The opinion of the court was delivered by: Zagel, District Judge.
MEMORANDUM OPINION AND ORDER
Ty, Inc. makes Beanie Babies® which have been, to my
perception, extraordinarily popular toys both in terms of the
sheer number (over a billion) of them which have been distributed
and the very number of years (at least five) that they have been
prominent in the marketplace.*fn1
The defendants do not make rival products — plush toys; they
make books about Beanie Babies®. Ty has designed and sold over
200 different Beanie Babies®. New ones are issued periodically
and older ones are retired; that is to say, Ty stops making
additional toys of a model it retires. By making many different
styles of Beanie Babies®, Ty creates the possibility that some
people will wish to collect them. I have personal knowledge of at
least two such persons, both of them in the early stages of the
American educational process. One of these collectors displays
her gift for cataloguing and her nascent interest in zoology by
organizing her collection into Beanie mammals, Beanie aquatic
creatures (excluding aquatic mammals), Beanie prehistoric
creatures, Beanie flying creatures and Beanie mythical creatures.
There may have been, over the years, other organizing principles
of the collection, but I was unable to sustain my interest long
enough to grasp them fully. The other collector is primarily
interested in the projected cash value of the toys, particularly
the discontinued models, all to the end of financing a planned
period of attendance at medical school in the far-off future.
By design, the Beanie Babies® become collectibles, and around
them has arisen a business devoted to serving the interest of the
collectors by providing them with information about Beanie
Babies®. There are books and websites that offer exhaustive
lists, with photographs, of all known Beanie Babies® and
information about the current and projected market value of each
Beanie Baby.*fn2 There is information too about peripheral
Beanie Baby facts, i.e., the different kinds of heart-shaped
hang tags that come with each toy and how these tags evolved over
time. Beanie Babies® are privately traded and sold among
collectors, and there are auctions over the internet. Perhaps
there are chat rooms for devotees. According to the defendants,
there is a gray-market for certain Beanie Babies® meant for sale
only in the U.K. and Canada, but nonetheless desired by
collectors in the United States. Leaving to one side the average
age of the collectors, this is much like the world of baseball
The defendants produce and sell a book about Beanie Babies®,
which includes an historical essay on the subject and a
Baby-by-Baby catalogue, a page per Baby. Each page has a picture
of the toy, its date of birth, date of release, date of
retirement, if any, and its estimated value along with other
data, including such things as misprinted
labels, which are rare and increase value. The author also rates
some as Highly Recommended, as is Floppity (the lilac rabbit).
Gobbles (the turkey) is not highly recommended. According to
defendants, prices range from the $5-7 category, into which many
fall, all the way to the rarefied upper values of Bongo (the
monkey) (tan-tailed Nana only) at $4000, Peanut (the elephant)
(royal blue only) $5000, and Punchers (not Pinchers) (the
lobster) at $4750.
Ty holds copyrights to the original soft sculptures marketed as
part of its line of toys, and it has trademark registrations for
the marks associated with the product and its heart-shaped hang
tags. It has common-law trademarks too. It wants me to enjoin
defendants from publishing and selling its books: For the Love
of Beanie Babies and Beanie Babies Collector's Guide. The
books' covers do contain the legend: This publication is not
authorized or licensed by Ty, Inc. Publications International,
Ltd. is not affiliated with Ty, Inc.
Ty obviously is not displeased, in principle, with books or
magazines for collectors of the toys — this is precisely what the
creator of collectibles wants to occur. The company has licensed
three such publications and is willing to license others. Indeed,
Ty has licensed a corporation to form the BEANIE BABIES OFFICIAL
CLUB. The club gives out information about the toys and sells
related products. At least one licensee has complained to Ty
about competing with defendants' unlicensed product. But, says
Ty, the defendants here do not have licenses, and their books
display unauthorized photographs of the copyrighted Babies and
the trademarks. Ty wants the defendants stopped, as they have had
others stopped in this Court. See Ty Inc. v. West Highland Pub.
Inc., 98 C 4091, 1998 WL 698922 (N.D.Ill. 1998) (Norgle, J.).
Defendants begin by saying that no injunction may issue against
publication of its books because the First Amendment prohibits
such injunctions. They rely heavily upon Time, Inc. v. Hill,
385 U.S. 374, 87 S.Ct. 534, 17 L.Ed.2d 456 (1967), which held
that the First Amendment protected a magazine from an invasion of
privacy suit (absent knowing or reckless falsity) by a family, an
incident from whose life was falsely portrayed by Life
magazine. The case is memorable for its divisions: two Justices
joined the majority opinion only "in order for the Court to be
able to agree on an opinion in this important case." 385 U.S. at
398, 87 S.Ct. 534 (Black and Douglas, JJ.). It is memorable for
its alignments: Brennan, Stewart, White (with Black and Douglas)
vs. Harlan vs. Fortas, Clark and Warren. It is memorable for the
fact that Richard M. Nixon argued for Hill. It is memorable that
false portrayals did not cast the plaintiffs in a bad light. It
is not memorable for any discussion of the relationship of
copyright and trademark protection to the ambit of First
The Supreme Court did address that relationship in Zacchini v.
Scripps-Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct. 2849, 53
L.Ed.2d 965 (1977), a case in which a human cannonball sued a
television station for videotaping his entire 15-second act and
then broadcasting it. Zacchini thought that the free broadcast
might reduce the number of persons willing to pay to see it. Over
objection that Time, Inc. v. Hill precluded a lawsuit over the
broadcast, the Court wrote:
The Constitution no more prevents a State from
requiring respondent to compensate petitioner for
broadcasting his act on television than it would
privilege respondent to film and broadcast a
copyrighted dramatic work without liability to the
copyright owner. 433 U.S. at 575, 97 S.Ct. 2849.
In Cohen v. Cowles Media Co., 501 U.S. 663, 669, 111 S.Ct.
2513, 115 L.Ed.2d 586, the Court said: "The press, like others
interested in publishing, may not publish copyrighted material
without obeying copyright laws."
These cases do not destroy defendants' argument, because, they
concede, at least at this stage, that they might be liable for
damages. It is the prior restraint, the injunction against
further distribution, which, they say, is a violation of the
First Amendment. Taken literally, the words of the Supreme Court
authorize injunction, because "obeying copyright laws" usually
includes obeying orders to stop violating the copyright. But the
Supreme Court has not explicitly said that copyright injunctions
are permissible against the press, although there is a hint that
such injunctions are legal in San Francisco Arts & Athletics v.
United States Olympic Committee, 483 U.S. 522, 107 S.Ct. 2971,
97 L.Ed.2d 427 (1987) (upholding injunction against use of the
term "Olympics" to describe an athletic competition where
Congress had granted exclusive use of word to the United States
The hint must be fairly strong because there are not many
reported cases in which challenges to copyright or trademark
injunctions are made upon First Amendment grounds. Those
challenges that are made have been summarily rejected. A parodist
once wrote a poem about the O.J. Simpson murder trial entitled
The Cat NOT in the Hat! A Parody by Dr. Juice, which was
found to be an infringement of The Cat in the Hat, by Dr.
Seuss. On appeal, the panel of the Ninth Circuit said in a
footnote that it "reject[s] outright [the] claim that the
injunction in this case constitutes a prior restraint in
violation of free speech guaranteed by the United States
Constitution." Dr. Seuss Enterprises L.P. v. Penguin Books,
109 F.3d 1394, 1403 n. 11 (9th Cir. 1997). The short shrift given to
the claim is typical of all the cases cited by the Ninth Circuit.
I too reject the bald claim that the injunctive relief sought
violates the First Amendment absent extraordinary circumstances.
I deny the motion to strike the request for injunctive relief.
The fair use doctrine, which I address in a moment, is adequate
protection of the defendants' constitutional right to comment
upon and criticize the Beanie Babies, individually or as a whole.
The standards for preliminary injunction are well known. I am
to consider likelihood of success (more than negligible is the
minimum), inadequacy of money damages or irreparable harm, the
balance of harms to the parties from the wrongful granting or
denial of injunctive relief and the consequences of the ruling to
the public. These factors are somewhat interdependent, because an
overwhelmingly good case on the merits might justify an
injunction even if the harm of denying the injunction is not very
great. Storck U.S.A., ...