Diamond Direct, LLC v. Star Diamond Group, Inc.

• Decision Date: 20 October 2000
• Docket Number: No. 99 Civ. 11586(LAK).,99 Civ. 11586(LAK).
• Citation: 116 F.Supp.2d 525
• Parties: DIAMOND DIRECT, LLC, Plaintiff, v. STAR DIAMOND GROUP, INC., etc., Defendant.
• Court: U.S. District Court — Southern District of New York

116 F.Supp.2d 525

DIAMOND DIRECT, LLC, Plaintiff, v. STAR DIAMOND GROUP, INC., etc., Defendant.

No. 99 Civ. 11586(LAK).

United States District Court, S.D. New York.

October 20, 2000.

COPYRIGHT MATERIAL OMITTED

Charles P. LaPolla, Ostrolenk, Faber, Gerb & Soffen, LLP, for Plaintiff.

Jennifer F. Beltrami, Wolf, Block, Schorr and Solis-Cohen LLP, for Defendant.

MEMORANDUM OPINION

KAPLAN, District Judge.

This is an action for alleged infringement of plaintiff's copyrighted diamond ring designs, trade dress infringement under the Lanham Act, and analogous state law transgressions. Defendant moves for summary judgment dismissing the amended complaint.

I. Copyright Claim

The allegedly infringed ring styles "utilize[] a base or `skirt' consisting of tapered baguettes set upon rows of narrow vertical prongs and therefore ... fall stylistically within the broad category of rings referred to as `ballerina' style rings."¹ Plaintiff claims, however, that its rings have original and therefore properly copyrighted design elements that differentiate them from the "prior art": "Whereas other rings in the marketplace utilized a `ballerina' style base or `skirt' of tapered baguettes on rows of narrow vertical prongs in combination with a large central stone, [plaintiff's] concept was to combine such a `ballerina' style base or `skirt' with a uniquely-designed multi-tiered, rounded-off cluster of tightly-packed small stones."²

In order to prevail on its claim of copyright infringement, plaintiff must establish ownership of a valid copyright and unauthorized copying of original elements of the copyrighted work.³ Defendant seeks dismissal on the grounds that (1) plaintiff's designs contain nothing original and that its copyrights therefore are invalid, and (2) plaintiff cannot raise a genuine issue of fact for trial as to infringement.

A. Copyright Validity

Only original works are susceptible of copyright protection.⁴ Plaintiff's certificates of copyright registration are prima facie evidence of the validity of the copyrights in its designs.⁵ The presumption of validity, however, is rebuttable. Its weight is a matter within the Court's discretion.⁶ And defendant argues that plaintiff's copyrights are invalid because their designs "possess no elements of originality to set them apart from the multitude of other pear-shaped ballerina rings existing before 1996."⁷

To say that a work is "original" in copyright terms is to say that "the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity."⁸ Defendant does not dispute, at least for purposes of this motion, that plaintiff independently created the variations that allegedly set its designs apart from what came before. Instead, defendant argues that the rings do not possess the required element of creativity.

It has been established at least since Bleistein v. Donaldson Lithographing Co.⁹ that the quantum of originality necessary to invoke copyright protection is very small.¹⁰ As Justice Holmes wrote long ago, "[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves the final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits."¹¹ By parity of reasoning, the principle applies to works of applied art such as jewelry designs. So the level of creativity necessary to support copyright is modest indeed. While no precise verbal formulation can capture it,¹² there is some irreducible minimum beneath which a work is insufficiently original to find protection. It therefore is necessary to examine precisely what is at issue here.

In this case, plaintiff first marketed its style No. R7053, a ballerina style ring for which it did not seek copyright protection in view of its recognition that it contained no original elements.¹³ The copyrighted rings resulted from modifications to the No. R7053.¹⁴

The R7053 consists of (a) a pear-shaped skirt of baguette-shaped stones at the perimeter enclosing (b) a parallel ring of round stones which in turn encloses (c) a large center stone.¹⁵ The copyrighted R8070 is identical as to elements (a) and (b). The large central stone, however, is replaced by a "two-tiered rounded off cluster of small, evenly-sized, closely-set round diamonds."¹⁶ The copyrighted R8158 is substantially the same as the R8070 save that the "tiers in the central cluster ... appear flatter and less pronounced than the tiers of the R8070 ..."¹⁷ The copyrighted R8431 is virtually the same as well, except that it is flatter still and exposes somewhat less of the metal setting.¹⁸ In sum, then, the principal difference between the copyrighted designs and the concededly commonplace style R7053 upon which plaintiff says they were based is the substitution at the center of the ring of two tiers of small, closely-set round stones for one large stone. Plaintiff thus claims copyright only for the arrangement of the central cluster of stones and the combination of the central cluster with the concededly commonplace pear shape and ballerina style base.¹⁹

Lest "every song [be] merely a collection of basic notes, every painting a derivative work of color and stroke, and every novel merely an unprotected jumble of words,"²⁰ a court cannot assess the originality of a work solely from the originality of the individual component parts. As Feist makes clear, a work that is entirely a collection of unoriginal material nevertheless may be copyrighted if the material is selected, coordinated or arranged in an original fashion. While component parts are not entitled to copyright protection simply by virtue of their combination into a larger whole, copyright may protect the particular way in which the underlying elements are combined-if the particular method of combination is itself original.²¹

Feist involved compilations of facts, but the theory may be applied to derivative works based on discrete, unoriginal elements.²² Particularly in cases involving design, however, it is difficult to discern when a combination of unoriginal component parts is itself original so as to merit copyright protection. Indeed, courts have struggled over the question of originality of jewelry designs,²³ looking at times to whether the derivative work possesses an "overall distinctive feel" or "markedly different visual impact"²⁴ from the works from which it is derived.

This case presents similar difficulties. But the Court need not here engage in the uncertain business of assessing "creative spark" or "visual impact." For even assuming that plaintiff's copyrights are valid, the copyright claim would fail for another reason.

B. Infringement

To prove infringement, a plaintiff must show both that the defendant actually copied plaintiff's work and that defendant's work is substantially similar to the plaintiff's.²⁵ The allegedly infringed designs at issue here concededly are derivative works. In consequence, plaintiff's copyrights, assuming their validity, protect only the new material contributed by plaintiff.²⁶ The test for infringement therefore focuses on the plaintiff's alleged contribution, i.e., whether there is "substantial similarity between the allegedly infringing work and the original elements of the allegedly infringed" work.²⁷

In applying the test for infringement, it is critical to bear in mind that copyright protects only particular expressions of ideas; ideas themselves, even if original in their conception, are free for the taking.²⁸ Thus, the idea of a ballerina ring with a small cluster of stones at the center is not protectible. Plaintiff's alleged copyrights protect only the ways in which plaintiff expresses the idea-the particular configurations of the cluster combined with particular configurations of other elements of the ring.²⁹

The admitted similarity of the rings in question is attributable only to the design idea they share; each ring expresses the idea differently.³⁰ The collection of round stones in the center of each ring is arranged differently; the baguettes in defendant's ring, when viewed from the side, undulate more deeply and more frequently than those of plaintiff's ring; the tiers in the center clusters of diamonds in plaintiff's rings protrude upward more than in defendant's rings; the plaintiff's rings have closed undersides, whereas defendant's rings' undersides are open; and the shanks of the rings possess different designs.

When one focuses on the distinction between idea and the expression, the result here follows readily. These rings bear clear similarities. But the similarities are inherent in the idea of substituting a cluster of several stones for a single large stone in an otherwise common place design. Once that aspect is put aside, as it must be, the rings in question are not substantially similar, either with respect to the overall look and feel of the rings or with respect to the allegedly copyrightable component parts.³¹ Thus, while it may be unclear as to whether plaintiff possesses valid copyrights in the combination of unoriginal design elements, any such copyright has not been infringed by Star Diamond's ring. Accordingly, Diamond Direct's claims of copyright infringement are dismissed.

II. Lanham Act

Plaintiff claims next that the designs of its rings are protectible trade dress and that defendant is infringing its rights in violation of Section 43(a) of the Lanham Act.³² Defendant responds that plaintiff has failed to raise a genuine issue of material fact as to the alleged secondary meaning of its designs and that the action therefore should be dismissed.

In Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,³³ the Supreme Court held that unregistered product design trade dress cannot be inherently distinctive³⁴ and therefore concluded that product design, or configuration, is protected under Section 43(a) only upon a showing that it has acquired a secondary meaning³⁵ — in...