## Facts

- Whimsicality, Inc. designed and sold children’s costume products and advertised them as costumes worn by children.
- Rubie’s Costume Co., Inc. sold competing children’s costumes that Whimsicality alleged were unauthorized copies.
- In seeking copyright registration, Whimsicality avoided describing the items as “costumes,” instead characterizing them as “soft sculptures” or “plush sculptures.”
- Whimsicality sued for copyright infringement and for unfair competition under § 43(a) of the Lanham Act, and sought a preliminary injunction to stop Rubie’s sales.
- The district court consolidated the preliminary-injunction hearing with a merits hearing on the copyright claim under Rule 65(a)(2), granted judgment to Rubie’s on the copyright claim, denied injunctive relief, and denied Rubie’s request for attorney’s fees; the Lanham Act claim remained unresolved.
- Whimsicality appealed, and Rubie’s cross-appealed on attorney’s fees; appellate jurisdiction rested on 28 U.S.C. § 1292(a)(1).

## Issues

1. Whether Whimsicality’s copyright registrations were enforceable given its description of the works to the Copyright Office as “soft sculptures” rather than costumes.
2. Whether dismissal of the copyright infringement claim and denial of preliminary injunctive relief were proper.
3. Whether Rubie’s, as the prevailing party on the copyright claim, was entitled to attorney’s fees.

## Decision

- The court affirmed dismissal of the copyright claim and the denial of injunctive relief, but on different grounds than the district court.
- The court held the registrations were invalid and unenforceable because they were procured through material misrepresentation to the Copyright Office about the nature of the works.
- The court affirmed the denial of attorney’s fees to Rubie’s, finding no abuse of discretion.
- The court did not resolve the Lanham Act unfair competition claim, which remained pending below.

## Legal Principles

- A copyright registration procured by knowing, material misrepresentation to the Copyright Office is invalid and cannot be enforced in an infringement action.
- A registrant’s consistent marketing of an item as a functional costume, coupled with a contrary description in the registration application designed to avoid refusal, supports a finding of material misrepresentation.
- Appellate courts may affirm denial of copyright relief based on defects in procurement of registration without reaching contested questions of copyrightability (including separability of artistic features from utilitarian function).
- Attorney’s fees decisions in copyright cases are committed to the district court’s discretion and will be upheld absent abuse of discretion.

## Conclusion

The court barred enforcement of Whimsicality’s registrations because they were obtained through a material misdescription of children’s costumes as “soft sculptures,” affirmed denial of injunctive relief and dismissal of the copyright claim, and upheld the district court’s refusal to award Rubie’s attorney’s fees.


Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452 (2d Cir. 1989)