Berg v. Symons
| Decision Date | 30 September 2005 |
| Docket Number | No. Civ.A. 03-2683.,Civ.A. 03-2683. |
| Citation | 393 F.Supp.2d 525 |
| Parties | Robert P. BERG d/b/a Bob Berg Buckles d/b/a Silverdales, Plaintiff, v. Joanne SYMONS d/b/a Hy O Silver, et al., Defendants. |
| Court | U.S. District Court — Southern District of Texas |
Linda J. Cole, Jackson Walker LLP, Houston, TX, for Plaintiff.
Jody M. Goldstein, Attorney at Law, Houston, TX, for Defendants.
MEMORANDUM AND OPINION SETTING OUT FINDINGS OF FACT AND CONCLUSIONS OF LAW
This case involves the intellectual property rights to certain western jewelry designs. The parties, formerly husband and wife, worked together selling western jewelry, prize cups, and belt buckles during their marriage and became competitors following their divorce. Robert Berg d/b/a Bob Berg Buckles d/b/a Silverdales ("Berg") sued Joanne Symons d/b/a Hy O Silver, et al. ("Symons") for copyright infringement, trade dress infringement, and unfair competition. Symons counterclaimed for tortious interference with business relationships. Symons concedes that she copied certain copyrighted designs of Berg's, but asserts that she is either a co-owner or licensee of the copyrights and trade dress or, in the alternative, that the copyrights are invalid for lack of originality and for misstatements in the copyright applications. Symons also agrees that the jewelry pieces she designed that were not covered by Berg's copyrights looked very similar to Berg's pieces. Symons argues that Berg has not established a protectible trade dress in the design of the western jewelry they both want to produce and sell.
This court held a bench trial on the parties' claims and defenses. Based on the pleadings, the motions and responses, the evidence, the arguments of counsel, and the applicable law, this court enters findings of fact and conclusions of law. In summary, this court finds and concludes that Berg's copyrights are valid and that Symons is liable to Berg for copyright infringement as to certain jewelry and belt buckle designs. Symons is enjoined from continuing to sell those infringing designs and must pay statutory damages in the amount of $80,000. This court finds and concludes that Berg has not established a protectible trade dress and is not entitled to damages for and an injunction from trade dress infringement. This court denies relief on the counterclaim for tortious interference. The findings of fact and conclusions of law that support these results are set out in detail below.
I. Background
In July 2003, Berg filed this suit alleging copyright infringement, trade dress infringement, unfair competition, and trade dress dilution. Berg sought damages and an injunction to prevent Symons from using his copyrighted jewelry and buckle designs and from copying the trade dress he asserts. Symons asserts co-ownership in the copyrights, claiming that the right to sell pieces using the designs copyrighted during the marriage and containing elements that Berg claimed as his trade dress was community property that was not divided during the divorce proceedings. Symons also asserts that the copyrights were invalid and the trade dress was not protectible. In August 2004, this court denied Symons's motion for summary judgment on the co-ownership defense with respect to the copyrights. Because disputed issues of material fact precluded summary judgment on the copyright and trade dress issues, this court held a bench trial on all the claims and defenses.1 Both Berg and Symons testified and presented evidence about the design of, and market for, western jewelry, the copyrighted designs, and their claims of superior right to sell jewelry using the designs and design elements at issue.
Berg and Symons, both natives of Australia, married in 1984 and divorced in 2000. Before their marriage, Berg was a rodeo performer and a silversmith. In the late 1970s, Berg began designing and selling western jewelry. In 1980, Berg registered the company name "Silverdales" to sell western jewelry and clothing. In 1982, after an injury ended his rodeo career, Berg expanded his jewelry business. Although he focused on belt buckles, he also began to design, produce, and sell western-style rings, necklaces, bracelets, conchos, spurs, knives, and three-piece buckle sets.
Berg met Symons in 1983 when she was appearing at rodeos as Miss Rodeo Australia. At that time, Berg produced jewelry himself. As his jewelry business grew, Berg traveled to the United States to attend jewelry shows and recruit American engravers and silversmiths to work as independent contractors, making jewelry and buckles in Australia. Several engravers and silversmiths came to Australia to work with Berg. Hugh Weaver, an accomplished silversmith and engraver from Wyoming who testified at trial on behalf of Symons, worked as an independent contractor for Berg for six months in 1990. (Bench Trial Tr., Feb. 23, 2005, p. 21). Weaver credibly testified at trial that he showed Berg design features that Berg later incorporated into his own belt buckle and jewelry designs, including the use of tapered raised beads on a raised edge.
In 1993, Berg and Symons moved to Bandera, Texas, to pursue the western jewelry market in the United States. Symons helped run the office, which was located next to the couple's house. They advertised and sold the jewelry and buckles using the names "Bob Berg Silverdales" and "Bob Berg Buckles." They hired independent contractors to sell the jewelry and buckles at trade shows and rodeos. Although some sales were made on the Internet, the couple primarily marketed the jewelry and buckles through direct sales at shows held in conjunction with rodeos and through contracts with rodeo associations. Calls and correspondence related to sales were directed to the Bandera office telephone number and post office box address. The Bandera office would fax orders and design specifications to a production factory in Guadalajara, Mexico, which was run by Cesar Navia. Berg trained Navia to use certain molds, dyes, and engraving and silversmith techniques in manufacturing the jewelry and buckles. (P.Ex. 26, pp. 92-96).
Between October 1992 and June 1996, Berg registered four copyrights for western jewelry designs in his name: VA-530-294, VA-547-192, VA-292-803, and VA-817-815. (Docket Entry No. 17, pp. 1-2). The molds used to make the jewelry contained the copyrighted designs. Since the divorce, Berg has registered two additional copyrights, VA-1-091-617 and VA-1-159-548. Each of the copyrights covered a number of specific pieces of jewelry, belt buckles, and similar items.
Berg testified that in addition to copyrights of specific designs, his jewelry and buckles have a distinctive "look" that consists of the following elements: black background, the use of "tri-color" (red, green, and yellow) gold; a layer of scrollwork with a vine design, a layer of leaves, and a third layer of flowers; and, when edged, use of a raised silver edge with large tapered beads. Berg testified that the presence of a colored stone in the middle of the flowers is not a distinctive element of his work. He also agreed that not all his pieces use an edge. Berg was not the first to use a black background, more than one color gold, or vine and leaf scrollwork, or to place beads on the edge of a buckle or piece of jewelry. Berg contended, however, that the combination of these pieces was distinctive and had become uniquely associated with the "Bob Berg look." At the same time, Berg testified that if a piece of jewelry or buckle did not have a black background, it would not infringe his asserted trade dress.
The Berg-Symons jewelry business was successful. In 2000, Berg designed the trophy cup for the world championship professional bull riding competition. In an advertisement displaying the trophy cup, Berg and his work were described as follows:
A distinctive craftsman of Western buckles and jewelry, Australian native Bob Berg has separated his art from others in the Western market with his revolutionary techniques and singular designs. Cowboy, artist, and entrepreneur, Berg, who hangs his hat in Bandera, Texas, was asked to create an updated version of the Bud Light Cup trophy to honor PBR world champions in the coming years. Knowledge, experience and artistic energy inspired Berg's work on both the new cup and the 2000 world championship buckle.
. . .
Berg was sidelined from rodeo shortly after his arrival in the United States in 1971, yet capitalized on the down time by expanding his interest in engraving and silver-work. The trademark gold-and-silver-on-black style for which he is now famous evolved from this early sideline interest.
. . .
Berg has built championship buckles for prominent rodeo committees across the United States and supplied buckles to the champions of the Australian Pro Rodeo Association for the past 22 years. Hand-cut and soldered scrollwork and lettering characterize Bob Berg designs. Berg initiated the technique of stacking tri-color gold to achieve a three-dimensional look in his buckles and jewelry.
At trial, Symons testified that when she first met Berg, his work was indistinguishable from "standard" western jewelry produced by all the major rodeo or western belt buckle designers and sellers, such as Gary Gist and Skyline Silversmiths. She described the design elements of Berg's early work as "fairly standard in the industry," which included "a berry edge or a rope edge," gold overlays, an engraved silver background, and colored stones set into the overlays. "A berry edge is the same size all the way around of half-round beaded wire." (Bench Trial Tr., p. 4). Symons testified that Berg changed his style after meeting Hugh Weaver. In March 1990, Weaver came to Australia to work with Berg as...
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