Taylor Corp. v. Four Seasons Greetings, LLC, 01-3906.

• Citation: 315 F.3d 1039
• Decision Date: 15 January 2003
• Docket Number: No. 01-3906.,01-3906.
• Parties: TAYLOR CORPORATION, Appellee, v. FOUR SEASONS GREETINGS, LLC, Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

315 F.3d 1039

TAYLOR CORPORATION, Appellee, v. FOUR SEASONS GREETINGS, LLC, Appellant.

No. 01-3906.

United States Court of Appeals, Eighth Circuit.

Submitted: October 10, 2002.

Filed: January 15, 2003.

Kathleen A. Rheintgen, argued, Chicago, IL (Joseph E. Cwik, Chicago, IL, on the brief), for appellant.

Laura J. Hein, argued, Minneapolis, MN (Gina M. Tiefenthaler, Minneapolis, MN, on the brief), for appellee.

Before RILEY, RICHARD S. ARNOLD, and SMITH, Circuit Judges.

RICHARD S. ARNOLD, Circuit Judge.

The Taylor Corporation, a manufacturer of greeting cards with original decorative designs, obtained a preliminary injunction in the District Court¹ against a competitor, Four Seasons Greetings, LLC, to prevent further alleged infringement of its copyrights in six greeting cards. Four Seasons appeals the grant of the preliminary injunction against it on the grounds that the District Court made errors of law when it determined that the doctrine of scénes à faire was inapplicable to this case, and in its application of this Court's intrinsic test of similarity between the original cards and the infringing cards. Four Seasons also argues that the District Court made clearly erroneous factual findings of substantial similarity between each of the six original cards and the allegedly infringing cards. We affirm the District Court's decision to grant a preliminary injunction, recognizing that, if the proof at the trial on the merits should be different, the case could go the other way on final judgment.

I.

Taylor Corporation creates and sells greeting cards with original decorative designs. It holds copyrights on many of its greeting-card designs, including the six greeting cards at issue in this case. The three artists who created the allegedly infringing Four Seasons cards, Frank Stockmal, Aleta Brunettin, and Michael Shelton, had previously worked for Creative Card Company, a company whose assets (including card designs) were later purchased by Taylor, in early 2000. On June 25, 2001, and August 3, 2001, Taylor registered and received United States Certificates of Registration on these six cards, entitled: "Wreath with Verse," "Pencil Sketch Farm," "Colored Presents," "Ribbon of Flags Around Globe," "Three World of Thanks Globe Ornament," and "Thanksgiving Cart."

Four Seasons competes directly with Taylor for customers and sales. It contends that its cards were not copied from any of appellee's designs, and that proper application of the doctrine of scénes à faire requires a holding that there was no copyright infringement. The District Court granted Taylor's motion for a preliminary injunction, to take effect on the posting of a bond in the amount of $205,000, as required by Federal Rules of Civil Procedure 65(c), in an amended order of November 26, 2001. Joint Appendix 382-400.

II.

A District Court's decision to grant a preliminary injunction will not be overturned absent a clearly erroneous factual determination, an error of law, or an abuse of discretion. Campaign for Family Farms v. Glickman, 200 F.3d 1180, 1186 (8th Cir.2000). Whether the equitable remedy of a preliminary injunction should issue depends on four factors: (1) the probability that the movant will succeed on the merits; (2) the threat of irreparable harm to the movant should a preliminary injunction be denied; (3) the balance between this harm and the harm that granting the injunction will cause to the other parties litigant; and (4) the public interest. This analysis requires a balancing of the four factors. The scope of review of a grant of preliminary injunction on appeal is narrow. Dataphase Sys., Inc. v. CL Sys., Inc., 640 F.2d 109, 112-14 (8th Cir. 1981) (en banc).

In copyright-infringement cases, the general rule is that a showing of a prima facie case raises a presumption of irreparable harm. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1254 (3d Cir.1983), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984). If Taylor made a prima facie showing of copyright infringement, the District Court properly presumed that Taylor would suffer irreparable harm in the form of lost sales, absent the grant of a preliminary injunction against Four Seasons. With respect to factor three, the balance of harms as between Taylor and Four Seasons, if copyright infringement is proved, this factor becomes negligible, and would favor Taylor. E.F. Johnson Co. v. Uniden Corp. of America, 623 F.Supp. 1485, 1491 (D.Minn.1985).

The fourth factor to be considered in determining whether a preliminary injunction should issue is the public interest. The public interest is served in protecting the holders of valid copyrights from infringing activity — an interest served here by the grant of a preliminary injunction against Four Seasons. Id. at 1504.

III.

The central issue in dispute is the first factor, whether Taylor would be likely to succeed in establishing copyright infringement at trial. In order to prevail on a copyright-infringement claim, Taylor must be able to prove that it owns valid copyrights in the works infringed, and that Four Seasons copied those works. Moore v. Columbia Pictures Indus., Inc., 972 F.2d 939, 941 (8th Cir.1992). Since Taylor holds certificates of registration in all six cards, it has provided prima facie evidence of the validity of its copyright in the cards at issue and is entitled to a rebuttable presumption of the validity of its copyrights. 17 U.S.C. § 410(c) (2002).

Copying may be demonstrated by direct evidence or, as here, by circumstantial evidence establishing that Four Seasons had access to the copyrighted material, and that there is substantial similarity between the Taylor cards and the Four Seasons cards. It is undisputed that Four Seasons had direct access to at least four of Taylor's six designs, because the three artists who created the designs later created the alleged infringing designs for Four Seasons: "Happy Holidays," "Globe with Streamers," "Bright New World," and "Pumpkin Wagon." Given the competitive nature of the greeting-card business, and the fact that the two other cards, "Wreath with Verse," and "Pencil Sketch Farm," were available in stores, there is no dispute that Four Seasons had access to all six of Taylor's copyrighted cards. Four Seasons, however, challenges the District Court's interpretation of the scope of the copyrights in those cards.

Appellants argue that the District Court erred as a matter of law in finding the doctrine of scènes à faire inapplicable to this case. Notably, the case which introduced the concept of scènes à faire into copyright jurisprudence involved a dispute between script writers and film-makers, where the phrase was defined as "scenes which `must' be done." Schwarz v. Universal Pictures Co., 85 F.Supp. 270, 275 (S.D.Cal.1945). The doctrine has most frequently been applied in the film, television, and video contexts. "Scènes à faire" refers to "incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic." Atari, Inc. v. North Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982). As Nimmer points out, the doctrine "does not limit the subject matter of copyright; instead, it...