|Tuesday, August 14, 2007||
Copy of Independently Created Third Party
Design Not Subject to Infringement Claim
Affirming an award of judgment as a matter of law based on a finding of independent creation, the court also said that the relevance of the "striking similarity" of the designs to proving access was limited here because of the simplicity of the designs in question.
In 2001, a Mag Jewelry representative went to a Target department store in Rhode Island and bought Cherokee-brand necklaces whose pendants, according to Mag, infringe on the crystal angel design. Mag sued Target Corp. d/b/a Target Stores, Cherokee Inc., and the supplier of the necklaces, Style Accessories Inc., alleging copyright infringement.
Target and Style Accessories, arguing that its design was based on Gregerman pieces and, thus, were not copies of Mag's design, moved for judgment as a matter of law. Judge Ernest C. Torres of the U.S. District Court for the District of Rhode Island granted the motion. Mag Jewelry appealed, arguing that Style should not be able to assert Gregerman's independent creation as a defense.
"While we can appreciate Mag's dismay, principles of copyright law on which Mag itself relies appear to permit just such a defense by Style," the court said. "Mag acknowledges ... that it is 'axiomatic' that separate copyrights exist in independently created designs, even if the works are identical. ... Presumably, then, if Gregerman independently created his design, and if Style copied the crystal angel from Gregerman, only Gregerman's rights would be implicated. It would be up to Gregerman to pursue, or not, his rights in his design."
Given the unrefuted evidence that had there been copying by Style, it was from Gregerman and not from Mag, the principal issue here was whether Gregerman's design was independently created, the court said.
"No evidence placed either Gregerman or Style at the jewelry trade shows, and ... there is no evidence of widespread awareness of Mag's crystal angel before Gregerman began selling his jewelry," the court said.
The "striking similarity" of Gregerman's design to Mag's, as well as Gregerman's own failure to register any copyright in his design could be used to counterbalance some deficiency in evidence of access, the court said. However, here the deficiency was too large. The court said:
Mag's alternative argument, that it could try to present evidence to the jury that Gregerman sold not his own design, but rather sold copies of Mag's design to style, was "so implausible as to verge on frivolity." All the evidence showed that Gregerman believed he was selling a design that he had created independently of Mag. The court rejected the argument that Gregerman and Mag's agreement to end their dispute constituted a licensing agreement and an admission by Gregerman that his design was not independently created.
The court thus affirmed the district court's award of judgment as a matter of law in Style's favor.
However, the court reversed the lower court's denial of Style's request for attorney's fees. The court characterized Mag's arguments as "tenuous" and its prolongation of the matter "by obscuring the clarity of the underlying facts." Once it was revealed that Style had copied Gregerman and not Mag, Mag's case became "indefensible," the court said, remanding the matter to the district court to determine the appropriate amount to be awarded in attorneys' fees.
The court's opinion was joined by Judge Juan R. Toruella and Judge John R. Gibson.
Mag Jewelry was represented by Robert W. Clarida of Cowan, Liebowitz & Latman, New York. Style Accessories was represented by Thomas R. Noel of Noel & Gyorgy, Providence, R.I.
Full text at http://pub.bna.com/ptcj/061556Aug8.pdf