Judith Ripka Designs, Ltd. v. Preville

• Decision Date: 26 January 1996
• Docket Number: No. 95 Civ. 1134 (RPD).,95 Civ. 1134 (RPD).
• Citation: 935 F. Supp. 237
• Parties: JUDITH RIPKA DESIGNS, LTD., Plaintiff, v. Penny PREVILLE, Lisa Horowitz, Norman Landsberg, Sheri Miller, HWR Jewelers, Jeffrey Robert, Ltd., Jeffrey Stevens, Two Carols, 14 KT, the House of Clasps, Inc., Michael Eigen, Laviano Jewelers, Julius Oxenhorn Jewelers, Robert Fabrikant, Inc., Shine Jewelry, On Broadway, Golden Touch, Nancy and David, J.R. Gold Designs, Ltd., Rose Jewelers, Lux Bond & Green, Gold N' Gems, and Does 1 Through 20, Defendants.
• Court: U.S. District Court — Southern District of New York

935 F. Supp. 237

JUDITH RIPKA DESIGNS, LTD., Plaintiff, v. Penny PREVILLE, Lisa Horowitz, Norman Landsberg, Sheri Miller, HWR Jewelers, Jeffrey Robert, Ltd., Jeffrey Stevens, Two Carols, 14 KT, the House of Clasps, Inc., Michael Eigen, Laviano Jewelers, Julius Oxenhorn Jewelers, Robert Fabrikant, Inc., Shine Jewelry, On Broadway, Golden Touch, Nancy and David, J.R. Gold Designs, Ltd., Rose Jewelers, Lux Bond & Green, Gold N' Gems, and Does 1 Through 20, Defendants.

No. 95 Civ. 1134 (RPD).

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

January 26, 1996.

COPYRIGHT MATERIAL OMITTED

Littman & Krooks, P.C., New York City by Richard Roth, for Plaintiff Judith Ripka Designs, Ltd.

Herrick, Feinstein L.L.P., New York City by Barry Werbin, Darlene Fairman, and Mark D. Mermel, for Defendants Penny Preville, Inc. and HWR Jewelry, Inc.

OPINION AND ORDER:

FINDINGS OF FACT AND CONCLUSIONS OF LAW

ROBERT P. PATTERSON, Jr., District Judge.

Plaintiff Judith Ripka Designs, Ltd. ("Ripka Designs") brings this action for (1) copyright infringement pursuant to 17 U.S.C. §§ 106, 113, 501; (2) trade dress infringement pursuant to 15 U.S.C. § 1125(a); (3) injury to business reputation and dilution under New York General Business Law ("N.Y.Gen.Bus.L.") § 368-d; (4) deceptive trade practices under N.Y.Gen.Bus.L. § 133; and (5) New York common law unfair competition. Plaintiff seeks injunctive relief and monetary damages, including punitive and compensatory damages. A consolidated trial of the request for preliminary and final injunctive relief was held before the Court from May 22, 1995 to June 2, 1995, pursuant to Rule 65(a)(2) of the Federal Rules of Civil Procedure.

Background

By a Complaint and Order to Show Cause filed on February 16, 1995, Plaintiff originally sought to enjoin Defendant Preville from designing, manufacturing, or selling twenty pieces of jewelry alleged to infringe Plaintiff's copyrights for similar pieces of jewelry. A hearing on Plaintiff's motion for a Temporary Restraining Order was held on February 22, 1995 and an order was entered temporarily restraining Defendant Preville from designing, manufacturing, or selling pieces of jewelry alleged to infringe copyrights for six of Plaintiff's pieces, reflected in Exhibits A, C, E, G, I, and K to Plaintiff's Complaint (Trial Exhibits "Ex." 1-5 and a piece which was not introduced at trial). Plaintiff amended its Complaint to allege a cause of action under the Lanham Act. On or about March 27, 1995, Preville and Defendant HWR, a retail jewelry store that sells Preville jewelry in Aspen, Colorado, filed an answer to the Amended Complaint and on or about April 12, 1995, filed an Amended Answer as of right. To date, Plaintiff has not served the other Defendants.

Pursuant to Court Order during discovery, Preville produced its entire line of jewelry for inspection and photocopying. Plaintiff was ordered to produce its entire line of about 250 pieces simultaneously, but produced only fifteen pieces of jewelry at the initial inspection on March 21, 1995. After Plaintiff's principals had an opportunity to examine and photograph Preville's entire line, Plaintiff claimed that additional Preville pieces infringed Plaintiff's copyrights on individual pieces of jewelry; it did not, however, produce the items for inspection and photocopying until some weeks later. Plaintiff never made its entire line, which allegedly numbers a couple of hundred pieces, available for inspection. (Tr. at 941.) Only five of the twenty pieces which Plaintiff originally alleged had been infringed by Preville remain in the case. (Ex. 1-5)¹ Shortly before trial, Plaintiff was permitted to add fourteen new pieces (Ex. 9-22) and substitute two new items of its jewelry (Ex. 6, 8B) as allegedly infringed by two of Defendant's items (Exhibits F and H to the Amended Complaint) which it originally claimed had been infringed by other items. (Ex. K, V)

Plaintiff Judith Ripka Designs, Ltd. is a New York corporation. Judith Ripka is a principal and employee of Plaintiff. Ms. Ripka began designing and selling jewelry at her home in approximately 1970. (Tr. at 40-41.) In the 1970's, Ms. Ripka sold jewelry from her office at 10 West 47th Street. (Tr. at 43.) Ripka participated in jewelry trade shows in the late 1970's and early 1980's, but did not appear in trade shows between the early 1980's and June 1995. (Tr. at 47-49.) The evidence showed that Ms. Ripka designed individual pieces for individual customers; Ms. Ripka often referred to pieces by customers' names.² At the time this action was commenced, Plaintiff had begun efforts to expand its business from direct retail sales into the wholesale jewelry market. (Tr. at 432.) Preville has operated in the wholesale market since 1978.

In the early 1980's, Plaintiff opened a jewelry concession at a women's clothing boutique called Tango in Roslyn, New York (Tr. at 50-51); it maintained that concession until 1991. Only a few pieces of jewelry were displayed at Tango (Tr. at 51), but a book of magazine pictures of other designers' jewelry, such as Bulgari, Barry Kisselstein-Cord and Elsa Peretti was available; customers could choose a piece for which Ms. Ripka would provide her own "interpretation." (Tr. at 1544-45, 1816-17.) In the late 1980's, Plaintiff opened a second concession at a shoe store in Plainview, New York. (Tr. at 55-56.) Subsequently, Plaintiff opened another concession in Wheatley Plaza, New York, in the late 1980's or early 1990's. (Tr. at 56-57.) The concessions at the Long Island shoe stores were closed in 1993. (Tr. at 942.) In approximately 1991, Plaintiff moved its office to 21 West 46th Street. (Tr. at 91.) In 1991, Plaintiff closed its concession at Tango and opened a concession at Hirshleifers shopping center in Manhasset, New York. (Tr. at 60-61.) In 1993, Plaintiff closed its concession at Hirshleifers and opened a store called "Judith Ripka" in Manhasset. (Tr. at 62.)

In 1991, Plaintiff sold jewelry at Henri Bendel. (Tr. at 58.) This ceased after one year. Plaintiff then began selling jewelry at Neiman-Marcus, which it continues to do outside of New York. (Tr. at 59.) Ms. Ripka asserted at pretrial proceedings that samples of her infringed jewelry could be obtained from stock at Neiman-Marcus. Despite requests for production, no samples were produced from Neiman-Marcus and at trial Plaintiff offered no documentary evidence to demonstrate that any of the pieces in issue ever were displayed or sold by Neiman-Marcus or Henri Bendel.

In July and November 1994, respectively, Plaintiff opened concessions in a shoe store at 1100 Madison Avenue in Manhattan and a boutique in Aspen, Colorado. (Tr. at 65-66.) The Aspen boutique is located across the street from an existing store maintained by HWR Jewelry. (Tr. at 1021.)

In an affidavit supporting Plaintiffs motion for temporary and preliminary injunctive relief, sworn to on February 16, 1995, Ms. Ripka alleged that if the copying continued, Plaintiff would be forced to close its Manhattan store "to keep pace with Preville's predatory practices." (Tr. at 278.) At trial, Ms. Ripka acknowledged that she meant to refer to Plaintiffs "Manhasset" store (Tr. at 278), which, she testified, yielded gross sales of over $3 million in 1994 alone, an amount which exceeded gross sales in prior years. (Tr. at 495.) When asked by the Court for the basis of the allegation that Plaintiff had lost over one million dollars in the two years prior to commencing this action, Ms. Ripka testified that this number was based not on actual losses of Plaintiff, but on the perception that "a lot of" business going to Preville should have been going to Plaintiff. (Tr. at 495-96.)

Defendant Preville is a New York corporation which was organized in 1990. (Tr. at 960.) From 1975 until 1990, Preville did business as a husband and wife partnership. (Tr. at 960.) Mr. Jay Siskin is the President of Preville. (Tr. at 960.) Ms. Penny Preville Siskin is a Vice President of Preville. (Tr. at 863.) Ms. Siskin has always been the primary jewelry designer at Preville. (Tr. at 966-67.) In 1993, Ms. Leslie Greenberg purchased a 50% interest in Preville and became a Vice President. (Tr. at 963.)

In 1975, Preville began operating out of the Siskins' apartment in Manhattan. (Tr. at 961.) In the late 1970's, Preville opened an office at 19 West 44th Street in Manhattan. (Tr. at 961.) The Preville office remained at 44th Street until June 1990, when the Siskins moved their business to 445 Northern Boulevard in Great Neck, New York, where they have lived since 1978. (Tr. at 961.) In 1994, Preville moved to 111 Great Neck Road in Great Neck. (Tr. at 962.) Preville currently employs three people in addition to its three principals. (Tr. at 964.) From 1989 to 1994, Preville employed an in-house model maker, jeweler and polisher, Zvi Keren. (Tr. at 1043.) Mr. Siskin is also a jeweler. (Tr. at 966.) Since 1993, Preville also has contracted some of its model making to Juan Merchan at Sumer Gold, Inc. (Tr. at 1044.) Mr. Keren was the model maker and jeweler for Exhibits A, R, T and 12G; Mr. Merchan was the model maker and jeweler for Exhibits B, C, D, E, F, G, H1, H2, I, J, K, L, M, N, O, P, Q, and S.

Preville designs, manufactures and sells its jewelry to over 200 retail stores throughout the United States, Canada, Mexico, the Caribbean, and South America. (Tr. at 968-69.) Preville has previously sold to department stores such as Macy's, Saks Fifth Avenue, Bergdorf Goodman, Neiman-Marcus and Nordstrom's. At the time of trial, Preville was preparing to open a display case in Bloomingdale's. (Tr. at 969.) Preville sells a small percentage of its jewelry (approximately ten percent) directly to family and friends, (Tr. at 971), but maintains no stores for the sale of jewelry. Preville has been appearing at trade shows regularly since at least 1978. (Tr. at 969.)

Preville has been featured in various jewelry industry editorials (Tr. at 1029-32,...