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May 15, 1997

DONALD BRUCE & COMPANY, an Illinois corporation, Plaintiff,
B. N. MULTI COM CORPORATION, a New York corporation, Defendant.

The opinion of the court was delivered by: GETTLEMAN

 Plaintiff Donald Bruce & Company has filed a one count complaint for copyright infringement against defendant B. H. Multi Com Corporation. Defendant has filed a motion to dismiss or in the alternative for summary judgment. Because both parties have submitted to the court evidence outside the pleadings, the court will treat the motion as one for summary judgment pursuant to Fed. R. Civ. P. 56. For the reasons set forth below, defendant's motion is denied.


 Plaintiff is an Illinois corporation engaged in the business of designing, manufacturing and selling jewelry and jewelry related products, including rings, through its "Skalet Gold Division." Defendant is a New York corporation with its principal place of business in New York City, also engaged in the business of design, manufacturing and distribution of jewelry and jewelry related products, including rings. On March 25, 1994, plaintiff's Skalet Gold Division obtained United States Copyright Registration No. VA 298 292, on its "Skalet Ring Line" and in particular on a ring designed as style number S3469G ("the Ring"). Plaintiff alleges that beginning on a date unknown to plaintiff, defendant began selling a style of ring which is identical to, and "a knock-off copy" of the Ring. Plaintiff alleges that defendant's act of copying the ring constitutes copyright infringement in violation of 17 U.S.C. § 501. Defendant seeks a permanent injunction against defendants from further distribution of any rings or other jewelry product copied from plaintiff's copyright of rings, as well as an accounting for all profits made by defendant resulting from the alleged copyright infringement.


 There are only two elements of an infringement claim: ownership of a valid copyright, and the copying of constituent elements of the work that are original. Fonar Corp. v. Domenick, 105 F.3d 99, 101 (2nd Cir. 1997). Plaintiff's certificate of copyright registration is prima facie evidence that the copyright is valid. 17 U.S.C. § 410(c): Fonar, 105 F.3d at 104. In its motion, defendant challenges both the copyrightability of the Ring, as well plaintiff's compliance with the registration requirements. With respect to the latter argument, defendant argues that the registration is invalid because: plaintiff failed to meet the statutory requirement that a single registration of a collection of jewelry include only related works; plaintiff has not complied with the copyright office's deposit requirements by submitting a partial and obscure deposit making it impossible to determine the extent of plaintiff's copyright claim; and the registration is directed to an unpublished collection of designs which were published at least a year prior to registration.

 A. Copyrightability

 Under the 1976 Copyright Act, copyright protection subsists in "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C. § 102(a). Works of authorship include pictorial, graphic, and sculptural works. 17 U.S.C. § 102(a)(5). It is undisputed that jewelry is included within the sculptural works classification of Section 102(a)(5). See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2nd Cir. 1980).

 In response, plaintiff argues that the Ring has "a tailored fashion appearance resulting from a unique combination of design features." The Ring contains "an eight mm. tailored gold band, with a U shaped bezel head [which] was designed in a manner such that the stone, a 9 x 7 mm. baguette, does not touch the band and appears to float." These features, according to plaintiff, demonstrate the minimal creativity necessary under Feist.

 Defendant argues that plaintiff's description of the creative aspects of the Ring in fact evidences a utilitarian aspect that cannot be separated from the sculptural aspect, leaving the entire Ring non-copyrightable. Defendant relies on DBC of New York, Inc. v. Merit Diamond Corp., 768 F. Supp. 414 (S.D.N.Y. 1991), in which the plaintiff, a small jewelry manufacturer, sought an order from the court reversing the Register of Copyrights' refusal to register two ring designs. The court found that "the individual elements of [plaintiff's] designs, such as the marquis stones, the trillions and the knife edged shank, are each separately well known in the jewelry trade for [plaintiff's] creation of the rings at bar." The court held that the rings did not feature configuration or design differences which could be characterized to have existed independently of their utilitarian counterparts. Therefore, the court found that the rings were not unique enough to override the determination of the Registry of Copyrights, at least on a motion for summary judgment.

 Defendant argues that in the instant case, like in DBC, plaintiff cannot separate the design aspects of its Ring from the utilitarian aspects of the beveled head which holds the stone. Defendant's argument is based on a "useful article" exception to grant of copyrightability for sculptural works contained in § 102(a)(5). As noted by the Third Circuit in Masquerade Novelty, Inc. v. Unique Industries, Inc. 912 F.2d 663, 670 (3d Cir 1990), Congress attempted to draw as clear a line as possible between copyrightable works of applied art and uncopyrightable works of industrial design, by restricting the definition of sculptural works eligible for copyright protection as follows:

Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as a pictorial, graphic or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article.

 A useful article, however, is defined as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." 17 U.S.C. § 101. Thus, defendant's argument is applicable only if the Ring is first determined to be a useful article under § 101. If a sculptural work is not a useful article because its sole utilitarian function is to portray the appearance of the article, then it remains copyrightable under 17 U.S.C. § 102(a)(5), and the court need not analyze whether its utilitarian function is separable from the work's sculptural elements. In the instant case, the article in question is a ring. The Ring is purely ornamental, its sole purpose is to portray its appearance. Accordingly, ...

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