United States v. Kim
307 F. App'x 324 (11th Cir.) (2009)
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Rule of Law:
Criminal copyright infringement does not require an exact reproduction of a copyrighted work; infringement can be established if a work is substantially similar to a valuable portion of the original, and a jury can infer willfulness from circumstantial evidence such as a defendant's role and prior convictions.
Facts:
- Steve Kim served as Vice President and Art Director for Star Graphics, Inc., a family-owned apparel company.
- Muza Kim, Steve's father, was the President, CEO, and CFO of Star Graphics and was responsible for distributing its products.
- Star Graphics produced and sold apparel featuring an image its employees referred to as 'Big Face.'
- The 'Big Face' image shared many similarities with the copyrighted 'Fat Albert' character, which is owned by William H. Cosby, Jr.
- The 'Big Face' image differed from the copyrighted 'Fat Albert' by wearing a bandanna or dew rag and jewelry, portraying a different persona.
- Muza Kim made statements to buyers regarding the 'Big Face' images.
- In 1999, Steve Kim was convicted of criminal trademark counterfeiting.
Procedural Posture:
- Steve Kim, Muza Kim, and their company, Star Graphics, Inc., were indicted in the U.S. District Court for the Northern District of Georgia on multiple counts, including one count of criminal copyright infringement.
- During the trial, Muza Kim filed a motion to sever his case from his son's, which the district court denied as untimely.
- A jury acquitted the Kims on three counts of trafficking in counterfeit apparel.
- The same jury found both Steve Kim and Muza Kim guilty of the criminal copyright infringement count.
- Steve Kim and Muza Kim, as Defendants-Appellants, appealed their convictions to the U.S. Court of Appeals for the Eleventh Circuit, arguing the evidence was insufficient and the trial court erred in denying the severance motion.
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Issue:
Does the creation and distribution of an image that is substantially similar, but not identical, to a copyrighted character constitute willful criminal copyright infringement when the new image alters the character's accessories and persona?
Opinions:
Majority - Per Curiam
Yes. The creation and distribution of an image that is substantially similar to a copyrighted character can constitute willful criminal copyright infringement, even if the new image is not an exact copy and contains alterations. To prove criminal copyright infringement, the government must show infringement, willfulness, and action taken for commercial advantage. Infringement does not require an exact reproduction; it is sufficient if 'substantial parts were lifted' that are of value to the copyright owner. The jury, as the trier of fact, was entitled to view both the copyrighted 'Fat Albert' and the Kims' 'Big Face' images and conclude they were substantially similar, despite the differences in accessories and persona. These differences were factual considerations for the jury, not a legal bar to conviction. Willfulness was reasonably inferred from the evidence: Steve Kim's role as Art Director and his prior conviction for a similar offense supported an inference of his awareness of illegality, while Muza Kim's role as CEO and statements to buyers supported an inference of his willful intent.
Analysis:
This decision reinforces the principle that superficial changes to a copyrighted work do not provide a safe harbor from infringement liability. It affirms that the 'substantial similarity' test is a factual inquiry for the jury, giving significant deference to their findings. The case is also significant for demonstrating how the 'willfulness' element in criminal copyright cases can be established through circumstantial evidence, including a defendant's executive role, prior bad acts under FRE 404(b), and incriminating statements. This lowers the evidentiary bar for prosecutors and makes it more difficult for infringers to escape criminal liability by claiming ignorance or arguing that minor alterations negate infringement.
