Pregis, alleging infringement of its rights in the Brother figurine and the “Hansl u. Gretl” drawing in the Hummel Book.

U-Haul moved for dismissal of certain counts of the complaint, arguing that the image on the Enviro-Bubble carton was not substantially similar to the “Hansl u. Gretl” drawing.

Images Not Substantially Similar

The court determined that the two images were not sufficiently alike to support an infringement ruling.

Specifically, the court said that the U-Haul carton image had an air of “formality” and did not have the “whimsicality” of the original Hummel. The court said:

Where the Hansl image shows a boy in playful disorder, the boy on the Enviro-Bubble label appears neatly buttoned up. The image on the Enviro-Bubble label is also rendered in stark black and white, without the shading and detail of the Hansl image. Coupled with the more formal dress and straight posture, this lack of tone and shading in the Enviro-Bubble image further evokes a sense of order that is absent from the Hansl image and in opposition to Hummel's protectable style of whimsical expression.

 

The court's ruling was issued by Judge Indira Talwani.

Boston Copyright Associates was represented by the Warshauer-McLaughlin Law Group P.C., Denver. U-Haul was represented by Kilpatrick Townsend & Stockton LLP, Atlanta.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com


Full text at http://www.bloomberglaw.com/public/document/Boston_Copyright_Assocs_v_UHaul_Intl_No_13cv12826IT_2015_BL_40757.