Yurman Studio, Inc. v. Castaneda
| Decision Date | 19 August 2008 |
| Docket Number | No. 07 Civ. 7862 (SAS).,No. 07 Civ. 1241 (SAS),,07 Civ. 1241 (SAS),,07 Civ. 7862 (SAS). |
| Citation | 591 F.Supp.2d 471 |
| Parties | YURMAN STUDIO, INC. and Yurman Design, Inc., Plaintiffs, v. Elena CASTANEDA and Ejeweler LLC d/b/a Overstockjeweler.com, Defendants. Cartier, a division of Richemont North America, Inc., Cartier International, N.V., Cartier Creation Studio, S.A., Van Cleef & Arpels S.A., Van Cleef & Arpels, Inc., Van Cleef & Arpels Distribution, Inc., Gucci America, Inc., and Bulgari S.p.A., Plaintiffs, v. Elena Castaneda and Ejeweler LLC d/b/a Overstockjeweler.com, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Louis S. Ederer, Esq., John Maltbie, Esq., Matthew T. Salzmann, Esq., Arnold & Porter LLP, New York, NY, for Plaintiffs.
Scott Zarin, Esq., Zarin & Associates, P.C., New York, NY, for Defendants.
I. INTRODUCTION
Yurman Studio, Inc., Yurman Design, Inc. (collectively, "Yurman"), Cartier, a division of Richemont North America, Inc., Cartier International, N.V., Cartier Creation Studio, S.A. (collectively, "Cartier"), Gucci America, Inc. ("Gucci"), and Bulgari S.p.A. ("Bulgari") (collectively, "plaintiffs") move for partial summary judgment against Ejeweler LLC and Elena Castaneda (collectively "defendants") with respect to all issues of liability and damages relating to certain of their claims for infringement of trademarks, copyrights and design patents involving nearly one hundred individual jewelry pieces sold by defendants. Additionally, Yurman seeks summary judgment dismissing defendants' counterclaim on the cancellation of Yurman's copyrights.
Defendants, in turn, move for partial summary judgment with respect to certain of plaintiffs' claims for copyright, trademark, and trade dress infringement, false designation of origin, New York and federal trademark dilution, and common law unfair competition, false advertising, and deceptive trade practices and willful infringement. For the reasons that follow, the parties' respective motions for summary judgment are granted in part and denied in part.
II. BACKGROUND
Since 2004, defendants, through their website http://www.overstockjeweler.com ("Overstock website"), have been offering for sale and selling "designer knock-off Jewelry" and "reproductions or replicas of popular designs."2 Plaintiffs are designers and suppliers of high-end jewelry and luxury watches.3 Numerous jewelry items and watches offered for sale on the Overstock website are advertised as replicas of, or inspired by, the jewelry designs of Yurman Cartier, Gucci and Bulgari.4
Plaintiffs possess intellectual property rights, including registered copyrights, design patents, and trademarks, in the jewelry designs in dispute. Yurman owns twelve copyright registrations, covering both individual jewelry designs and jewelry collections, that form the basis of its claims against defendants.5 In addition, Yurman owns a patent in an ornamental design for a watch bracelet.6 Cartier has registered trademarks for seven different designs featured in its jewelry.7 It also has been issued patents for four ornamental jewelry designs, and owns a copyright registration for its "Agrafe" bracelet design.8 Gucci has registered two recent jewelry collections, its Fall/Winter 2005 Jewelry Collection and its Spring/Summer 2007 Jewelry Collection, with the United States Copyright Office.9 Gucci also has a registered trademark in its stylized letter "G" design used in watches and clocks.10 Finally, Bulgari has obtained patents on three ornamental jewelry designs.11
On February 16, 2007, Yurman filed suit against defendants, asserting claims for copyright, trade dress, design patent, and trademark infringement, as well as claims for false designation of origin, unfair competition, and deceptive trade practices.12 On April 26, 2007, defendants brought a counterclaim for cancellation of certain of the Yurman copyrights, alleging the designs are not sufficiently original to warrant protection under copyright law. On September 6, 2007, Cartier, Van Cleef & Arpels, Gucci, and Bulgari filed a separate complaint against Castaneda asserting the same claims as Yurman. With the consent of the parties, the Court consolidated the two actions.
Plaintiffs, with the exception of Van Cleef & Arpels, moved for partial summary judgment on June 13, 2008. Yurman, Cartier and Gucci argue that they are entitled to summary judgment on their claims for willful copyright infringement. Cartier and Gucci argue that they are entitled to summary judgment on their trademark design infringement claims, because defendants have counterfeited their design trademarks. Finally, Yurman, Cartier and Bulgari argue that they are entitled to summary judgment on their claims for design patent infringement.
Defendants moved for partial summary judgment on June 14, 2008. Defendants argue that certain of Yurman, Bulgari, Gucci, Cartier and Van Cleef's copyright registrations are invalid, and therefore the claims for infringement of these copyrights must be dismissed. Defendants also argue that their use of plaintiffs' brand name trademarks constitutes nominative fair use, and that, in the alternative, plaintiffs have not established a prima facie case of trademark infringement. In addition, defendants argue that plaintiffs are unable to establish that any infringement was willful. Finally, defendants argue that plaintiffs cannot establish their false advertising or deceptive trade practices claims as a matter of law.
III. APPLICABLE LAW
Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law."13 An issue of fact is genuine "`if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'"14 A fact is material when it "`might affect the outcome of the suit under the governing law.'"15 "It is the movant's burden to show that no genuine factual dispute exists."16
In turn, to defeat a motion for summary judgment, the non-moving party must raise a genuine issue of material fact. To do so, it must do more than show that there is "`some metaphysical doubt as to the material facts,'"17 and it "may not rely on conclusory allegations or unsubstantiated speculation.'"18 However, "`all that is required [from a non-moving party] is that sufficient evidence supporting the claimed factual dispute be shown to require a jury or judge to resolve the parties' differing versions of the truth at trial.'"19
In determining whether a genuine issue of material fact exists, the court must construe the evidence in the light most favorable to the non-moving party and draw all justifiable inferences in that party's favor.20 However, "[i]t is a settled rule that Ic]redibility assessments, choices between conflicting versions of the events, and the weighing of evidence are matters for the jury, not for the court on a motion for summary judgment.'"21 Summary judgment is therefore inappropriate "`if there is any evidence in the record that could reasonably support a jury's verdict for the non-moving party'"22
"Copyright protection subsists . in original works of authorship fixed in any tangible medium of expression .... from which they can be perceived, reproduced, or otherwise communicated . . ."23 To prevail on a claim of copyright infringement under the Copyright Act of 1976,24 a plaintiff must establish "(1) ownership of a valid copyright, and (2) copying [by the defendant] of constituent elements of the work that are original."25
The validity of a copyright depends upon its originality.26 The Supreme Court held that originality "does not signify novelty" and indeed, "a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying."27 Rather, originality "means only 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."28 This level of creativity is "extremely low," with "the vast majority of works making] the grade quite easily" as long as they possess "some creative spark, no matter how crude, humble or obvious."29 "Copyright law may protect a combination of elements that are unoriginal in themselves."30 With respect to compilations of facts, for example, protection extends to choices of "selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity."31 This Court has previously observed that "in cases involving design, ] it is difficult to discern when a combination of unoriginal component parts is itself original so as to merit copyright protection."32
Collections of works may be registered as a "single work" authorized under 37 C.F.R. § 202.3(b)(4)(A) which "codified the pre-existing Copyright Office practice of allowing copyright owners to register multiple works published together as a single work for a single fee."33 A single work is defined as "all copyrightable elements that are otherwise recognizable as self-contained works, that are included in a single unit of publication, and in which the copyright claimant is the same."34 A single work registration for a collection of published works requires that "all of the selfcontained works be `included in a single unit of publication' and share the same copyright claimant."35
Where a plaintiff holds a certificate of copyright registration made before or within...
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