Aurora World Inc. v. Ty Inc., Case No. CV 09-08463 MMM (Ex).

CourtUnited States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
Writing for the CourtMARGARET M. MORROW, District Judge.
Citation719 F.Supp.2d 1115
Docket NumberCase No. CV 09-08463 MMM (Ex).
Decision Date15 December 2009
PartiesAURORA WORLD, INC., Plaintiff, v. TY INC., Defendant.

719 F.Supp.2d 1115

AURORA WORLD, INC., Plaintiff,
v.
TY INC., Defendant.

Case No. CV 09-08463 MMM (Ex).

United States District Court,C.D. California.

Dec. 15, 2009.


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Raymond B. Kim, Vincent Henry Chieffo, Wendy M. Mantell, Courtney J. Chai, Greenberg Traurig LLP, Robert L. Meylan, Shaunt T. Arevian, Murphy Rosen & Meylan LLP, Santa Monica, CA, for Plaintiff.

J. Aron Carnahan, James P. White, Laurie A. Haynie, Husch Blackwell Sanders Welsh & Katz LLP, Scott E. Rogers, Scandaglia & Ryan LLP, Chicago, IL, Glenn W. Trost, Connolly Bove Lodge & Hutz LLP, Los Angeles, CA, for Defendant.

ORDER DENYING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION
MARGARET M. MORROW, District Judge.

Plaintiff Aurora World, Inc. commenced this action on November 17, 2009, alleging copyright and trademark infringement, as well as state law unfair competition and misappropriation claims. 1 Shortly thereafter on November 19, 2009, plaintiff filed a motion for preliminary injunction, which if granted would enjoin defendant Ty Inc. from selling or marketing its line of Beanie Boo dolls. 2 On December 2, 2009, Ty opposed

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plaintiff's motion. 3

I. FACTUAL BACKGROUND

Aurora is one of the world's leading manufacturers of soft toys in the global gift industry. 4 In or before January 2007, Aurora launched its YooHoo & Friends brand of plush toy characters. In addition to these stuffed toys, Aurora has created a virtual world (i.e., an interactive website) called YooHoo & Friends that is populated by characters known as the “YooHoos.” The YooHoos are animals, many of which are endangered species. 5 Plaintiff asserts that the plush toys “possess a distinctive look and feel, characterized by large heads, specially-tooled and designed large round eyes with large black pupils and colored borders, and recognizable stitching patterns, expressions, and color elements.” 6 YooHoo & Friends products include the website, a catalog, an animated series currently airing in Korea, and the plush toys, together with peripheral items such as notepads, pins, and keychains. YooHoo & Friends products have been sold in Korea, the United Kingdom, and Saudi Arabia, as well as in the United States and other countries. Aurora is currently pursuing co-marketing opportunities with several nationwide retail and restaurant chains and recreation sites in the United States. 7 The complaint alleges that since launching the YooHoo & Friends brand, Aurora has expended substantial time, energy, and effort creating and promoting the brand internationally. YooHoo & Friends plush toys have generated millions of dollars in revenue worldwide, 8 and Aurora has applied for or obtained copyrights in at least some of the YooHoo & Friends characters. 9

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Ty is a direct competitor of Aurora in the plush toy market. Aurora alleges that at some point in 2009, Ty released a line of plush animal toys called the Beanie Boos. 10 Since their release, Ty has sold six Beanie Boo products in the United States: Kooky the Koala (item number 36001), Kiwi the Frog (item number 36004), Bamboo the Panda (item number 36005), Waddles the Penguin (item number 36008), Coconut the Monkey (item number 36003), and Slush the Husky Dog (item number 36006). 11 In addition, Ty has developed two Beanie Boos, named Cleo the Bush Baby and Bubblegum the Lemur. 12 Ty asserts these toys have been sold in Europe and Canada only; that they are not currently listed on any order form Ty uses in the United States; that they are not currently depicted on Ty's website; and that Ty has no intention of selling or offering them for sale in the United States pending final resolution of this lawsuit. 13

Aurora contends that a “side-by-side comparison of the plush animals and the facts of this case clearly reveal” that the Beanie Boos are “remarkably similar” to Aurora's YooHoo & Friends. 14 In this regard, it identifies the distinctive features of YooHoo & Friends “are ... large, round eyes, with large black pupils and colored borders .... placed close together on the front of each character's face,” and “recognizable stitching patterns, expressions, and color elements.” 15

Since 2007, Aurora has been using the trademarks YooHoo and YooHoo & Friends in connection with the advertising and sale of plush toys. 16 It asserts that it has registered the YooHoo brand name in at least one other country. 17 On December 28, 2008, Aurora filed an application with the United States Patent and Trademark Office to register the YooHoo trademark in the United States. 18

On October 2, 2009, Aurora's senior vice president for sales received an email from Bev Silvey, an independent contractor for Aurora who is the sales representative for North Carolina and Myrtle Beach. Silvey forwarded an email from one of her commercial customers, which stated that the customer “didn't know if you guys had seen these from Ty? Total rip off!” 19 Smiley observed that Ty's products were “exact

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copies of our Yoo-Hoo's, it is unbelievable.” 20 The email does not attach any photographs or images; consequently, the court cannot determine whether either email refers to Beanie Boos or to any particular Beanie Boo toy. 21 On October 10, 2009, Aurora received an email from two Ty product collectors, apparently in the United Kingdom, who run a website for Ty collectors. Their email stated that they were “immediately struck by the similarity between” the YooHoos and the Beanie Boos, 22 and that the similarity between Ty's and Aurora's lemurs “goes beyond mere coincidence.” 23 On November 13, 2009, Aurora's director of sales received an email from the manager of retail operations for the Calgary Zoo in Canada asking if Aurora made Beanie Boos because “[t]hey look very much like” the YooHoos. 24

On October 12, 2009, Aurora advised Ty in writing of Aurora's copyrights and trademarks and accused Ty of infringing its intellectual property rights in the United Kingdom. 25 On October 16, 2009, Ty's counsel denied that any infringement had occurred. 26

Aurora alleges that Ty's purported imitation of Yoo-Hoo & Friends products is causing actual confusion in the marketplace and diminishing the value of the YooHoo & Friends products by diluting their unique, distinctive nature and leading consumers erroneously to associate YooHoo & Friends with Ty rather than Aurora. Aurora asserts that Ty is trading on the goodwill Aurora has built through its development of innovative and unique designs. It contends that in addition to being the most important sales period for plush toy makers, the holiday season is when retailers test how well products fare in the marketplace; as a result, it asserts, orders for 2010 and beyond will be affected by decreased holiday sales. 27

On November 17, 2009, Aurora commenced suit, alleging claims for copyright infringement, trade dress infringement, unfair competition, and false designation of origin under the Lanham Act, unfair competition under California Business & Professions Code §§ 17200 et seq., common law misappropriation, and common law unfair competition. Aurora seeks of preliminary and permanent injunctions, an award of Ty's profits, actual damages, attorneys' fees and costs, punitive damages, and interest.

II. DISCUSSION
A. Standard Governing Preliminary Injunctive Relief

A “preliminary injunction is an extraordinary and drastic remedy.” Munaf v. Geren, 553 U.S. 674, 128 S.Ct. 2207, 2219, 171 L.Ed.2d 1 (2008). Thus, a district court should enter a preliminary injunction only “upon a clear showing that the plaintiff is entitled to such relief.”

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Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 129 S.Ct. 365, 375, 172 L.Ed.2d 249 (2008). Such a showing requires that plaintiff establish it “is likely to succeed on the merits, that [it] is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in [its] favor, and that an injunction is in the public interest.” Winter, 129 S.Ct. at 374. See Sierra Forest Legacy v. Rey, 577 F.3d 1015, 1021 (9th Cir.2009) (“Under Winter, plaintiffs seeking a preliminary injunction must establish that (1) they are likely to succeed on the merits; (2) they are likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in their favor; and (4) a preliminary injunction is in the public interest”). See also Stormans, Inc. v. Selecky, 586 F.3d 1109, 1138 (9th Cir.2009) (“To qualify for injunctive relief, the plaintiffs must establish that ‘the balance of equities tips in [their] favor,’ ” quoting Winter, 129 S.Ct. at 374); American Trucking Associations, Inc. v. City of Los Angeles, 559 F.3d 1046, 1052 (9th Cir.2009) ( “A plaintiff seeking a preliminary injunction must establish that he is likely to succeed on the merits,” citing Winter, 129 S.Ct. at 374); Timbisha Shoshone Tribe v. Kennedy, 687 F.Supp.2d 1171, 1182 (E.D.Cal.2009) (“Pursuant to Winter, [p]laintiffs must make a ‘clear showing’ that they are ‘likely to succeed on the merits,’ ” quoting Winter, 129 S.Ct. at 375-76). 28

“[P]reliminary injunctive relief is available only if plaintiffs ‘demonstrate that irreparable injury is likely in the absence of an injunction.’ ” Johnson v. Couturier, 572 F.3d 1067, 1081 (9th Cir.2009) (quoting Winter, 129 S.Ct. at 375). 29 If the harm to

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plaintiff is merely monetary, it “will not usually support injunctive relief.” American Trucking, 559 F.3d at 1057. See also California Pharmacists Association v. Maxwell-Jolly, 563 F.3d 847, 851-52 (9th Cir.2009) (“Typically, monetary harm does not constitute irreparable harm.... Economic damages are not traditionally considered irreparable because...

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    ...goods are similar or different, and whether the parties' marketing approaches resemble one another.” Aurora World, Inc. v. Ty, Inc., 719 F.Supp.2d 1115, 1162 (C.D.Cal.2009) (citing Gray v. Meijer, Inc., 295 F.3d 641 (6th Cir.2002)). The greater the degree of overlap, the more likely there i......
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28 cases
  • Moroccanoil, Inc. v. Marc Anthony Cosmetics, Inc., Case No. CV 13–2747 DMG AGRx.
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
    • September 16, 2014
    ...protectable trademark; and (2) that Defendant's use of the mark “is likely to cause consumer confusion.” Aurora World, Inc. v. Ty Inc., 719 F.Supp.2d 1115, 1141 (C.D.Cal.2009) (citing Dep't of Parks & Rec. v. Bazaar Del Mundo, Inc., 448 F.3d 1118, 1124 (9th Cir.2006) ). On a summary judgmen......
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    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
    • January 5, 2011
    ...of a mark rests on its distinctiveness, which is “related to the question of secondary meaning.” Aurora World, Inc. v. Ty Inc., 719 F.Supp.2d 1115, 1158 (C.D.Cal.2009). MGA has pointed to no evidence that its trapezoidal packaging obtained any distinctiveness and that consumers built an ass......
  • Comics v. Towle, No. CV 11–3934 RSWL (OPx).
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
    • February 7, 2013
    ...goods are similar or different, and whether the parties' marketing approaches resemble one another.” Aurora World, Inc. v. Ty, Inc., 719 F.Supp.2d 1115, 1162 (C.D.Cal.2009) (citing Gray v. Meijer, Inc., 295 F.3d 641 (6th Cir.2002)). The greater the degree of overlap, the more likely there i......
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