United States Court of Appeals
For the First Circuit
No. 07-2786
COQUICO, INC.,
Plaintiff, Appellee,
v.
ÁNGEL EDGARDO RODRÍGUEZ-MIRANDA AND IDENTIKO, INC.,
Defendants, Appellants.
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF PUERTO RICO
[Hon. Jaime Pieras, Jr., U.S. District Judge]
Before
Torruella, Selya and Leval,* Circuit Judges.
Samuel F. Pamias-Portalatín, with whom Carla Ferrari-Lugo
was on brief, for appellants.
Marie Elsie López-Adames, with whom González-López & López-
Adames was on brief, for appellee.
April 6, 2009
*
Of the Second Circuit, sitting by designation.
SELYA, Circuit Judge. A famous fairy tale, of ancient
vintage, tells of an ugly frog who, when befriended by a beautiful
damsel, turns into a handsome prince, marries his rescuer, and
(presumably) lives happily ever after. See Jacob Grimm & Wilhelm
Grimm, The Frog-King, reprinted in 17 The Harvard Classics 47
(Charles W. Eliot ed., P.F. Collier & Son 1909). The coquí is a
tree frog indigenous to Puerto Rico. Plaintiff-appellee Coquico,
Inc. has not yet managed to turn the coquí into an imperial
presence. It has, however, fashioned a popular stuffed-animal
rendering of the coquí and, thus, turned the frog into dollars.
Coquico secured a copyright on its stuffed animal to
protect this amphibian revenue source. When the defendants, Ángel
Edgardo Rodríguez-Miranda (Rodríguez) and Identiko, Inc., began
selling a competing coquí, Coquico sued for, among other things,
copyright infringement. The district court preliminarily enjoined
the defendants from infringing Coquico's copyright.
The defendants appeal. Concluding, as we do, that the
district court did not abuse its discretion in granting the
preliminary injunction, we affirm.
I. BACKGROUND
We rehearse the factual and procedural antecedents of
this appeal, "credit[ing] the undisputed facts presented below and
adopt[ing] the district court's findings as to controverted matters
to the extent they are supported by the record and not clearly
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erroneous." United Elec., Radio & Mach. Workers v. 163 Pleasant
St., 960 F.2d 1080, 1083 (1st Cir. 1992).
Coquico manufactures and distributes plush-toy depictions
of animals. Pertinently, it produces a line of plush toys
portraying the coquí común, a small brown tree frog much beloved in
Puerto Rico. This litigation concerns Coquico's standard plush-toy
coquí, registered as a work of visual art with the United States
Copyright Office on June 22, 2001, under the appellation "Común by
Coquico."
In designing Común, Coquico hired a scientist, a
photographer, and a recording engineer with an eye toward
reproducing key features of the coquí's appearance and avoiding
zoological anomaly. This effort was successful to a degree and
Común displays notable features of the anuran on which it is
modeled. But Común nonetheless possesses several features that do
not have their genesis in the frog's physiognomy. These features
include a brass button, a bonita bandera (the Puerto Rican flag)
stitched onto the frog's underbelly, and an informational hang
tag.1
Rodríguez worked for Coquico for four years, beginning in
2001. Sometime in 2002 Coquico gave him access to sensitive
1
The hang tag is inscribed and separately registered with the
Copyright Office. Because this appeal implicates only the
principal copyright obtained by Coquico, we do not refer further to
this accessory copyright.
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information anent its design criteria, manufacturing processes, and
profit margins. In return, Rodríguez signed a non-disclosure/non-
competition agreement.
That same year, Rodríguez founded Identiko, with the
evident purpose of designing products that would be identified with
political candidates and campaigns, social movements, and the like.
But in February of 2006 (shortly after leaving Coquico), Rodríguez
contacted a manufacturer in China to explore the feasibility of
producing plush toys. Within months, Identiko began to distribute
plush-toy coquíes under the label "Wild Encantos." Its standard
plush-toy incarnation of the coquí strongly resembles Común.
On May 18, 2007, Coquico brought suit alleging, among
other causes of action, that the defendants had infringed its
copyright. Following an evidentiary hearing, the district court
entered an order preliminarily enjoining Rodríguez and Identiko
from continuing to market the Encantos coquí or otherwise
infringing Coquico's copyright in plush-toy coquíes.2 See Coquico,
Inc. v. Rodríguez-Miranda, Civ. No. 07-1432, 2007 WL 3034259, at *6
(D.P.R. Oct. 15, 2007). This interlocutory appeal ensued. We have
jurisdiction under 28 U.S.C. § 1292(a)(1).
2
Coquico's complaint originally named additional defendants.
The district court granted judgment in their favor on August 27,
2007, and Rodríguez and Identiko are the only remaining defendants.
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II. ANALYSIS
On appeal, the defendants insist that the Encantos coquí
does not copy any original elements of Común and, thus, that Coquico
is unlikely to succeed on its claim of copyright infringement. In
the pages that follow, we lay the necessary legal foundation and
then address the merits of this controversy.
A.
The propriety of preliminary injunctive relief depends on
an amalgam of four factors: (i) the likelihood that the movant will
succeed on the merits; (ii) the possibility that, without an
injunction, the movant will suffer irreparable harm; (iii) the
balance of relevant hardships as between the parties; and (iv) the
effect of the court's ruling on the public interest. Borinquen
Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 115 (1st Cir.
2006). The first of these four factors normally weighs heaviest in
the decisional scales. New Comm Wireless Servs., Inc. v. SprintCom,
Inc., 287 F.3d 1, 9 (1st Cir. 2002). That is especially true in
copyright cases because the resolution of the other three factors
often turns on the plaintiff's likelihood of success. See, e.g.,
Concrete Mach. Co. v. Classic Lawn Orns., Inc., 843 F.2d 600, 611-12
(1st Cir. 1988).
When an appeal is taken from the grant or denial of a
preliminary injunction, appellate review is for abuse of discretion.
Ross-Simons of Warwick, Inc. v. Baccarat, Inc., 102 F.3d 12, 16 (1st
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Cir. 1996). Within that rubric, we assay the district court's
findings of fact for clear error and its resolution of abstract
legal questions de novo. Air Line Pilots Ass'n, Int'l v. Guilford
Transp. Indus., Inc., 399 F.3d 89, 95 (1st Cir. 2005). In the
expanse between those two poles, we afford substantial deference to
the lower court's "[j]udgment calls and . . . balancing of
conflicting factors," Wine & Spirits Retailers, Inc. v. Rhode
Island, 418 F.3d 36, 46 (1st Cir. 2005); we will disturb such
determinations only if the trial court is shown to have "ignored
pertinent elements deserving significant weight, considered improper
criteria, or, though assessing all appropriate and no inappropriate
factors, plainly erred in balancing them," Ross-Simons, 102 F.3d at
16.
This is a rifle-shot appeal. The defendants take dead aim
at the district court's handling of the first preliminary injunction
factor: likelihood of success. We cabin our discussion accordingly.
B.
Copyright protection can subsist in original plush-toy
designs. See 17 U.S.C. § 102(a)(5); see also Ty, Inc. v. Publ'ns
Int'l Ltd., 292 F.3d 512, 515 (7th Cir. 2002). The holder of a
valid plush-toy copyright possesses exclusive rights to reproduce
and distribute not only exact "copies" of the toy but also
"derivative works" based upon it. 17 U.S.C. § 106. A person who
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trespasses upon any of these exclusive rights may be held liable for
copyright infringement. Id. § 501.
To prevail on a copyright infringement claim, a party must
prove both control of a valid copyright and copying of original
elements of the work by the putative infringer. Feist Publ'ns, Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). In this
instance, the defendants concede that Coquico obtained a valid
copyright. Thus, the ganglion of this appeal is the second
requisite: copying of original elements.
That requirement itself involves a bifurcated inquiry.
First, the copyright holder must show that, as a factual matter, the
putative infringer copied the protected work. Segrets, Inc. v.
Gillman Knitwear Co., 207 F.3d 56, 60 (1st Cir. 2000). Second, the
holder must show that the copying was so egregious as to render the
allegedly infringing and infringed works substantially similar.
Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 813 (1st Cir.
1995).
Of course, copyright law protects original expressions of
ideas, not the ideas themselves. Johnson v. Gordon, 409 F.3d 12,
19 (1st Cir. 2005). This originality requirement cuts across both
the actual copying and substantial similarity branches of the
second-step analysis. Thus, in conducting that analysis, an
inquiring court must focus upon the "constituent elements of the
[plaintiff's] work that are original." Feist, 499 U.S. at 361.
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Accordingly, we turn to the binary appraisal that these principles
require.
1. Actual Copying. A party may demonstrate actual
copying through either direct or circumstantial evidence. Yankee
Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 33 (1st Cir.
2001). Coquico traversed the latter route, endeavoring to prove
that the defendants enjoyed access to Común and that their later-
created product (the Encantos coquí) is sufficiently similar to
Común that a fair comparison of the two stuffed animals gives rise
to an inference of actual copying.
Rodríguez testified that he had designed the Encantos
coquí by making modifications to a prototype sent to him by a
Chinese manufacturer and that any similarities between his plush toy
and Coquico's were the result of his desire to replicate the coquí
as it exists in nature. But the district court did not credit this
testimony; and as the finder of fact, the court was not obliged to
do so. In any event, the record offers ample circumstantial
evidence to support the court's finding that Coquico was likely to
succeed on the issue of actual copying.
It is undisputed that Rodríguez, through his prolonged
tenure with Coquico, had access to proprietary design and
manufacturing information concerning Común well before Identiko
began fabricating the Encantos coquí. What we have called
"probative similarity" can, when accompanied by proof of access,
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serve as a harbinger of actual copying, see Johnson, 409 F.3d at 18,
and the record in this case fully supports a finding of probative
similarity between Común and the Encantos coquí. The plush toys are
nearly identical in many material respects, including shape,
features, stitching, shading, posture, adornment, and dimensions.3
This combination of access to information concerning the design and
production of Común and the probative similarity between the two
products adequately buttresses the district court's determination
that Coquico had shown a likelihood of success on the issue of
actual copying.
2. Substantial Similarity. We come now to the second
step in the illicit copying pavane: substantial similarity. Works
are substantially similar within the intendment of copyright law if
they are so alike that the later (unprotected) work can fairly be
regarded as appropriating the original expression of the earlier
(protected) work. See Yankee Candle, 259 F.3d at 33. To gauge
substantial similarity in cases involving non-technological consumer
products, courts often employ an "ordinary observer" test. Under
that metric, the allegedly infringing work will be deemed
substantially similar to the allegedly infringed work if an ordinary
3
In this case, the congruities that sustain a finding of
probative similarity merge with those that sustain a finding of
substantial similarity. Thus, we furnish more detail in connection
with our subsequent discussion of that issue. See infra Part
II(B)(2).
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observer would be disposed to overlook any disparities in the works.
See Concrete Mach., 843 F.2d at 607.
The district court found that an ordinary observer would
be disposed to overlook any discrepancies between Común and the
Encantos coquí and regard their origin as the same. Coquico, 2007
WL 3034259, at *3-4. On that basis, the court found the works
substantially similar. Id. at *4. The defendants attack this
finding on two fronts. We conduct the necessary triage.
The defendants' first challenge accuses the lower court
of relying on inapposite subject matter. That accusation starts
with a correct premise: that the substantial similarity inquiry must
focus on those aspects of the copyrighted work that are original.
See Johnson, 409 F.3d at 19; Matthews v. Freedman, 157 F.3d 25, 27
(1st Cir. 1998). From that starting point, the defendants posit
that Común's only protected elements are its brass button and
informational hang tag, which do not appear in the defendants'
rendering of the coquí. In their view, the remainder of Común's
content is unprotected by operation of the merger and scènes à faire
doctrines.
A court normally should commence its evaluation of this
type of defense by dissecting the copyrighted work and separating
its original expressive elements from its unprotected content. See,
e.g., Johnson, 409 F.3d at 19; Concrete Mach., 843 F.2d at 608-09.
In performing this dissection, the court should not lose sight of
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the forest for the trees; that is, it should take pains not to focus
too intently on particular unprotected elements at the expense of
a work's overall protected expression. See Situation Mgmt. Sys.,
Inc. v. ASP. Cons'g LLC, ___ F.3d ___, ___ (1st Cir. 2009) [2009 WL
709422, at *5].
Appellate review of the originality vel non of the
constituent elements of the copyrighted work is de novo. See Yankee
Candle, 259 F.3d at 34 n.5. After careful consideration, we
conclude that the defendants' reasoning on this point is
artificially narrow and, therefore, unconvincing.
We begin with the basics. The merger doctrine denies
copyright protection when creativity merges with reality; that is,
when there is only one way to express a particular idea. Concrete
Mach., 843 F.2d at 606. The doctrine of scènes à faire denies
copyright protection to elements of a work that are for all
practical purposes indispensable, or at least customary, in the
treatment of a given subject matter. JCW Invs., Inc. v. Novelty,
Inc., 482 F.3d 910, 915 (7th Cir. 2007). We agree that, in tandem,
these doctrines foreclose copyright protection insofar as Común's
characteristics are ineluctably and inextricably intertwined with
the idea of producing a realistic depiction of a coquí. For
example, Coquico cannot possess a monopoly on brown-colored
depictions of coquíes that have two eyes, two ear discs, four legs,
and nine toes (four front and five rear). See, e.g., Satava v.
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Lowry, 323 F.3d 805, 811 (9th Cir. 2003); Aliotti v. R. Dakin & Co.,
831 F.2d 898, 901 (9th Cir. 1987).
By the same token, insofar as Común's qualities are
necessary byproducts of the stuffed-animal artistic medium, those
qualities are not subject to copyright protection. Thus, Coquico
cannot use the copyright laws as a means of cornering the market for
ersatz coquíes that have a soft and velutinous feel. See, e.g.,
Country Kids 'N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1286 (10th
Cir. 1996); Aliotti, 831 F.2d at 901.
Here, however, the defendants exaggerate the impact of the
merger and scènes à faire doctrines. The attributes of Común that
are unprotectable by reason of these doctrines do not exhaust — or
even come close to dominating — a comparison between the two
products. Moreover, the district court's finding of substantial
similarity is grounded on a plethora of protectable attributes.
Notwithstanding the defendants' importunings, there is no
singular manner of depicting the coquí común by way of the plush-toy
medium. Indeed, any attempt to create a stuffed-animal rendering
of the coquí will involve countless artistic decisions, whether
deliberately or intuitively made, concerning the precise size,
shape, posture, color, juxtaposition of features, stitching, and
adornment of the toy. The task doubtless will entail some measure
of simplification: certain elements of the subject will be omitted
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altogether while others will be stressed, perhaps to the point of
exaggeration.
These considerations are borne out in the instant case.
Without attempting an exhaustive enumeration of Común's protected
content, we hold that, at a minimum, the following original features
are protectable:
1. Común's distinctive stitching pattern is
protectable. See, e.g., Segrets, 207 F.3d at
62; Aliotti, 831 F.2d at 901.
2. Común's idiosyncratic color combination is
protectable. See, e.g., Kay Berry, Inc. v.
Taylor Gifts, Inc., 421 F.3d 199, 207 (3d Cir.
2005); Sturdza v. United Arab Emirates, 281
F.3d 1287, 1296 (D.C. Cir. 2002).
3. Común's pose is protectable. See, e.g.,
Concrete Mach., 843 F.2d at 607.
4. The placement of the flag stitched onto
Común's underbelly is protectable. See, e.g.,
Boisson v. Banian, Ltd., 273 F.3d 262, 274 (2d
Cir. 2001).
5. Común's dimensions, when combined with the
aforementioned elements, are protectable. See,
e.g., Kay Berry, 421 F.3d at 207.
These elements are neither inevitable concomitants of an
effort to produce an anatomically correct portrayal of the coquí nor
necessary byproducts of the stuffed-animal medium. There is no
evidence in the record demonstrating that Común mirrors any
particular coquí in nature.4 What evidence there is about the coquí
4
The defendants attempted to introduce such evidence but the
district court rejected their proffer on authentication grounds.
The defendants have not appealed that ruling.
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in nature suggests the contrary: the coquí común exists in myriad
shades of beige, brown, and tan; coquíes can and do strike a wide
variety of poses; coquíes do not have embedded flags; a stuffed-
animal rendering of a coquí need not have Común's precise dimensions
(which depart dramatically from those of coquíes in nature); and,
finally, the actual coquí has no stitching (and, relatedly, many
different stitching patterns can be used to construct stuffed
animals). To cinch the matter, the record is replete with stuffed-
animal depictions of coquíes that bear little resemblance to Común.
In finding substantial similarity, the district court
relied on many of these protected elements, including stitching
pattern, color combination, posture, and size. See Coquico, 2007
WL 3034259, at *3. Moreover, the court observed, in an earlier
unpublished rescript on a different issue, that both Común and the
Encantos coquí have Puerto Rican flags of the same size stitched
onto the same portion of their anatomy. See Coquico, Inc. v.
Rodríguez-Miranda, Civ. No. 07-1432, slip op. at 10 (D.P.R. Aug. 27,
2007). These features and observations defenestrate the defendants'
assertion that the district court focused too intently on
unprotected content.
The defendants' second challenge postulates that whatever
shared qualities the two plush toys may have, those likenesses do
not rise to the level of substantial similarity. This challenge
lacks force.
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In this regard, the defendants invoke a familiar
construct: that the level of resemblance required to establish
substantial similarity may vary with the extent to which the
copyrighted work is or is not a faithful reproduction of an object
in the public domain. See, e.g., Satava, 323 F.3d at 812; Concrete
Mach., 843 F.2d at 606-07. Building on that foundation, the
defendants contend that Coquico's copyright is not very robust
because Común purports to mimic a wild animal (and, thus, an object
in the public domain). This contention represents a triumph of hope
over reason.
The simple truth is that even a realistic reproduction of
a natural phenomenon may enjoy copyright protection. See, e.g.,
Superior Form Builders, Inc. v. Dan Chase Taxid. Supply Co., 74 F.3d
488, 492 (4th Cir. 1996); Kamar Int'l, Inc. v. Russ Berrie & Co.,
657 F.2d 1059, 1061 (9th Cir. 1981). The determining factors are
whether the work possesses original expressive elements and whether
the alleged infringer has copied those elements, as opposed to
gleaning them from the phenomenon in nature. The elements of
original expression that we have catalogued above show beyond hope
of contradiction that this is a case in which art imitates nature
to a degree — but without forfeiting copyright protection.
The defendants' more generic argument is that the two
plush-toy products are not, in fact, substantially similar under the
"ordinary observer" test. To bolster this argument, they note some
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disparities between the two products, including slight differences
in the bulkiness of toes and faces, minimal variation in color
tones, dissimilarities in hang tags, and the fact that the Encantos
coquí has no brass button and bears the words "Puerto Rico" and
"Coquí" on its belly. Yet substantial similarity does not mean
absolute identicality, and the district court found that an ordinary
observer would be disposed to overlook these disparities and
conclude that the wares were the same. Coquico, 2007 WL 3034259,
at *4. We review this finding for clear error, see Taylor Corp. v.
Four Seasons Greetings, LLC, 403 F.3d 958, 964-65 (8th Cir. 2005)
(collecting cases), and we discern none.
The similarities preponderate here. As previously
discussed, the stitching, color combination, posture, size, and flag
location of the two products are virtually identical.
If more were needed — and we doubt that it is — Coquico
presented the testimony of a seasoned vendor of plush toys, who
vouchsafed that he unwittingly received shipments of the Encantos
coquí and did not notice the difference until a much later date
(when he closely examined his wares to ascertain their provenance).
This testimony, credited by the nisi prius court, was strong proof
that an ordinary observer would overlook any differences between
Común and the Encantos coquí. On this record, then, the district
court was fully warranted in concluding that Coquico had a high
probability of prevailing on the substantial similarity issue.
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III. CONCLUSION
To recapitulate, Coquico has adduced ample evidence to
ground both a finding of actual copying and a finding of substantial
similarity. Consequently, the district court cannot be said to have
erred or abused its discretion in appraising Coquico's likelihood
of success.
We need go no further. Because the defendants have not
challenged any other aspect of the district court's preliminary
injunction calculus, our journey is at an end.
Affirmed.
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