1 2 3 4 5 6 7 8 IN THE UNITED STATES DISTRICT COURT 9 FOR THE NORTHERN DISTRICT OF CALIFORNIA United States District Court For the Northern District of California 10 11 12 13 14 No. C 11-04980 CRB OG INTERNATIONAL, LTD. ET AL, ORDER DENYING TRO AND PRELIMINARY INJUNCTION Plaintiffs, v. UBISOFT ENTERTAINMENT ET AL, 15 Defendants. / 16 17 This is a dispute between two video game manufacturers. Ubisoft Entertainment S.A. 18 (�Ubisoft�) created and distributes the Just Dance series of dance-based video games (Just 19 Dance, Just Dance 2, Just Dance 3). Competitor OG International (�OG�) has announced the 20 release of a competing dance-based video game, Get Up and Dance. While OG originally 21 filed this action requesting declaratory relief, dkt. 1, Ubisoft has now filed a motion for TRO 22 and Preliminary Injunction requesting the court enjoin the release of Get Up and Dance prior 23 to its scheduled release on November 1, 2011.1 Dkt. 13. 24 Ubisoft claims OG has violated its copyrights and trade dress in Just Dance by 25 copying unique protectable expression in the game, specifically in two key visual elements 26 that Ubisoft argues distinguish the Just Dance series from other dance-based video games on 27 the market � the �avatar� and �instructor� elements. The �avatar� is the central dancing 28 1 It appears there is a dispute over the release date. OG states in its Opposition the product release is scheduled for November 8, 2011. Opp�n at 23. 1 figure that represents the player, and the �instructor� relays the Just Dance moves to the 2 player. The Court held a hearing on October 24, 2011. Since the Court does not find Ubisoft 3 4 has satisfied the four elements required to grant injunctive relief, the Court DENIES the 5 motion for a temporary restraining order and preliminary injunction. 6 I. 7 FACTUAL BACKGROUND Ubisoft is the third largest independent video game publisher in the U.S. and has sold 8 hundreds of millions of video games in its portfolio of 20 different franchises during its 25- 9 year history. Declaration of Andrew Chang in support of Motion for Preliminary Injunction United States District Court For the Northern District of California 10 (�Chang Decl.�) (dkt. 15) Exs. A, B. Ubisoft�s portfolio includes a variety of dance video 11 games, including Dance on Broadway, Michael Jackson Experience, Smurfs Dance Party, 12 and the Just Dance series. Declaration of William Sloan Coats in support of Plaintiff�s 13 Opposition to Motion for Preliminary Injunction (�Coats Decl.�) (dkt. 25) Ex. F. Ubisoft�s 14 Just Dance games have been sold since 2009. Chang Decl. Ex. D ¶ 2. 15 OG is a recent entrant to the U.S. Video game market. Collectively, OG International 16 Ltd. and its U.S. subsidiary O-Games Inc. have a total of nine employees. Declaration of 17 James Scott in support of Opposition to Motion for Preliminary Injunction (�Scott Decl.�) ¶ 18 4. OG�s best-selling games, My Make-Up, has had limited sales (78,000 units), and OG does 19 not have any direct accounts at any of the major video game retail chains. Scott Decl. ¶ 5. 20 OG states it decided to create a franchise focused on dancing and singing video games in 21 December 2010, recognizing the popularity of dancing, fitness, and singing video games. 22 Scott Decl. ¶ 17. It ultimately chose to launch separate products focused on those activities: 23 Get Up and Dance and Get Up and Sing. Id. OG states the unique feature of Get Up and 24 Dance is that the background is comprised of official music videos, a core concept of the 25 game not found in any other dance video game on the market. Id. 26 In the dance game genre, there are mainly three different types of dance video game 27 sub-genres: (a) rhythm-based games, (b) dance mat games, and (c) instructional-based 28 games. Scott Decl. ¶ 8. Rhythm-based games require the player to press a sequence of 2 1 buttons or move the controller in a basic sequence of moves (left, right, up, down, shake, 2 etc.), usually in time to the music. Id. ¶ 9. These basic moves are rhythmical reactions by 3 the player rather than dance moves. Id.2 Dance mat games can only be played with a dance 4 mat, which lies on the floor and has 8 direction pads, such as Dance Dance Revolution. Id. ¶ 5 10. The player receives a set of sequences/moves, which correspond to specific symbols in 6 different sections of the dance mat and the player must move her feet and press down on the 7 correct pads, in the correct sequence. Id. The player does not copy or follow the avatar. 8 Just Dance and Get Up and Dance are instructional-based dance games. Such games include a main dancer avatar whose dance moves are followed and imitated by the player. 10 United States District Court For the Northern District of California 9 Scott Decl. ¶ 11. These types of games are normally developed with real choreographies 11 performed by real dancers. Id. The dancers are either filmed separately and then modeled 12 into the game, or they are motion-captured and then made into character models which are 13 modeled into the game. Id. 14 The type of dance game sub-genre dictates what type of characters can be used in the 15 game: (a) animated characters, (b) motion-captured characters, and (c) characters derived 16 from choreographed dancers. Both Just Dance and Get Up and Dance use characters derived 17 from choreographed dancers, as do many of the other instructional-based dance games. Id. 18 ¶¶ 14-15 & Ex. A. 19 In early 2011, OG hired video game developer, Gusto Games, to create the Get Up 20 and Dance game. Declaration of Mark Mainey in support of Opposition to Motion for 21 Preliminary Injunction (�Mainey Decl.�) (dkt. 27) ¶ 5. Since OG wanted music videos in the 22 background, the dancers in the game needed to appear more realistic in the fluidity of their 23 moments and thus, Gusto Games decided to film live dancers against a green screen instead 24 of using motion capture technology. Id. ¶ 6; Scott Decl. ¶ 20. During testing and the filming 25 process, Gusto realized the dancers needed to wear heavy white make-up in order to mitigate 26 shadows on their faces, as well as perspiration resulting from the bright lights illuminating 27 28 2 Examples of rhythm-based games include Boogie, Dancing With the Stars, and Dance Sensation. Scott Decl. ¶ 9. 3 1 the performance, in order to create the desired flat visual style. Mainey Decl. ¶¶ 12-16. OG 2 and Gusto state they ultimately decided to proceed with white skin on the dancers in order to 3 create a more striking contrast against the rest of the cements of the game: (1) the 4 background for the dancers was already black; (2) the music videos included a myriad of 5 colors against which white would stand out more; and (3) OG wanted to be able to have the 6 dancers wear black clothing, a common clothing color choice in music videos. Mainey Decl. 7 ¶ 19; Scott Decl. ¶ 21. Get Up and Dance was announced at the Electronic Entertainment Expo (E3), an 9 annual video game conference held at the Los Angeles Convention Center in June 2011. 10 United States District Court For the Northern District of California 8 Coats Decl. Ex. C; Scott Decl. ¶ 26. Following the convention, articles on the new game 11 appeared on internet gaming sites. Coats Decl. Ex. C. In August 2011, Ubisoft began 12 corresponding with OG regarding its claims of copyright and trade dress infringement. 13 Answer and Counterclaims at 3, ¶ 2. Ubisoft stated it would file suit no later than October 14 11, 2011. Id. at ¶ 3. OG then filed suit for declaratory judgment on October 7, 2011. 15 Ubisoft then filed this motion for temporary restraining order and preliminary injunction. 16 II. 17 LEGAL STANDARD The standard for issuing a preliminary injunction is well established, and mirrors that 18 for a temporary restraining order. Stuhlberg Int�l Sales Co., Inc. v. John D. Brush & Co., 19 Inc., 240 F.3d 832, 839 n.7 (9th Cir. 2001). �[I]njunctive relieve [is] an extraordinary 20 remedy that may only be awarded upon a clear showing that the [movant] is entitled to such 21 relief.� Winter v. Natural Res. Defense Council, Inc., 555 U.S. 7, 22 (2008). The party 22 seeking relief must demonstrate that: (1) it is likely to succeed on the merits; (2) it is likely to 23 suffer irreparable harm absent relief; (3) the balance of equities tips in its favor; and (4) the 24 requested relief is in the public interest. Id. at 20. Under the Ninth Circuit�s �sliding scale� 25 approach, the first and third elements can be balanced such that �serious questions� going to 26 the merits and a balance of hardships that �tips sharply� towards the movant is sufficient so 27 long as the other two elements are met. Alliance for the Wild Rockies v. Cottrell, 632 F.3d 28 1127, 1134-35 (9th Cir. 2011). 4 1 Copyright infringement requires showing that (1) movant owns copyrights and (2) 2 respondent has created an authorized copy. Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 3 206 (9th Cir. 1988). Proof of copying requires showing (1) access to the protected work 4 before creating the accused work and (2) that a substantial similarity of expression exists 5 between the protected and accused works. Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 6 1989). The Ninth Circuit applies a two-part test to assess similarity, an �extrinsic� inquiry to 7 determine whether the similar elements between the works are protectable, and an �intrinsic� 8 inquiry to determine whether an ordinary reasonable observer would consider the 9 copyrighted and challenged works substantially similar. Mattel, Inc. v. MGA Entm�t, Inc., United States District Court For the Northern District of California 10 616 F.3d 904, 913-14 (9th Cir. 2010). 11 Trade dress �refers to the �total image of a product� and may include features such as 12 size, shape, color, color combinations, texture or graphics.� Int�l Jensen, Inc. v. Metrosound 13 U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). A plaintiff may recover for trade dress 14 infringement if the trade dress is both nonfunctional and distinctive, and if there is a 15 likelihood that the public would confuse the alleged infringer�s trade dress with that of the 16 plaintiff. Id. at 823. The Ninth Circuit considers four factors to assess functionality: �(1) 17 whether the design yields a utilitarian advantage, (2) whether alternative designs are 18 available, (3) whether advertising touts the utilitarian advantages of the design, and (4) 19 whether the particular design results from a comparatively simple or inexpensive method of 20 manufacture.� Disc Golf Ass�n v. Champion Discs, 158 F.3d 1002, 1006 (9th Cir. 1998). 21 Courts may consider the following relevant factors to assess the inherent distinctiveness of 22 the trade dress: (1) whether the design is a common, basic shape or design and (2) whether it 23 was unique or unusual in a particular field. Fiji Water Co., F. Supp. 2d at 1176. 24 Courts may consider eight Sleekcraft factors in assessing likelihood of confusion: (1) 25 similarity of the conflicting designations; (2) relatedness or proximity of the two companies� 26 products or services; (3) strength of trade dress; (4) marketing channels used; (5) degree of 27 care likely to be exercised by purchasers in selecting goods; (6) OG�s intent in selecting its 28 5 1 designation; (7) evidence of actual confusion; and (8) likelihood of expansion in product 2 lines. Interstellar Starship Servs. v. Epix, Inc., 184 F.3d 1107, 1110 (9th Cir. 1999). 3 III. 4 DISCUSSION Ubisoft has failed to make a clear showing that it is entitled to such extraordinary 5 relief. While its claims are not implausible, it is has not demonstrated a clear likelihood of 6 success on the merits, nor a clear showing of irreparable harm. Moreover, the balance of the 7 hardships do not clearly favor Ubisoft, thus even serious questions on the merits are not 8 sufficient to grant injunctive relief. 9 United States District Court For the Northern District of California 10 11 A. Likelihood of Success on the Merits 1. Copyright Infringement Claim Ubisoft appears to own the copyrights in the Just Dance series of games, as they were 12 created by its employees as �works for hire� and it has registered the copyrights in Just 13 Dance and Just Dance 2 (though not, it appears, in Just Dance 3, which was released 14 recently). 17 U.S.C. § 101, 201(b); Chang Decl. Ex. K. 15 Proof of copying requires a showing (1) that OG had access to the protected work 16 before creating the accused work and (2) that a substantial similarity of expression exists 17 between the protected and accused works. Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 18 1989). Access to Just Dance series existed because the works were widely distributed. 19 Three Boys Music Corp. v. Bolton, 212 F.3d 477, 482 (9th Cir. 2000). OG does not concede 20 a high degree of access. Opp�n at 8 n.2. 21 The Ninth Circuit applies a two-part test to assess to �distinguish between permissible 22 lifting of ideas and impermissible copying of expression.� Mattel, Inc v. MGA Entm�t, Inc., 23 616 F.3d 904, 913 (9th Cir. 2010). The test includes an �extrinsic� inquiry to determine 24 whether elements between the works are protectable, and an �intrinsic� inquiry to determine 25 whether an ordinary reasonable observer would consider the copyrighted and challenged 26 works substantially similar. Id. at 913-14. The starting point is to determine the breadth of 27 possible expression, and if there is a wide range of possible expression, �a work will infringe 28 if it�s substantially similar to the copyrighted work.� Id. If there is a narrow range of 6 1 possible expression, then copyright protection is thin and a work must be virtually identical 2 to infringe. Id. 3 a. Extrinsic Inquiry 4 Ubisoft argues the �avatar� and �instructor� elements of its games are unique 5 expressions of the avatar and instructor ideas that are entitled to broad protections because 6 there is a wide range of possible expressions for those general ideas. See Mattell, 616 F.3d at 7 913-14. OG counters that there is only a narrow range of expression of avatars and 8 instructors in an instructional-based dance video game, and thus, the �virtually identical� 9 standard should apply. Alternatively, OG argues Ubisoft fails to demonstrate the avatars and United States District Court For the Northern District of California 10 11 instructors meet the substantial similarity standard as well. Ubisoft compares its unique expression of the avatar and instructor ideas to the case of 12 the �gobbler� and �ghost monsters� in the PAC-MAN game, which were found to be 13 protectable elements of expression entitled to broad protection. Atari, Inc. v. North 14 American Philips Consumer Electronics Corp., 672 F.2d 607, 616-620 (7th Cir. 1982). In 15 Atari, the Court held that general elements such as a maze, scoring table, tunnel exits, were 16 standard game devised only protected from identical copying, but the unique expressions of 17 PAC-MAN like the �gobbler� pursuing �ghost monsters� were entitled to broad protection. 18 Ubisoft argues Atari applies here, in that competing video games in the dance genre (other 19 than Get Up and Dance) have used several different ways to express the �avatar� and 20 �instructor� elements, and thus, they should be given broad protection. 21 OG argues that the white-skinned, brightly clothed avatars and stick-figure instructors 22 are not protectable expressions of ideas, but rather features that necessarily flow from the 23 idea of an instructional-based dance video game. OG argues the type of avatar depends 24 heavily on the type of dance game because in instructional-based games the avatars are 25 usually based on real-life choreographed human dancers, in contrast to other types of games. 26 OG argues the situation here is similar to that in Data East USA, Inc. v. Epyx, Inc., 862 F.2d 27 204, 206 (9th Cir. 1988), rather than Atari. In Data East, the Ninth Circuit held that generic 28 features that necessarily followed from the idea of a karate combat video game and that were 7 1 standard treatment of the karate sport � such as common moves of the sport, the manner of 2 scoring, limitations upon the use of color in one visual image, and the use of special 3 techniques for creating mobile graphic computer images � are not protectable under 4 copyright law. 862 F.2d at 209. OG argues the realistic depiction of dance in the 5 instructional-based dance video game context is subject to certain constraints that dictate the 6 use of elements common to such games. For example, the use of avatars with white skin and 7 bright clothing to stand out against a background so as to be readily followed by the player, 8 and the use of stick figures to demonstrate upcoming dance moves, are common features of 9 such games. United States District Court For the Northern District of California 10 OG also argues Atari is inapplicable because Pac-man featured monsters and other 11 creatures of fantasy. OG argues there are countless ways to express fanciful monsters, 12 countless ways to express monsters� movements, and countless ways for a player to earn 13 points based on monster chases. Yet, there are only a limited number of ways to express 14 dancers dancing in a non-animated, instructional-based dance video game. Like karate, OG 15 argues, dance is �not susceptible to a wholly fanciful presentation.� Data East, 862 F.2d at 16 209. Ubisoft responds that the features at issue in Data East were not aesthetic design 17 choices but rather were necessary aspects of karate games, id., and thus not analogous to the 18 avatars and instructors at issue here. 19 OG also argues the Ubisoft cannot copyright white skin and brightly colored clothing 20 of the avatars. OG argues the use of one color versus another is inherently uncopyrightable. 21 37 C.F.R. § 202.1 (�[E]xamples of works not subject to copyright [include] . . . mere 22 variations of . . . color�); see also Pasillas v. McDonald�s Corp., 927 F.2d 440, 443 (9th Cir. 23 1991) (finding use of a white color to depict the man on the moon was not a protected 24 element because it was a commonly used color for man on the moon drawings). OG also 25 argues the use of bright colors to present a product in a fun and whimsical light is not 26 copyrightable expression. See Excelligence Learning Corp. v. Oriental Trading Co., Inc., 27 2004 WL 2944048, at *12 (N.D. Cal. Dec. 20, 2004) (finding, in the context of catalogs, that 28 a company does not have a copyright in featuring the use of whimsy and bright colors). 8 1 Ubisoft argues that it is not attempting to copyright the color white or bright colors for 2 clothing individually, but rather as expressive element parts of its avatars. Reply at 4-5. It 3 argues OG is improperly defining the �idea� versus �expression� element too narrowly in an 4 attempt to cast the use of white and bright colors as an idea, rather than an element of the 5 expression of the idea of an avatar. See Midway Mfg. Co. v. Bandai-America, Inc., 546 F. 6 Supp. 125 (D.N.J. 1982) (�[A] copyright defendant could always avoid liability merely by 7 describing a plaintiff�s work in great detail and then labeling that description the �idea� of 8 plaintiff�s work.�). 9 Neither of the main cases is exactly on point, at least with respect to the avatars. United States District Court For the Northern District of California 10 While the avatars are not as limited in scope as certain set karate moves, they are also not 11 susceptible to the endless variety possible in depicting ghosts or monsters given the technical 12 constraints and requirements of the game. While the avatars are not susceptible to the 13 endless variety possible for elements that are wholly fanciful, the Court finds preliminarily 14 that the avatars are entitled to broader protections, and thus only need to be substantially 15 similar. 16 The instructors are another matter. First, OG argues Ubisoft cannot copyright the use 17 of stick figures as instructors. Opp�n at 7, citing Blehm v. Jacobs, No. 09-2865, 2011 WL 18 4369051 (D. Colo. Sept. 19, 2011). In Blehm, the Court held �[s]tick figures are by 19 definition simple.� Id. at *5, citing Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 20 (3d Cir. 1975) (stating that the use of stick figures involves only �minimal amount of 21 creativity�). In addition, similarities resulting from common themes and general concepts 22 such as the idea of a person skateboarding, playing frisbee, or holding his hand in a peace 23 sign are excluded from protection, as are poses to the extent such poses are suggested by the 24 activities themselves. Id. Thus, while OG�s argument that any claim of infringement based 25 on stick figures fails as a matter of law is an overstatement, given the simple nature of the 26 shapes, the fact that there are a limited range of possible dance movements, and that the 27 poses of the instructors are suggested by the activities themselves, the Court finds the 28 instructors are entitled only to very thin protection. This is underscored by the fact that 9 1 several of the other instructional-based dance video games use very similar stick-figure type 2 instructors. See Coats Decl. Ex. I (screen shots from Dancestar Party, Country Dance, and 3 Dance Central using very similar stick figure instructors). The examples Ubisoft points to 4 that do not use very similar stick figures are from other types of dance genres, and thus, not 5 relevant. 6 7 b. Intrinsic Inquiry In the intrinsic test the Court focuses on the key protectable elements (here avatars) to 8 determine whether an ordinary reasonable observer would consider the copyrighted and 9 challenged works substantially similar or virtually identical. Brown Bag Software v. United States District Court For the Northern District of California 10 Symantec Corp., 960 F.2d 1465, 1476 (9th Cir. 1992). Ubisoft argues Get Up and Dance is 11 substantially similar because both works include avatars that are partially silhouetted stylized 12 dancers with white skin and bright clothing and virtually identical stick figure instructors. 13 Mot. at 15. Ubisoft argues that in comparison to the way avatars are depicted in other, 14 competing games, demonstrates how similar OG�s use of the partially silhouetted, white- 15 skinned, and brightly clothed avatars are to the Just Dance avatars. See Mot. at 13 (pictures 16 of avatars from three other dance video games); Mot. at 15 (comparison pictures of Just 17 Dance and Get Up and Dance avatars and instructors). 18 19 i. Avatars OG responds that there are substantial differences in the avatars, particularly when 20 viewed in context of entire screen shot of the two games. See Opp�n at 10-11 (comparison of 21 two full screen shots); Coats Decl. Ex. A. OG provides a chart of what it characterizes as the 22 �key differences� between the avatars: including size, prominence on screen, bright versus 23 flat color, ombre versus constant color, use of black, facial features washed out or 24 emphasized, �fun� versus �sophisticated� look, and standard background versus official 25 music video background. Opp�n at 11. Thus, OG argues that based on the many enumerated 26 differences the avatars are not substantially similar. While some of these characteristics are 27 tangential to the issue, others are compelling. The Court finds the avatars are not 28 substantially similar because: the size and prominence, and thus, the overall appearances are 10 1 different; the color choices and flat versus ombre use of colors are different; the use of facial 2 features instead of washed out features are different; and the heavy use of black is different. 3 See Coats Decl. Ex. A. It is true that the avatars do have some elements in common, and 4 perhaps more elements in common than some of the other games, but Ubisoft has not clearly 5 demonstrated a likelihood that they are substantially similar � particularly given the 6 functional reasons for some of the choices, such as the use of white skin. See Scott Decl. ¶ 7 21. ii. 8 Instructors OG argues its instructors are not virtually identical to Ubisoft�s instructors because 9 United States District Court For the Northern District of California 10 they are pale, flatly colored, and placed along the left side of the screen. Opp�n at 11. In 11 contrast, the Just Dance instructors are outlined in neon/glowing white and placed along the 12 bottom of the screen. Id. Given that the stick-figure instructors are entitled only to thin 13 protection, that other similar games use very similar instructors, and that they are not 14 virtually identical, there is not a likelihood of success on the claim of infringement with 15 regard to the instructors. iii. 16 Independent Creation Finally, OG argues its independent creation of the avatars and instructors is a 17 18 complete defense to any alleged infringement. Blehm, 2011 WL 4369051, at *2 19 (�Independent creation is a complete defense to a claim of copyright infringement.�), citing 20 Whelan Assocs. v. Jaslow Dental Lab, Inc., 797 F.2d 1222, 1228 n.7 (3d Cir. 1986). OG 21 argues it independently developed the avatars and instructors in accordance with the 22 developers� unique vision and desired core concepts for the game. Opp�n at 12; Scott Decl. 23 ¶¶ 11-22. Ubisoft challenges this contention as not supported by anything but �rote denials� 24 and irrelevant facts. Reply at 2-3. As the Court finds that there is not a clear likelihood that 25 the elements are substantially similar or virtually identical, it need not reach the merits of this 26 issue at this time. At the least though, it appears OG provides a reasonable explanation of 27 independent creation that would undermine the likelihood of success on the merits of this 28 claim. 11 1 Thus, given the above, the Court finds Ubisoft has not demonstrated a likelihood of 2 success on the merits on the copyright claim sufficient to support a preliminary injunction. 3 2. Trade Dress Claim 4 Trade dress �refers to the �total image of a product� and may include features such as 5 size, shape, color, color combinations, texture or graphics.� Int�l Jensen, Inc. v. Metrosound 6 U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). A plaintiff may recover for trade dress 7 infringement if the trade dress is both nonfunctional and distinctive, and if there is a 8 likelihood that the public would confuse the alleged infringer�s trade dress with that of the 9 plaintiff. Id. at 823. Ubisoft argues its trade dress (the expression of avatars and instructors) United States District Court For the Northern District of California 10 is nonfunctional because it is not essential to the use or purpose of the games. TrafFix 11 Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001). 12 The Ninth Circuit considers four factors to assess functionality: �(1) whether the 13 design yields a utilitarian advantage, (2) whether alternative designs are available, (3) 14 whether advertising touts the utilitarian advantages of the design, and (4) whether the 15 particular design results from a comparatively simple or inexpensive method of 16 manufacture.� Disc Golf Ass�n v. Champion Discs, 158 F.3d 1002, 1006 (9th Cir. 1998). 17 Ubisoft argues the avatars and instructors are nonfunctional because the particular expression 18 of the characters provide no utilitarian advantage as they serve no purpose beyond 19 identifying the games as part of the Just Dance franchise, nor does Ubisoft tout any such 20 advantage (factors 1 and 3). See Fiji water Co., LLC v. Fiji Mineral Water USA, LLC, 741 21 F. Supp. 2d 1165, 1173 (C.D. Cal. 2010) (utilitarian advantage based on aesthetic elements 22 where consumer driven to purchase product based on how it looks). As to the second 23 element, Ubisoft argues the other games on the market demonstrate alternative designs are 24 available. Finally, Ubisoft argues the technology used to create the visual elements should 25 differ little in expense from many alternatives currently on the market. 26 OG responds that the expressions of the avatars and instructors are functional. First, 27 OG argues the use of white skin on the avatars and instructors provides a utilitarian 28 advantage in terms of visibility and in the filming process. Opp�n 13-14. �A product feature 12 need only have some utilitarian advantage to be considered functional.� Disc Golf Ass�n, 2 Inc., 158 F.3d at 1007. OG argues the white skin of the avatars serves a functional purpose 3 and provides Just Dance with a utilitarian advantage because white skin stands out from the 4 typically dark backgrounds of dance games that are broken up by pops of color or bright, 5 color-saturated backgrounds. Coats Decl. Ex. G. OG states it chose white skin for this very 6 functional, utilitarian reason. Mainey Decl. ¶ 18; Scott Decl. ¶ 21. In addition, color may be 7 functional, particularly when there is a limited range of available colors to use in the first 8 place, as there is here when depicting skin tone. See First Brands Corp. v. red Meyer, Inc., 9 809 F.2d 1378, 1382 (9th Cir. 1987). Ubisoft responds that since other games have achieved 10 United States District Court For the Northern District of California 1 success without this element, it is not functional. Reply at 8. Since features only need some 11 utilitarian advantage, and the white skin does provide some advantage, the Court finds the 12 expression element of the avatars functional. 13 As for the instructors, OG argues they provide a utilitarian advantage because thy 14 provide step-by-step moves to users seeking to learn the dances, and allow users to see how 15 and when they need to move each part of their body. The Court finds the instructors are 16 functional, particularly since the other instructional dance video games that are most similar 17 to the two at issue here mostly use stick figure instructors to demonstrate how the user should 18 move each part of their body. Coats Decl. Ex. I. 19 In addition, the examples of viable alternative designs Ubisoft points to come in part 20 from games with distinguishable source material and goals. For example, some of the games 21 are rhythm-based games, or games aimed at small children, or dance-mat games. In addition, 22 Ubisoft does not provide evidence demonstrating that the avatar and instruction design used 23 by other dance video games have allowed them to compete effectively with Just Dance. See 24 Disc Golf Ass�n, 158 F.3d at 1009. The existence of some alternative designs does not 25 demonstrate the design is non-functional, particularly when the great majority of similar 26 games use virtually identical instructors. 27 28 OG argues Ubisoft touts the utilitarian advantage of the instructors because it states the games will allow users to �follow on-screen choreographed moves� and other statements 13 1 that rely upon the use of the instructor design element. Finally, OG argues Ubisoft has not 2 demonstrated that the avatar and instructor designs were not simpler or more inexpensive to 3 create than alternative designs. The Court finds the elements are functional. Since the 4 elements are functional, it is not necessary to examine the other elements of a trade dress 5 claim, distinctiveness and likelihood of confusion. Thus, the Court finds Ubisoft is not likely 6 to succeed on the merits of the trade dress claim. 7 B. Irreparable Harm 8 Ubisoft argues it will suffer irreparable harm from the release of Get Up and Dance because of the market dynamics and franchise status of Just Dance. Market dynamics in the 10 United States District Court For the Northern District of California 9 video game industry are driven in part by game bestseller lists, which are often reviewed by 11 new customers looking to purchase a game. Chang Decl. Ex D ¶ 14. For example, when 12 existing franchise customers buy Just Dance 3, it will trend toward the top of various game 13 bestseller lists, which a new customer turns to in deciding what game to buy. Id. Thus, 14 Ubisoft argues that every sale of Get Up and Dance that would have gone to Just Dance 15 negatively impacts Just Dance�s market momentum and associated ability to attract new 16 customers to the franchise, and thus, the loss of new customers has a greater impact than the 17 loss of the sale of one game. Id. Ubisoft argues this is exacerbated by the franchise status of 18 Just Dance because customers who buy one game from the series often return to buy other 19 existing and/or future games in the series. Id. ¶ 15. For example, with the release of Just 20 Dance 3, the other two titles have resurged in parallel into the top 15 best selling Wii games. 21 Chang Decl. Ex. J. Thus, Ubisoft argues it is not possible to calculate the true extent of 22 damages from the loss of a sale. 23 In addition, Ubisoft argues that the fact that Get Up and Dance will be sold for $10 24 less than the Just Dance series and may thus pull customers away because it is cheaper is an 25 incalculable harm and threatens price erosion. See Mint, Inc. v. Iddi Amad, No. 10-9395, 26 2011 WL 1792570 (S.D.N.Y. May 9, 2011) (enjoining copyright infringement, in part, 27 because price erosion constituted irreparable harm). 28 14 1 There is no presumption of irreparable harm for purposes of injunctive relief in 2 copyright cases. Flexible Lifeline v. Precision Lift, No. 10-35987, 2011 WL 3659315, at *9 3 (9th Cir. Aug. 22, 2011). The party seeking a preliminary injunction must establish �a 4 significant threat of irreparable injury.� Cal. Apartment Ass�n v. San Diego County 5 Apartment Ass�n, Inc., No. 11-300, 2011 WL 1002667, at *2 (S.D. Cal. March 18, 2011. 6 �The fact that alleged harm is primarily in the form of lost customers and business goodwill, 7 which at least in theory may be compensated by damages, weighs against [a] claim of 8 irreparable harm.� TMX Funding, Inc. v. Impero Techs., Inc., No. 10-0202 JF, 2010 WL 9 1028254, at *8 (N.D. Cal. March 18, 2010), citing Sampson v. Murray, 415 U.S. 61, 90 United States District Court For the Northern District of California 10 (1974) (�The possibility that adequate compensatory or other corrective relief will be 11 available at a later date, in the ordinary course of litigation, weighs heavily against a claim of 12 irreparable harm.�). 13 Still, other cases have relied on such elements. In Stuhlberg Int�l Sales Co., Inc., 240 14 F.3d at 841, the Court stated that �[e]vidence of threatened loss of prospective customers or 15 goodwill certainly supports a finding of the possibility of irreparable harm.� Yet, that case 16 involved an injunction that would allow the release of goods from customs to customers who 17 had already ordered those goods, and without the injunction, would not receive goods they 18 had ordered. Id. That is much more concrete than the rather speculative claims made here. 19 Thus, the Court finds Ubisoft has not demonstrated a significant threat of irreparable injury. 20 C. Balance of Hardships 21 Ubisoft argues that OG assumed any harm when they chose to copy Ubisoft�s 22 protectable expression. It argues that the many competitors in the marketplace that do not 23 use Ubisoft�s intellectual property demonstrate OG could have easily avoided infringement 24 by not incorporating Ubisoft�s prominent visual features. 25 OG argues it would be disproportionately harmed by a preliminary injunction because 26 it is a much smaller company and a relatively recent entrant into the U.S. video game market. 27 Scott Decl. ¶ 6. OG states it will lose prospective significant sales and customers and the 28 ability to gain a foothold in the market for instructional-based dance video games because if 15 it misses its set launch date it will miss the Christmas shopping season. OG argues an 2 injunction will prevent it from releasing its highly-anticipated product at a critical time of the 3 year, when consumer shopping will reach its peak. Scott Decl. ¶¶ 27-28. Missing the 4 product launch date for its first big-name game could �deal a potentially fatal blow to OG�s 5 relationship with its U.S. customers, who are relying on the November 8th product release 6 date.� Opp�n at 23. Thus, it argues that while it is only speculative that Ubisoft might lose 7 some sales or market share without an injunction, with an injunction OG will lose significant 8 sales and revenue. Moreover, OG argues Ubisoft was or should have been aware of Get Up 9 and Dance since the E3 convention in June 2011, and chose to wait till the eve of the game�s 10 United States District Court For the Northern District of California 1 release to move for injunctive relief. Thus, it argues the harm cannot be what it alleges, or it 11 would have acted far sooner. Rather, OG argues the goal is to disrupt OG�s ability to market 12 its game during the rapidly approaching holiday season. Given the speculative nature of 13 Ubisoft�s alleged harms, the Court finds the balance does not sharply in Ubisoft�s favor. 14 D. Public Interest 15 Protecting copyrights and avoiding consumer confusion is in the public interest. 16 Warner Bros. Entm�t, Inc. v. WTV Sys., Inc., � F. Supp. 2d �, 2011 WL 4001121 (C.D. 17 Cal. Aug. 1, 2011); Caesars World, Inc. v. Milanian, 247 F. Supp. 2d 1171, 1205 (D. Nev. 18 2003). Yet, this is when infringement has been established as likely. Here, the Court finds 19 there is not a clear likelihood of success on these claims. In such a situation, public policy 20 can favor competition, where a preliminary injunction could be very harmful to a small 21 company and reduce the number of options for consumers. See SRI Int�l v. Acoustic 22 Imaging Techs. Corp., No. 92-5015, 1993 WL 356896, at *4 (N.D. Cal. Sept. 3, 1993) 23 (�[P]ublic interest is also served by promoting competition, free from judicial intervention 24 that is improvident or warranted by only insubstantial grounds.�). Thus, where Ubisoft has 25 not shown a clear likelihood of success on the merits, nor a strong demonstration of 26 irreparable harm and balance of the hardships, the Court determines an injunction would not 27 be in the public interest. 28 // 16 1 2 3 4 IV. CONCLUSION For the foregoing reasons, the Court DENIES the temporary restraining order and preliminary injunction. IT IS SO ORDERED. 5 6 7 CHARLES R. BREYER UNITED STATES DISTRICT JUDGE Dated: October 26, 2011 8 9 United States District Court For the Northern District of California 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 17