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Yurman Studio, Inc. v. Castaneda

United States District Court for the Southern District of New York

August 19, 2008, Decided; August 19, 2008, Filed

07 Civ. 1241 (SAS); 07 Civ. 7862 (SAS)

Opinion

 [***1817]   [*480]  OPINION AND ORDER

SHIRA A. SCHEINDLIN, U.S.D.J.:

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  [**2] 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

A. Facts

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] 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,  [*481]  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  [**4] 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 

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591 F. Supp. 2d 471 *; 2008 U.S. Dist. LEXIS 63158 **; 89 U.S.P.Q.2D (BNA) 1814 ***

YURMAN STUDIO, INC. and YURMAN DESIGN, INC., Plaintiffs, - against - 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, - against - ELENA CASTANEDA and EJEWELER LLC d/b/a OVERSTOCKJEWELER.COM, Defendants.

Subsequent History: Reconsideration granted by, in part, Reconsideration denied by, in part, Summary judgment granted by, Costs and fees proceeding at Yurman Studio, Inc. v. Castaneda, 2008 U.S. Dist. LEXIS 71232 (S.D.N.Y., Sept. 19, 2008)

CORE TERMS

infringement, trademark, jewelry, registration, patent, registered, bracelet, consumer, counterfeit, dilution, watch, advertising, sponsorship, nominative, ownership, website, brand, deceptive, invalid, ring, affiliation, ornamental, genuine, domain, unfair, certificate, screw-head, gemstone, novelty, partial

Civil Procedure, Summary Judgment, Entitlement as Matter of Law, Legal Entitlement, Genuine Disputes, Materiality of Facts, Burdens of Proof, Movant Persuasion & Proof, Nonmovant Persuasion & Proof, Appropriateness, Copyright Law, Civil Infringement Actions, Elements, Copying by Defendants, Ownership, Statutory Copyright & Fixation, Originality Requirement, Independent Creation Requirement, Quantum of Originality, Protected Subject Matter, Graphic, Pictorial & Sculptural Works, Creativity Requirement, Subject Matter, Scope of Protection, Scope of Copyright Protection, Collective & Derivative Works, Collective Works, Evidence, Burden Shifting, Deposit & Registration Requirements, Registration, Registration Certificates, Ownership Interests, Works Made for Hire, Foreign & International Protections, Protected Rights, Assignments & Transfers, General Overview, Copying by Defendants, Substantial Similarity, Intrinsic Tests, Ordinary Observer Test, Standards for Granting Summary Judgment, Criminal Infringement, Willfulness, Business & Corporate Compliance, Federal Unfair Competition Law, Lanham Act, Scope, Trademark Law, Causes of Action Involving Trademarks, Dilution of Famous Marks, Factors for Determining Dilution, Entertainment Industry Falsity & Performance Misattribution, Trade Dress Protection, Causes of Action, Infringement Actions, Elements of Trade Dress Infringement, State Antidilution Statutes, Types of Dilution, Blurring, Defenses to Incontestability, Fair Use, Nominative Fair Use, Patent Law, Design Patents, Patent Law, Burdens of Proof, Remedies, Damages, False Advertising, Elements of False Advertising, Justiciability, Standing, Injury in Fact, Antitrust & Trade Law, Consumer Protection, Deceptive & Unfair Trade Practices, State Regulation, Publication, Acts Constituting Publication, Error & Misstatement Correction, Likelihood of Confusion, Consumer Confusion, Allocation, Trade Secrets Law