The opinion of the court was delivered by: Moran, Senior District Judge.
MEMORANDUM OPINION AND ORDER
Plaintiff markets Beanie Babies. They have been a phenomenal
marketing success. Beanie Babies include plush "new face" bears
and they are the subjects of copyright registrations. Defendant
Holybears, Inc. markets plush bears with a religious theme.
Plaintiff claims that those bears infringe its copyrights and has
moved for a preliminary injunction. The motion for a preliminary
injunction is denied.
This lawsuit has, from its filing, been acrimonious. Much of
the attention has centered on whether or not defendants have
disclosed e-mails which, plaintiff contends, would show that
defendants deliberately copied its bears. Defendants respond that
the e-mails would show original creation if they could be
retrieved, but they have been lost in cyberspace. We have waited
to rule on preliminary relief until we could make some sense of
that dispute and, having concluded that it is largely irrelevant,
we are prepared to rule.
The parties disagree about the preliminary injunction
standards, with plaintiff arguing that it need not show more than
some likelihood, more than negligible, that it will prevail on
the merits of its claim, while defendants argue that plaintiff
must show a reasonable likelihood of prevailing. We think those
are distinctions without much of a difference. To obtain a
preliminary injunction plaintiff must demonstrate (1) some
likelihood that it will prevail, (2) absence of an adequate
remedy at law, and (3) that it will suffer irreparable harm
absent injunctive relief. Should those requirements be satisfied,
we must then weigh the portended irreparable harm to the
plaintiff against the potential injury to the defendant and must
consider the effect of the injunction upon non-parties. "A
determination whether to issue a preliminary injunction is, by
its very nature, an exercise in weighing competing equities and
interests." Publications International, Ltd. v. Meredith Corp.,
88 F.3d 473, 478 (7th Cir. 1996). If the accused product is a
brazen knockoff, the answer is easy. Irreparable harm to the
plaintiff is presumed and there are no competing defendant
equities. The stronger the case on the merits the less
irreparable harm need be shown. Ty, Inc. v. GMA Accessories,
Inc., 132 F.3d 1167, 1172 (7th Cir. 1997). Conversely, even
though a plaintiff's chances of prevailing are no more than
possible, it may be entitled to preliminary relief if a failure
to grant it would cause plaintiff irreparable harm while the
potential injury to the defendant is minor. See Abbott
Laboratories v. Mead Johnson & Co., 971 F.2d 6 (7th Cir. 1992).
How, then, do we evaluate plaintiff's likelihood of prevailing?
Plaintiff must prove it has valid copyrights, and nothing in the
present record indicates it does not. It must then show that the
defendants copied original elements of the work. It can establish
copying by proof of access and substantial similarity between the
copyrighted and accused products. Substantial similarity can be
demonstrated by a side-by-side comparison. Would the ordinary
reasonable observer, comparing the two expressions, regard them
as substantially similar unless he set out to detect the
disparities? Would she conclude that the defendant unlawfully
appropriated the plaintiff's protectable expression by taking
material of substance and value? Would she regard the aesthetic
appeal as the same? Wildlife Express Corp. v. Carol Wright
Sales, Inc., 18 F.3d 502 (7th Cir. 1994).
But copying is not enough. The test of substantial similarity
is copying and improper appropriation. Id. The Copyright Act
"assures authors the right to their original expression, but
encourages others to build freely upon the ideas and information
conveyed by a work." Feist Publications, Inc. v. Rural Tel.
Serv. Co., Inc., 499 U.S. 340, 349-350, 111 S.Ct. 1282, 113
L.Ed.2d 358 (1991). In patents, the concept is articulated as
"designing around" a patent. Hilton Davis Chemical Co. v.
Warner-Jenkinson Co., Inc., 62 F.3d 1512, 1520 (Fed.Cir. 1995),
rev'd on other grounds, 520 U.S. 17, 117 S.Ct. 1040, 137
L.Ed.2d 146 (1997). In copyright it is often articulated as the
dichotomy between unprotected ideas versus protected expression,
a somewhat elusive concept we discussed some years ago in
Runstadler Studios, Inc. v. MCM Ltd. Partnership, 768 F. Supp. 1292,
1297-98 (N.D.Ill. 1991). "Nobody has ever been able to fix
that boundary, and nobody ever can." Nichols v. Universal
Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied,
282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931). There is,
however, indeed a tension between monopoly and the encouragement
of an author's creativity. See Sony Corp. of America v.
Universal City Studios, Inc., 464 U.S. 417, 429, 104 S.Ct. 774,
78 L.Ed.2d 574 (1984); Gund, Inc. v. Smile International, Inc.,
691 F. Supp. 642 (E.D.N.Y. 1988), aff'd, 872 F.2d 1021 (2d Cir.
The more particularized and complex the expression the greater
the area of protection. Wildlife Express, 18 F.3d at 508.
As a work embodies more in the way of particularized
expression, it moves farther away from the bee pin in
Kalpakian, and receives broader copyright
protection. At the opposite end of the spectrum lie
the "strongest" works in which fairly complex or
fanciful artistic expressions predominate over
relatively simplistic themes and which are almost
entirely products of the author's creativity rather
than concomitants of those themes. See, e.g.,
Krofft, 562 F.2d at 1169 ("The expression inherent
in the H.R. Pufnstuff series differs markedly from
its relatively simple idea"). As one court noted:
"The complexity and artistry of the expression of an
idea will separate it from even the most banal idea.
. . . [T]he scope of copyright protection increases
with the extent expression differs from the idea."
Id. at 1168. See also Universal Athletic Sales Co.
v. Salkeld, 511 F.2d 904 (3d Cir.), cert. denied,
423 U.S. 863, 96 S.Ct. 122, 46 L.Ed.2d 92 (1975)
("between the extremes of conceded creativity and
independent effort amounting to no more than the
trivial, the test of appropriation necessarily
varies"); Clarke, 472 F. Supp. at 482-83.
Atari, Inc. v. North American Philips Consumer Electronics
Corp., 672 F.2d 607, 617 (7th Cir. 1982), superseded by statute
on other grounds as stated in Scandia
Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1429 (7th Cir.
1985). When the copyrighted work embodies original expression in
an article that includes substantial materials in the public
domain, our emphasis necessarily must be on the substantial
similarities between the originality expressed in the copyrighted
work and the accused work. Country Kids `N City Slicks, Inc. v.
Sheen, 77 F.3d 1280 (10th Cir. 1996); see also Feist
Publications, Inc., 499 U.S. at 348 and 361, 111 S.Ct. 1282.
It is beyond dispute that defendants had access to Beanie Baby
bears. Indeed, defendant LeClair wrote about Beanie Babies under
the name "BeanyGenie." We think it is also clear that the Beanie
Baby marketing phenomenon led to the defendants' entry into the
bean bag bear market. It is also relatively clear that at least
some initial Holybear samples were strikingly similar to the
copyrighted bears and in all probability infringed. We believe
the evidence establishes that Beanie Baby bears were very much in
the forefront of Robert LeClair's mind when he got into the
business. In a certain sense he "copied" those bears, but that
sense is not enough. Herbert Rosenthal Jewelry Corp. v.
Kalpakian, 446 F.2d 738, 741 (9th Cir. 1971).
Defendants point out a number of differences between Beanie
Baby bears and Holybears. The Holybear's eyes and ears are
positioned wider apart than Ty's, the Holybear body parts are
generally slightly larger, the Holybears have separate interior
mesh sacks, they are more fully stuffed, the legs are straighter,
and Holybears are plumper. Those differences are, however,
marginal. The shape, size and type of cloth, are substantially
similar. The faces, however, are different. It is unclear whether
defendants did not initially understand that plaintiff had
copyrights or whether they later recognized that plaintiff would
aggressively pursue them (as it has) if they infringed. In any
event, the production Holybears' faces were changed from those of
the initial samples.
Was that change enough to avoid infringement? We think it
Stuffed toy bears have long been with us, as have bean bag
toys. The teddy bear has been part of American culture for almost
a century, as described in The Century of the Teddy Bear by
Constance Smith (1997). See also North American Bear Company v.
Carson Pirie Scott & Co., 1991 WL 259031 (N.D.Ill.). Stuffed toy
bears have heads, ears, bodies, arms and legs, and a visit to any
toy store reflects that there are a great number of teddy bear
designs that have some similarities. We have no reason to doubt
that the heads, ears, bodies, arms and legs of Beanie Baby bears
have some modicum of originality. Those bears are not, however,
the David statue or War and Peace. Plaintiff's marketing
success is not because of the quality and complexity of artistic
expression. See Ty, Inc. v. GMA, 132 F.3d at 1171 (noting Ty's
practice of artificially creating product shortage in order to
"excite the market"). The differences between Beanie Baby bears
and various other stuffed bears is of limited particularity. It
is against this spectrum that we act as an ordinary reasonable
observer. And it is in that context that the differences in the
faces become significant.
The Beanie Baby bear face is quite simplistic. Two plastic eyes
stare out over a plastic nose on the suggestion of a snout, and
there is no mouth. The Holybear has a well-defined snout (an
additional piece), a felt nose, and a stitched mouth. It has a
much more traditional teddy bear look. We think there is a
sufficient difference in the total concept and feel, in the
essential expression, to probably preclude a finding of
infringement. To decide otherwise might well provide plaintiff
with "a ...