In the

United States Court of Appeals

For the Seventh Circuit

____________

No. 03-3785

INCREDIBLE TECHNOLOGIES, INC.,

Plaintiff-Appellant,

v.

VIRTUAL TECHNOLOGIES, INC. d/b/a GLOBAL VR,

Defendant-Appellee.

____________

Appeal from the United States District Court for

the Northern District of Illinois, Eastern Division.

No. 03 C 1183—Matthew F. Kennelly, Judge.

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ARGUED SEPTEMBER 13, 2004—DECIDED MARCH 15, 2005

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Before BAUER, RIPPLE, and EVANS, Circuit Judges.

EVANS, Circuit Judge. As anyone who plays it knows, golf

can be a very addicting game. And when real golfers want

to tee-it-up, they head for their favorite course, which might

be a gem like Brown Deer in Milwaukee, a public course

that nevertheless plays host to an annual PGA Tour event

every July. What most golfers do not do when they want to

play 18 is head for a tavern. Also, most people are quite

familiar with Tiger Woods. But who knows Jeff Harlow of

Florissant, Missouri? This case is about “golfers” who prefer

taverns to fairways and aspire to be more like Harlow than

Tiger. Our case concerns video golf.
2 No. 03-3785

1 The version we will be discussing is Golden Tee Fore!, which IT

started selling in February 2000.

Golden Tee,1 made by Incredible Technologies, Inc. (IT),

is an incredibly successful video golf game, one of the most

successful coin-operated games of all time, beating all kinds

of classic games like PAC-MAN and Space Invaders. Forty

thousand Golden Tee games (in a dedicated cabinet) were

sold between 1995 and August 2003. The game can be found

in taverns all over America and in other countries as well.

IT spends millions on advertising, and the game generates

huge profits in return.

Golden Tee is played by thousands, and the Harlow chap

we mentioned, according to a November article in the St.

Louis Post-Dispatch, just won the 3rd Annual Golden Tee

World Championship in Orlando, Florida. Harlow pocketed

$15,000 for the effort (not enough though, the paper reports,

for him to give up his day job as a baker at a bagel factory).

With money galore tied into the Golden Tee game, the people at IT, understandably, were not happy when PGA

Tour® Golf, made by Virtual Technologies, Inc. (d/b/a

Global VR), appeared on the tavern scene with a competing

game. That’s why we have before us IT’s appeal from the

denial of a preliminary injunction in its copyright/trade

dress case against Global VR.

IT has been manufacturing the Golden Tee game since

1989 and has several copyrights on various versions of the

game. Involved in this appeal are copyrights on the video

game imagery presented on the video display screen and

the instructional guide presented on the control panel. In

addition, there is a claim that the PGA game’s control panel

infringes the Golden Tee’s trade dress.

Golden Tee employs a software program which projects

images and sounds through a video screen and speakers in

a kiosk-like display cabinet. The images are of players and
No. 03-3785 3

golf courses. In front of the screen is a control panel with a

“trackball” in the center, which operates the game. The

“trackball” is a plastic white ball embedded on the game

board. Approximately 1/4 of the ball is visible to the player.

The rest of the ball is underneath the game board.

To play the game the trackball is rolled back for the

golfer-player’s back swing and pushed forward to complete

the swing. As in real golf, the virtual golfer must choose the

club to be used and, for an accurate shot, consider things

like wind and hazards (indicated on the display screen) on

the course.

Aware of Golden Tee’s popularity, Global VR determined

to create a game that was similar enough to Golden Tee so

that players of that game could switch to its new game with

little difficulty. It obtained a Golden Tee game and delivered

it to NuvoStudios (Nuvo), the firm hired to develop the new

game. NuvoStudios was instructed to design a game that

dropped into a Golden Tee box to work with its controls,

which should correspond as closely as possible to Golden

Tee, so that a Golden Tee player could play the new game

with no appreciable learning curve.

Nuvo worked from the existing software of a computer

golf game—Tiger Woods Golf—and made modifications to

convert from a game, played on personal computers and

operated with a mouse, to an arcade game, operated as is

Golden Tee, with a trackball and buttons. Nuvo essentially

copied, with some stylistic changes, the layout of buttons

and instructions found on the Golden Tee control panel.

Global VR terminated Nuvo’s services before the work on

the new game was completed, but it hired key Nuvo personnel to finish the job. The goal of making it easy for

Golden Tee players to play the new game remained.

The completed new game, PGA Tour Golf, is very similar

to the Golden Tee game. The size and shape of PGA Tour

Golf’s control panel, and the placement of its trackball and

buttons, are nearly identical to those of Golden Tee. The
4 No. 03-3785

“shot shaping” choices are depicted in a similar way and in

the same sequence. Although the software on the two games

is dissimilar, both allow a player to simulate a straight

shot, a fade, a slice, a draw, a hook, etc. by the direction in

which the trackball is rolled back and pushed forward. Although other games, such as Birdie King and Sega’s Virtua

Golf have used trackballs, Golden Tee claims to be the first

to use both a backward and forward movement.

There are also significant differences between the two

games. Golden Tee is played on make-believe courses and

the player is given a generic title, like “Golfer 1.” The PGA

game, on the other hand, uses depictions of real courses,

such as Pebble Beach and TPC at Sawgrass, and it permits

a player to adopt the identity of certain professional

golfers—Colin Montgomerie and Vijay Singh, to name a few.

The cabinets are somewhat different, within the realm of

what is possible in arcade game cabinets, and the games

use different color schemes.

IT filed this lawsuit in February 2003. Its request for a

temporary restraining order was denied, and after expedited

discovery, a 6-day hearing was held on its request for a preliminary injunction. In denying the injunction, the district

court found that Global VR had access to and copied IT’s

original instruction guide and the video display expressions

from Golden Tee. But the court said that IT had not shown

a likelihood of success on the merits of this lawsuit, in part

because (1) IT’s expressions on its control panel are not

dictated by creativity, but rather are simple explanations of

the trackball system; at best, they are entitled to protection

only from virtually identical copying; (2) the video displays

contain many common aspects of the game of golf; and (3)

IT’s trade dress is functional because something similar is

essential to the use and play of the video game.

To obtain a preliminary injunction, a plaintiff must demonstrate a likelihood that it will prevail on the merits of the

lawsuit, that there is no adequate remedy at law, and that

it will suffer irreparable harm without injunctive relief. If
No. 03-3785 5

these requirements are met, the court must then balance

the degree of irreparable harm to the plaintiff against the

harm that the defendant will suffer if the injunction is

granted. Publications Int’l, Ltd. v. Meredith Corp., 88 F.3d

473 (7th Cir. 1996). On appeal, the decision granting or denying a preliminary injunction is reviewed for an abuse of

discretion. A court has abused its discretion when it “commits a clear error of fact or an error of law.” Abbott Labs. v.

Mead Johnson & Co., 971 F.2d 6, 13 (7th Cir. 1992). The

district court’s weighing of the factors is entitled to great

deference. We do not substitute our judgment for that of the

district court.

To establish copyright infringement, a plaintiff must prove

“(1) ownership of a valid copyright, and (2) copying of

constituent elements of the work that are original.” Feist

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

Copying may be inferred where the “defendant had access

to the copyrighted work and the accused work is substantially similar to the copyrighted work.” Atari, Inc. v. North

American Philips Consumer Elecs. Corp., 672 F.2d 607, 614

(7th Cir. 1982); Warner Bros., Inc. v. American Broad. Cos.,

654 F.2d 204 (2nd Cir. 1981). The test for substantial similarity may itself be expressed in two parts: whether the

defendant copied from the plaintiff’s work and whether the

“copying, if proven, went so far as to constitute an improper

appropriation.” Atari, 672 F.2d at 614. Because it is pretty

clear here that Global VR set out to copy the Golden Tee

game, the second question comes closer to the issue we

must face, and it leads us to the “ordinary observer” test:

“whether the accused work is so similar to the plaintiff’s

work that an ordinary reasonable person would conclude

that the defendant unlawfully appropriated the plaintiff’s

protectible expression by taking material of substance and

value.” Atari, 672 F.2d at 614. It seems somehow fitting that

the Atari case, involving the insatiable little yellow circle

PAC-MAN, is a leading case guiding us through the maze

of copyright law as applied to video games.
6 No. 03-3785

In these games, an ordinary observer, seeing a golf game

on the video display and a trackball to operate the game,

might easily conclude that the games are so similar that the

Global VR game must infringe the Golden Tee game. But

because ideas—as opposed to their expression—are not

eligible for copyright protection, see Mazer v. Stein, 347 U.S.

201 (1954), protection does not extend to the game itself.

Atari, 672 F.2d at 615; Chamberlin v. Uris Sales Corp., 150

F.2d 512 (2nd Cir. 1945). For other reasons, which we will

soon discuss, protection does not extend to the trackball. It

is clear, then, that the concept of the ordinary observer

must be viewed with caution in this case, and we must heed

the principle that, despite what the ordinary observer might

see, the copyright laws preclude appropriation of only those

elements of the work that are protected by the copyright.

Atari, 672 F.2d at 614.

In fact, there are several specific limitations to copyright

protection with some relevance to this case. One is the

scènes à faire doctrine. The doctrine refers to “incidents,

characters or settings which are as a practical matter

indispensable, or at least standard, in the treatment of a

given topic.” These devices are not protectible by copyright.

Atari, 672 F.2d at 616. For instance, the mazes, tunnels, and

scoring tables in Atari’s PAC-MAN were scènes à faire.

In addition, the Copyright Act provides that copyright

protection does not extend to any “method of operation . . .

regardless of the form in which it is described, explained,

illustrated, or embodied in such work.” 17 U.S.C. § 102(b).

The Court of Appeals for the First Circuit has declined to

extend copyright protection to a set of commands for a

computer program. Even if there are multiple methods by

which an operation can be performed, a plaintiff’s choice of

a particular method of operation is not eligible for protection. Lotus Dev. Corp. v. Borland Int’l, Inc., 49 F.3d 807

(1st Cir. 1995).
No. 03-3785 7

Useful articles and functional elements are also excluded

from copyright protection. American Dental Ass’n v. Delta

Dental Plans Ass’n, 126 F.3d 977 (7th Cir. 1997). A useful

article is defined in the copyright act as “an article having

an intrinsic utilitarian function that is not merely to portray

the appearance of the article or to convey information.” The

design of a useful article is considered a “pictorial, graphic,

or sculptural work only if, and only to the extent that, such

design incorporates pictorial, graphic, or sculptural features

that can be identified separately from, and are capable of

existing independently of, the utilitarian aspects of the

article.” 17 U.S.C. § 101. The separability issue has caused

considerable consternation. See our recent discussion in

Pivot Point International, Inc. v. Charlene Products, Inc.,

372 F.3d 913 (7th Cir. 2004).

The exclusion of functional features from copyright protection grows out of the tension between copyright and

patent laws. Functional features are generally within the

domain of the patent laws. As we said in American Dental,

an item may be entirely original, but if the novel elements

are functional, the item cannot be copyrighted: although it

might be eligible for patent protection,

[a]n article with intertwined artistic and utilitarian

ingredients may be eligible for a design patent, or the

artistic elements may be trade dress protected by the

Lanham Act or state law.

126 F.3d at 980.

That means that the elements of our two games, which

are most significant and most clearly similar, are not before

us. The trackball system of operating the game is not

subject to copyright protection. Functional features, such as

the trackball system, might, at least potentially might, be
8 No. 03-3785

2 However, as IT acknowledges, Golden Tee was not the first video golf game to use the trackball format, making a patent somewhat unlikely.

eligible for patent protection.2 See American Dental Ass’n,

126 F.3d 977. But that protection would be for a significantly shorter period of time than copyright protection. So

the anomaly is that a party can conceivably obtain more

significant protection for the relatively less significant

aspects of its product. For instance, in this case we are

concerned, not with the trackball system but with things

such as whether arrows pointing to the direction a golf ball

will fly are sufficiently original to merit protection under

the copyright laws.

With this discussion out of the way, we move to the issues

which are before us, as framed by IT. Those issues are

whether the district court erred as a matter of law in

creating a new “best explanation exception” to copyright

protection; whether the district court erred as a matter of

law in finding that the scènes à faire doctrine eliminated

copyright protection for its video game expressions; and

whether the district court erred as a matter of law in concluding that IT’s trade dress in the control panel is functional. In discussing the issues, of course, we are concerned

only with whether the district court abused its discretion in

finding that IT did not have a likelihood of success of

prevailing on the merits of its claims at trial.

IT first contends that the district court misunderstood

how the trackball system works, which led it to commit a

legal error in evaluating the control panel and instructions.

As we said, to operate both games, the trackball is rolled

back toward the player to effectuate the back swing of the

golfer on the video screen and pushed forward to complete

the down swing. Directions on the control panel show how

to make various shots, such as a draw, a fade, etc., by
No. 03-3785 9

changing the angle at which the trackball is rolled back and

forward. Nine specific shots are shown on the video display.

The district court referred to “the” 9 different shot examples

shown on the control panel. This, IT contends, shows that

the district court thought that the 9 shots were the only

possible shots when, in fact, subtle variations exist so that

many more than 9 shots are available.

This fundamental misunderstanding, IT says, led the district court to a legal error. As IT puts it in a heading in its

brief, the “district court erred as a matter of law in creating

a revolutionary new ‘best explanation’ exception to copyright

protection.” The result of the new exception would be that

the “ ‘best’ physics textbook would have no copyright

protection and could be freely copied, simply because it is

the ‘best.’ ” That argument certainly grabs one’s attention:

What was the district judge thinking?

As it turns out, we need not be hysterical about district

judges creating random exceptions to the copyright laws.

The district judge here, Matthew F. Kennelly, concluded

that the instructions on the control panel were not creative

expressions and that there was “no evidence in the record

to suggest that IT considered anything other than how best

to explain its trackball system when it designed the text and

instructional graphics featured on Golden Tee.” It is from

this rather innocuous statement that IT says the judge created a wholly new exception. We disagree with that interpretation. In context, it seems clear that what the judge was

saying is that while there arguably are more ways than one

to explain how the trackball system works, the expressions

on the control panel of Golden Tee are utilitarian explanations of that system and are not sufficiently original or creative to merit copyright protection. Furthermore, the judge

said, to the extent they might be subject to a copyright, they

would merit protection only against virtually identical

copying.
10 No. 03-3785

What IT is talking about on the control panel are the following: a horizontal graphic which shows the trackball

motions used to control the flight path of the ball and small

indicating arrows above the graphic; three white buttons of

the left side of the trackball and two buttons, one red, one

white, on the right of the trackball; and the textual instructions in the bottom right corner. Undoubtedly, there is

similarity between the two games in the instructions on the

control panel as well as in the layout of the controls themselves.

As to the instructions, we cannot say that the district judge

abused his discretion in finding that the element of creativity is slight and can be protected only against identical

copying, which does not exist. The element of creativity

in the instructions is less than minimal. Both games use

arrows to indicate the direction in which to roll the trackball in order to obtain certain results. While it is possible

that something other than an arrow could have been used

to indicate direction, use of an arrow is hardly imaginative

or creative in this situation. Also, the designs of the arrow

surrounding the trackball differ significantly in the two

games as do the graphics showing shot-shaping possibilities.

To a large degree, the layout of the controls seems to have

been dictated by functional considerations. The trackball

almost necessarily must be in the center of the control panel

so that right- and left-handed players can use it equally

well. It must not be so close to the upright video display that

a player would smash her hand into the screen too forcefully after making a shot. Global VR claims that the buttons

must be aligned across the center of the control panel for

ease of manufacturing. We do not find an abuse of discretion in the district court’s conclusions that the buttons

appear to have been placed where they are for purposes of

convenience and cannot be said to be expressive. We also

note that on Golden Tee, the white button to the right of the

trackball is labeled “backspin” and provides for just that; on
No. 03-3785 11

the Global VR game, the corresponding button is labeled

“shot type” and provides for backspin and topspin.

IT also contends that the district court erred as a matter

of law in finding that the scènes à faire doctrine applied to

eliminate copyright protection for the video imagery. Global

VR, of course, disagrees, although it acknowledges that, in

an appropriate case, the imagery of a video arcade game

may be protected by a copyright. However, Global VR argues

that in this case the elements over which IT claims protection are inherent either in the idea of video golf or are

common to the creation of coin-operated video games in

general. The district court agreed and determined that

many elements of the video display were common to the

game of golf. For instance, the wind meter and club selection features were found to account for variables in real golf

and so were indispensable to an accurate video representation of the game. Furthermore, the court said that the

game selection features, such as the menu screens which

indicate the number of players and other variables of the

game, are common to the video-game format.

As we said, 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. Looking

again at Atari, we see that the court found that the game

was primarily unprotectible:

PAC-MAN is a maze-chase game in which the player

scores points by guiding a central figure through various passageways of a maze and at the same time avoiding collision with certain opponents or pursuit figures

which move independently about the maze.

Atari, 672 F.2d at 617. Certain expressive matter in the

game was treated as scènes à faire and would therefore receive protection only from virtually identical copying. The

court said that the “maze and scoring table are standard

game devices, and the tunnel exits are nothing more than
12 No. 03-3785

the commonly used ‘wrap around’ concept adapted to a

maze-chase game.” Atari, 672 F.2d at 617. The use of dots

to award points was also scènes à faire. The allegedly infringing game, K. C. Munchkin, had slight but sufficiently

different versions of these items to preclude a finding of

infringement. The court went on to find, however, that the

concepts of the central figure as a “gobbler” and the pursuing

figures as “ghost monsters” were wholly fanciful and thus

subject to more protection. K. C. Munchkin had “blatantly

similar features,” giving Atari a likelihood of success of

showing infringement.

In contrast, we see no error of law in Judge Kennelly’s

finding that the Global VR video display is subject to the

scènes à faire doctrine. Like karate, see Data East USA, Inc.

v. Epyx, Inc., 862 F.2d 204, 209 (9th Cir. 1988), golf is not

a game subject to totally “fanciful presentation.” In presenting a realistic video golf game, one would, by definition,

need golf courses, clubs, a selection menu, a golfer, a wind

meter, etc. Sand traps and water hazards are a fact of life

for golfers, real and virtual. The menu screens are standard

to the video arcade game format, as are prompts showing

the distance remaining to the hole. As such, the video display is afforded protection only from virtually identical

copying.

Given that certain items are necessary to making the game

realistic, the differences in the presentation are sufficient

to make IT’s chances of success on the merits unlikely.

Global VR has “real” courses and “real” golfers; Golden Tee’s

courses are imaginary and its golfers generic. In the Global

VR game, a golf bag appears on the screen as the player

chooses a club for the shot he intends to play. Global VR

offers a “grid” mapping the green as a guide for putting.

Golden Tee has no such device. Also, the Global VR game

has a helicopter that whirls overhead from time to time.

Both games mimic condescending real television golf

announcers, but the announcers use different phrases: “the
No. 03-3785 13

fairway would be over there” and “I don’t think that’s going

to help a whole lot” in Global VR versus “That can only

hurt,” “You’ve got to be kidding,” and “You can lead a ball to

water but . . .” from the Golden Tee announcers. Judge

Kennelly did not abuse his discretion on this point.

The trade dress claim requires little discussion. The term

trade dress refers to the “appearance of a product when that

appearance is used to identify the producer.” Publications

Int’l, Ltd. v. Landoll, Inc., 164 F.3d 337, 338 (7th Cir. 1998).

To prevail on a trade dress claim, IT must establish that its

trade dress is nonfunctional, that it has acquired secondary

meaning, and that a likelihood of confusion exists between

the trade dress of the two games. Computer Care v. Service

Sys. Enters., Inc., 982 F.2d 1063 (7th Cir. 1992). Although

IT frames the issue as involving only the control panel, both

parties veer into a discussion of their cabinets. Of the

cabinets, we will say only that they are somewhat similar

in shape, but so are most arcade game cabinets. The shapes

of the sides of the cabinets are different; the coloring is

different. The sides of the Golden Tee cabinet are white,

while the much less subdued PGA Tour cabinet is an

intense blue. The only words or logos on the sides of the

Golden Tee cabinet, set off in yellow, are “IT Incredible

Technologies” in an upper corner and a circle with “G Fore

T” printed inside. On the other hand, the Pro Tour cabinet

has a good deal more going on. It starts with “Global VR

Presents.” Then there is a circle containing the words “EA

Sports PGA Tour Golf.” Below the circle are the words

Real Courses

Real Golfers

Real Golf

all with the PGA Tour logo between the words. The PGA

Tour logo, by the way, appears five times on each side of the

cabinet.
14 No. 03-3785

As to the control panel, we see no error in the district

court’s conclusion that IT had no likelihood of success on

this claim. The control panel and the trackball system are

functional.

The Global VR game is emblazoned with the name EA

SportsTM and PGA Tour® Golf logos. Its coloring is different

and considerably bolder than that of the Golden Tee game.

Golden Tee provides arrows to demonstrate its descriptions

of the trackball system; Global VR does not. Global VR

names the shots in its shot-shaping diagrams; Golden Tee

does not.

IT argues, however, that the district court did not take

into account what happens in the marketplace. IT says,

“Bar and tavern patrons, often in dimly lit spaces, typically

approach and play these video games while consuming alcohol; they are not consumers using high degrees of care in

selecting, identifying, or differentiating the Golden Tee and

PGA Tour games”! One wonders how different the control

panels would have to be to avoid confusing such users. The

decision of the district court denying IT’s request for preliminary injunction relief is AFFIRMED.

A true Copy:

Teste: 

 ________________________________

Clerk of the United States Court of

Appeals for the Seventh Circuit 

USCA-02-C-0072—3-15-05