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Designs Similar, But Not Close Enough to Constitute Copyright Infringement
Description Court dismissed a copyright design infringement claim brought by a diamond seller against a competitor. While the design was copyrighted, the competitor's design was different enough, given the similarity of ring designs in the market, to defeat the claim. The design had no achieved secondary meaning in the market.
Topic Intellectual Property
Key Words Copyright; Design; Lanham Act; Trade Dress; Secondary Meaning; Infringement
C A S E   S U M M A R Y
Facts Diamond Direct sued Star Diamond for allegedly infringing on its copyrighted diamond ring designs, which concerned the pattern in which diamonds were displayed on rings. Plaintiff states that "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 center stone" whereas its "concept was to combine such a 'ballerina' style base or 'skirt' with a uniquely-designed multi-pierced, rounded-off cluster of tightly-packed small stones." Defendant moved to dismiss the suit, claiming that the designs "possess no elements of originality to set them apart from the multitude of other pear-shaped ballerina rings."
Decision Case dismissed. To prove infringement, the copyright owner must show that its work was copied and that the copied work is substantially similar. Here, even if Diamond Direct's replacement of a large central stone in the "ballerina" style ring with a cluster of smaller stones was sufficiently original to justify copyright, the design was not infringed upon by Star because its collection of stones was arranged differently. Furthermore, the ring design had not acquired secondary meaning sufficient to support a claim of trade dress infringement under the Lanham Act. Factors to show that trade dress has secondary meaning include: advertising expenditures; consumer surveys indicating knowledge of the product to a source; sales success; unsolicited media coverage; attempts by others to copy; and length and exclusivity of use. Plaintiff offered little evidence in this regard.
Citation Diamond Direct, LLC v. Star Diamond Group, Inc., 116 F.Supp.2d 525 (S.D. N.Y., 2000)

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