Plaintiffs made a popular children’s television show featuring “several fanciful costumed characters, as well as a boy named Jimmy, who lived in a fantasyland called ‘Living Island,’ which was inhabited by moving trees and talking books.” McDonald’s ran a series of commercials containing characters similar to the ones on plaintiffs’ show. Needham, the agency that designed the advertisements, had negotiated with plaintiffs to use plaintiffs’ characters in some commercials for McDonald’s, but no agreement had been reached. Needham had hired former employees of the plaintiffs’ to produce the commercials at issue here. Plaintiffs argued that the commercials were substantially similar to their works. The district court held in favor of the plaintiffs.
The Ninth Circuit reviewed the district court’s decision using the “clearly erroneous” standard. This standard is appropriate when reviewing factual determinations made by a trier of fact. Using it, an appellate court will overturn a decision only if it finds clear error.
The Ninth Circuit affirmed the district court’s decision on infringement.
The Ninth Circuit introduced a two-part test for substantial similarity called the extrinsic-intrinsic test. First, it used the extrinsic test to look at similarity in ideas. This included similarity in “the type of artwork involved, the materials used, the subject matter, and the setting for the subject.” After applying the extrinsic test, the court applied the intrinsic test, which looked at similarity in expressions. For the intrinsic test, the court considered the overall impression “an ordinary reasonable person” would have of the works.
The defendants suggested that the works should be dissected and then compared. The court disagreed. Under the intrinsic test, the court found that defendants’ characters invoked the same "total concept and feel" as plaintiffs’ characters, borrowing the phrasing from Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970). For example, the court noted that, “We do not believe that the ordinary reasonable person, let alone a child, viewing these works will even notice that Pufnstuf is wearing a cummerbund while Mayor McCheese is wearing a diplomat’s sash.” Therefore, the court found that defendants’ commercials were substantially similar to plaintiffs’ TV shows.
The video below is the opening and closing theme from the H.R. Pufnstuf TV show. It shows many of the characters, as well as Living Island.
The video below shows an early McDonaldland commercial, likely the one at issue in this case. It includes Mayor McCheese.