77 F.3d 1280 (10th Cir. 1996), 94-6025, Country Kids 'N City Slicks, Inc. v. Sheen

Docket Nº:94-6025.
Citation:77 F.3d 1280
Party Name:38 U.S.P.Q.2d 1017 COUNTRY KIDS 'N CITY SLICKS, INC., Plaintiff-Appellant, v. Vicki SHEEN, Bill Sheen, Ladawn Bragg, and Flake Wells, doing business as Carousel Kids, Defendants-Appellees.
Case Date:March 05, 1996
Court:United States Courts of Appeals, Court of Appeals for the Tenth Circuit

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77 F.3d 1280 (10th Cir. 1996)

38 U.S.P.Q.2d 1017

COUNTRY KIDS 'N CITY SLICKS, INC., Plaintiff-Appellant,


Vicki SHEEN, Bill Sheen, Ladawn Bragg, and Flake Wells,

doing business as Carousel Kids, Defendants-Appellees.

No. 94-6025.

United States Court of Appeals, Tenth Circuit

March 5, 1996

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[Copyrighted Material Omitted]

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Appeal from the United States District Court for the Western District of Oklahoma (D.C. No. CIV-93-1820A).

Eric S. Gray of Gray, Goresen, Moriarty & Wright, Oklahoma City, Oklahoma (Thomas P. Goresen with him, on the briefs) for Plaintiff-Appellant.

Kenneth L. Buettner of McAfee & Taft, Oklahoma City, Oklahoma, for Defendants-Appellees.

Before BRORBY, EBEL, Circuit Judges and BRATTON, [*] Senior District Judge.

EBEL, Circuit Judge.

The instant appeal arises from the denial of a preliminary injunction in an action for copyright infringement. In this appeal, Plaintiff-Appellant Country Kids 'N Slicks, Inc. ("Plaintiff") contends that the district court erred in ruling for purposes of the preliminary injunction that Defendants-Appellees Vickie Sheen, Bill Sheen, Flake Wells, and LaDawn Bragg, d/b/a Carousel Kids (collectively "Defendants") did not establish infringement on its copyrights describing certain wooden dolls modelled after the traditional paper dolls. Specifically, Plaintiff argues that the district court erred as a matter of law by: (1) holding that the medium, size and shape of the dolls are not copyrightable features; (2) misinterpreting the standard for copyright infringement by requiring Plaintiff to show that the Defendants' dolls were a "virtual copy" of Plaintiff's dolls; and (3) requiring that Plaintiff establish the likelihood of bankruptcy in order to meet the irreparable injury requirement for issuing a preliminary injunction. We AFFIRM the district court's holding that the medium, size and shape of the dolls are not copyrightable features. However, with regard to other features of the dolls, we cannot discern whether the district court utilized the correct legal standard for copyright

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infringement or properly determined that Plaintiff was entitled to a presumption of irreparable harm in the event of copyright infringement. Therefore, on those issues we VACATE the judgment of the district court and REMAND this case for further proceedings.


Plaintiff, who does business under the name Crayon Kids, is a wholesale doll manufacturer that sells wooden dolls created by Country Kids 'N Slicks, Inc.'s President, Pam Laughlin ("Laughlin"). Plaintiff holds copyrights on the various dolls it produces. Laughlin conceived of the concept of the wooden doll when she noticed that her five-year-old daughter had difficulty keeping the clothing on paper Barbie dolls. Based on this concept, Laughlin founded Country Kids, and began producing a line of wooden dolls. Plaintiff's wooden dolls all employ a similar size and shape to the traditional paper dolls.

In mid-1993, Plaintiff discovered that Vickie Sheen, a former employee of Country Kids, had begun marketing her own models of wooden dolls. Ms. Sheen's husband, Bill Sheen, Mr. Sheen's sister, LaDawn Bragg, and Mr. Flake Wells III all assisted her in this effort. Defendants, who marketed their dolls under the name "Carousel Kids," did not obtain a license to use Plaintiff's copyright and clearly had access to the design of Plaintiff's dolls. While employing the basic concept of Plaintiff's dolls, Defendants claimed that their dolls had distinctly different features (e.g., hair, eyes, nose, mouth, cheeks, etc.).

After learning of Defendants' dolls, Plaintiff filed suit and requested a preliminary injunction to prevent Defendants from marketing their Carousel Kids dolls. At a hearing, Plaintiff presented evidence that Defendants lured away some of Plaintiff's sales representatives, sold their dolls at lower prices, and that some customers could not differentiate between the two brands of dolls. Defendants, however, dispute the extent of any such confusion. Plaintiff also suggested that the competition of Defendants' dolls would force both companies into bankruptcy. The district court denied the motion for a preliminary injunction on the grounds that Plaintiff could not demonstrate either a likelihood of success on the merits or a threat of irreparable harm. Plaintiff now appeals, and we exercise jurisdiction under 28 U.S.C. § 1292(a).


We consider this case on appeal from a denial of a preliminary injunction to restrain an alleged infringement of Plaintiff's copyright in violation of 17 U.S.C. § 502(a). In order to merit a preliminary injunction, Plaintiff must establish that: (1) it has a substantial likelihood of prevailing on the merits; (2) it will suffer irreparable injury if it is denied the injunction; (3) its threatened injury outweighs the injury that the opposing party will suffer under the injunction; and (4) an injunction would not be adverse to the public interest. Autoskill, Inc. v. Nat'l Educ. Support Sys., Inc., 994 F.2d 1476, 1487 (10th Cir.) (citation omitted), cert. denied, --- U.S. ----, 114 S.Ct. 307, 126 L.Ed.2d 254 (1993). The district court ruled that Plaintiff failed to meet either of the first two requirements, and thus, did not make the required showing to warrant the issuance of an injunction. Accordingly, the district court declined to rule on whether Plaintiff had made the necessary showing on the third and fourth requirements necessary to support the issuance of a preliminary injunction.

We review the district court's denial of Plaintiff's application for a preliminary injunction to determine if the district court "abuse[d] its discretion, commit[ted] an error of law, or [wa]s clearly erroneous in its preliminary factual findings." Autoskill, 994 F.2d at 1487; Atari, Inc. v. North Am. Philips Consumer Electronics Corp., 672 F.2d 607, 613 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982). Plaintiff does not argue that the district court's factual findings were clearly erroneous; 1

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rather, Plaintiff focuses this appeal on the district court's legal rulings. First, Plaintiff argues that the district court incorrectly ruled that it was not likely to succeed on the merits because the court erroneously concluded that the shape and size of the dolls were not copyrightable and because the court erroneously interpreted the "substantial similarity" test that governs copyright infringement cases to require the accused product to be a "virtual copy" of the copyrighted product. Second, Plaintiff contends that the district court incorrectly ruled that Plaintiff would not suffer an irreparable injury if it was denied the requested injunction.

A. Plaintiff's Likelihood of Success on the Merits

In order to prevail on its copyright infringement claim, Plaintiff must establish both: (1) that it possesses a valid copyright and (2) that Defendants "copied" 2 protectable elements of the copyrighted work. Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1295-96, 113 L.Ed.2d 358 (1991); Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 831 (10th Cir.1993). This appeal turns on whether Defendants copied protectable elements of Plaintiff's dolls. 3 This examination involves two distinct inquiries: first, whether Defendants, as a factual matter, copied Plaintiff's work, and second, whether, as a mixed issue of fact and law, those elements that were copied were protected. Id. at 832. The second inquiry will require us to determine which elements of Plaintiff's work (e.g., design, shape, size and concept of Plaintiff's dolls) are protectable.

While the fact of copying is difficult to prove directly, Plaintiff can indirectly prove copying by establishing that Defendants had access to the copyrighted work and that there are probative similarities between the copyrighted material and the allegedly copied material. 4 Gates Rubber, 9 F.3d at 832; see also Melville B. Nimmer & David Nimmer, 3 Nimmer on Copyright, § 13.01[B], at 13-10 to 13-12 (1995). A finding that Defendants copied some aspect of Plaintiff's dolls, however, would not end the court's inquiry, as liability for copyright infringement will attach only where protected elements of a copyrighted work are copied. Gates Rubber, 9 F.3d at 833 (citing Baker v. Selden, 101 U.S. 99, 101-03, 25 L.Ed. 841 (1879)). To impose such liability, the court must find substantial similarity between those aspects of Plaintiff's dolls which are legally protectable and the Defendants' dolls. See Autoskill, 994 F.2d at 1490.

Thus, the question of whether Defendants infringed on Plaintiff's copyright turns on whether Defendants' product is substantially similar to the protectable elements of Plaintiff's product. To make this determination, we find it useful to apply the "abstraction-filtration-comparison" test. See Autoskill 994 F.2d at 1490-98; Gates Rubber, 9 F.3d at 834-842. 5 At the abstraction step,

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we separate the ideas (and basic utilitarian functions), which are not protectable, from the particular expression of the work. Then, we filter out the nonprotectable components of the product from the original expression. Finally, we compare the remaining protected elements to the allegedly copied work to determine if the two works are substantially similar. In the instant case, Plaintiff claims that the district court erred in applying this test by filtering out the size, shape and medium of the dolls and by interpreting the "substantial similarity" standard to require virtual identity of products.

1. The Abstraction and Filtration Analysis

The district court ruled that although the dolls' specific features were protected, Plaintiff's copyright did not extend to the size, shape and medium of the dolls. This ruling stemmed from the court's application of the Copyright Act, which...

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