The opinion of the court was delivered by: PATTERSON
ROBERT P. PATTERSON, JR., U.S.D.J.
Plaintiff Judith Ripka Designs, Ltd. ("Ripka Designs") brings this action for (1) copyright infringement pursuant to 17 U.S.C. §§ 106, 113, 501; (2) trade dress infringement pursuant to 15 U.S.C. § 1125(a); (3) injury to business reputation and dilution under New York General Business Law ("N.Y. Gen. Bus. L.") § 368-d; (4) deceptive trade practices under N.Y. Gen. Bus. L. § 133; and (5) New York common law unfair competition. Plaintiff seeks injunctive relief and monetary damages, including punitive and compensatory damages. A consolidated trial of the request for preliminary and final injunctive relief was held before the Court from May 22, 1995 to June 2, 1995, pursuant to Rule 65(a)(2) of the Federal Rules of Civil Procedure.
By a Complaint and Order to Show Cause filed on February 16, 1995, Plaintiff originally sought to enjoin Defendant Preville from designing, manufacturing, or selling twenty pieces of jewelry alleged to infringe Plaintiff's copyrights for similar pieces of jewelry. A hearing on Plaintiff's motion for a Temporary Restraining Order was held on February 22, 1995 and an order was entered temporarily restraining Defendant Preville from designing, manufacturing, or selling pieces of jewelry alleged to infringe copyrights for six of Plaintiff's pieces, reflected in Exhibits A, C, E, G, I, and K to Plaintiff's Complaint (Trial Exhibits ["Ex."] 1-5 and a piece which was not introduced at trial). Plaintiff amended its Complaint to allege a cause of action under the Lanham Act. On or about March 27, 1995, Preville and Defendant HWR, a retail jewelry store that sells Preville jewelry in Aspen, Colorado, filed an answer to the Amended Complaint and on or about April 12, 1995, filed an Amended Answer as of right. To date, Plaintiff has not served the other Defendants.
Pursuant to Court Order during discovery, Preville produced its entire line of jewelry for inspection and photocopying. Plaintiff was ordered to produce its entire line of about 250 pieces simultaneously, but produced only fifteen pieces of jewelry at the initial inspection on March 21, 1995. After Plaintiff's principals had an opportunity to examine and photograph Preville's entire line, Plaintiff claimed that additional Preville pieces infringed Plaintiff's copyrights on individual pieces of jewelry; it did not, however, produce the items for inspection and photocopying until some weeks later. Plaintiff never made its entire line, which allegedly numbers a couple of hundred pieces, available for inspection. (Tr. at 941.) Only five of the twenty pieces which Plaintiff originally alleged had been infringed by Preville remain in the case. (Ex. 1-5)
Shortly before trial, Plaintiff was permitted to add fourteen new pieces (Ex. 9-22) and substitute two new items of its jewelry (Ex. 6, 8B) as allegedly infringed by two of Defendant's items (Exhibits F and H to the Amended Complaint) which it originally claimed had been infringed by other items. (Ex. K, V)
Plaintiff Judith Ripka Designs, Ltd. is a New York corporation. Judith Ripka is a principal and employee of Plaintiff. Ms. Ripka began designing and selling jewelry at her home in approximately 1970. (Tr. at 40-41.) In the 1970's, Ms. Ripka sold jewelry from her office at 10 West 47th Street. (Tr. at 43.) Ripka participated in jewelry trade shows in the late 1970's and early 1980's, but did not appear in trade shows between the early 1980's and June 1995. (Tr. at 47-49.) The evidence showed that Ms. Ripka designed individual pieces for individual customers; Ms. Ripka often referred to pieces by customers' names.
At the time this action was commenced, Plaintiff had begun efforts to expand its business from direct retail sales into the wholesale jewelry market. (Tr. at 432.) Preville has operated in the wholesale market since 1978.
In the early 1980's, plaintiff opened a jewelry concession at a women's clothing boutique called Tango in Roslyn, New York (Tr. at 50-51); it maintained that concession until 1991. Only a few pieces of jewelry were displayed at Tango (Tr. at 51), but a book of magazine pictures of other designers' jewelry, such as Bulgari, Barry Kisselstein-Cord and Elsa Peretti was available; customers could choose a piece for which Ms. Ripka would provide her own "interpretation." (Tr. at 1544-45, 1816-17.) In the late 1980's, Plaintiff opened a second concession at a shoe store in Plainview, New York. (Tr. at 55-56.) Subsequently, Plaintiff opened another concession in Wheatley Plaza, New York, in the late 1980's or early 1990's. (Tr. at 56-57.) The concessions at the Long Island shoe stores were closed in 1993. (Tr. at 942.) In approximately 1991, Plaintiff moved its office to 21 West 46th Street. (Tr. at 91.) In 1991, Plaintiff closed its concession at Tango and opened a concession at Hirshleifers shopping center in Manhasset, New York. (Tr. at 60-61.) In 1993, Plaintiff closed its concession at Hirshleifers and opened a store called "Judith Ripka" in Manhasset. (Tr. at 62.)
In 1991, Plaintiff sold jewelry at Henri Bendel. (Tr. at 58.) This ceased after one year. Plaintiff then began selling jewelry at Neiman-Marcus, which it continues to do outside of New York. (Tr. at 59.) Ms. Ripka asserted at pretrial proceedings that samples of her infringed jewelry could be obtained from stock at Neiman-Marcus. Despite requests for production, no samples were produced from Neiman-Marcus and at trial Plaintiff offered no documentary evidence to demonstrate that any of the pieces in issue ever were displayed or sold by Neiman-Marcus or Henri Bendel.
In July and November 1994, respectively, Plaintiff opened concessions in a shoe store at 1100 Madison Avenue in Manhattan and a boutique in Aspen, Colorado. (Tr. at 65-66.) The Aspen boutique is located across the street from an existing store maintained by HWR Jewelry. (Tr. at 1021.)
In an affidavit supporting Plaintiff's motion for temporary and preliminary injunctive relief, sworn to on February 16, 1995, Ms. Ripka alleged that if the copying continued, Plaintiff would be forced to close its Manhattan store "to keep pace with Preville's predatory practices." (Tr. at 278.) At trial, Ms. Ripka acknowledged that she meant to refer to Plaintiff's "Manhasset" store (Tr. at 278), which, she testified, yielded gross sales of over $ 3 million in 1994 alone, an amount which exceeded gross sales in prior years. (Tr. at 495.) When asked by the Court for the basis of the allegation that Plaintiff had lost over one million dollars in the two years prior to commencing this action, Ms. Ripka testified that this number was based not on actual losses of Plaintiff, but on the perception that "a lot of" business going to Preville should have been going to Plaintiff. (Tr. at 495-96.)
Defendant Preville is a New York corporation which was organized in 1990. (Tr. at 960.) From 1975 until 1990, Preville did business as a husband and wife partnership. (Tr. at 960.) Mr. Jay Siskin is the president of Preville. (Tr. at 960.) Ms. Penny Preville Siskin is a Vice President of Preville. (Tr. at 863.) Ms. Siskin has always been the primary jewelry designer at Preville. (Tr. at 966-67.) In 1993, Ms. Leslie Greenberg purchased a 50% interest in Preville and became a Vice President. (Tr. at 963.)
In 1975, Preville began operating out of the Siskins' apartment in Manhattan. (Tr. at 961.) In the late 1970's, Preville opened an office at 19 West 44th Street in Manhattan. (Tr. at 961.) The Preville office remained at 44th Street until June 1990, when the Siskins moved their business to 445 Northern Boulevard in Great Neck, New York, where they have lived since 1978. (Tr. at 961.) In 1994, Preville moved to 111 Great Neck Road in Great Neck. (Tr. at 962.) Preville currently employs three people in addition to its three principals. (Tr. at 964.) From 1989 to 1994, Preville employed an in-house model maker, jeweler and polisher, Zvi Keren. (Tr. at 1043.) Mr. Siskin is also a jeweler. (Tr. at 966.) Since 1993, Preville also has contracted some of its model making to Juan Merchan at Sumer Gold, Inc. (Tr. at 1044.) Mr. Keren was the model maker and jeweler for Exhibits A, R, T and 12G; Mr. Merchan was the model maker and jeweler for Exhibits B, C, D, E, F, G, H1, H2, I, J, K, L, M, N, O, P, Q, and S.
Preville designs, manufactures and sells its jewelry to over 200 retail stores throughout the United States, Canada, Mexico, the Caribbean, and South America. (Tr. at 968-69.) Preville has previously sold to department stores such as Macy's, Saks Fifth Avenue, Bergdorf Goodman, Neiman-Marcus and Nordstrom's. At the time of trial, Preville was preparing to open a display case in Bloomingdale's. (Tr. at 969.) Preville sells a small percentage of its jewelry (approximately ten percent) directly to family and friends, (Tr. at 971), but maintains no stores for the sale of jewelry. Preville has been appearing at trade shows regularly since at least 1978. (Tr. at 969.)
Preville has advertised in trade publications and trade show directories for the past eight to ten years, including Jeweler's Circular Keystone ("JCK") and Jeweler's Quarterly ("JQ Magazine") (Tr. at 1011.) Preville has advertised its jewelry in consumer magazines, such as Town and Country, Vanity Fair, Architectural Digest, Gourmet, American Express' Departures Magazine, Destinations Magazine (distributed by United Airlines on its Denver to Aspen route), the New York Times Magazine Section, the Long Island section of the New York Times, and cooperatively with its retail store customers in regional, local advertising (Tr. at 1012, 1028.) It has advertised in nationally distributed magazines for the past two or three years. (Tr. at 1012.)
Preville's offering of jewelry undergoes substantial changes in response to suggestions from trade customers at annual trade shows. Its current line of jewelry includes between 250 and 275 pieces of 18 karat gold jewelry and some silver pieces. (Tr. at 983.) Preville's President testified that the line contains multiple collections or subcollections. The Preville jewelry identified by Plaintiff as infringing is not a collection or subcollection; it is a selection of pieces from as many as ten different collections. (Tr. at 976-83.) Mr. Scott LaDu, a former employee of HWR Jewelry in Aspen, Colorado, confirmed that the allegedly infringing pieces are not sold or displayed as a collection. (Tr. at 1237.) Nearly all of the pieces in Preville's line feature a matte-highlighted finish. (Tr. at 991.)
The Subject Matter of the Case
The jewelry which is the subject matter of this litigation is high-end, designer, 18 karat gold jewelry. Many pieces incorporate unfaceted precious and semi-precious stones referred to as "cabochons". The pieces range in wholesale price from approximately $ 500 to $ 5,000.
The jewelry falls within a genre known as "ancient inspired" (Tr. at 1724), which has been in vogue since at least 1988. (Tr. at 1783-84.) The jewelry designs of Ripka and Preville incorporate common elements of the ancient inspired genre, including the use of 18 karat green colored gold, matte finishes, beading, granulation, rope twists, fluting, cabochon stones, columnar designs, pyramid designs and art deco design. (Tr. at 1724.) These elements have been used by designers for a long time. (Tr. at 1515.) Both Plaintiff and Defendant use mabe pearls and semi precious stones which are pre-shaped and purchased in bulk from suppliers. Other designers of ancient inspired jewelry include Jamms, SeidenGang, Trompe L'Oeil and Barry Kisselstein-Cord. (Tr. at 1725-26.)
The jewelry of Plaintiff, Defendant, and other designers of ancient inspired jewelry share common functional elements. Each designer frequently uses toggle bars and rings as clasps. (Tr. at 79, 1515.) Mystery clasps used by both designers have been used for at least 30 years. (Tr. at 1530.) Each designer uses gold caps which must be of a certain size and shape to attach to pearls and mystery clasps. Pearl caps have been used for at least 70 years; they are also functional. (Tr. at 1535.) Plaintiff admits that screw in pearl caps are in the public domain. (Tr. at 771-72.) Both Plaintiff and Defendant use clip mechanisms to create jewelry to attach to chains and pearls. Designers have been making clip-on jewelry for many years. (Tr. at 1784.)
Plaintiff uses a dull or matte finish on its 18 karat gold jewelry. Defendant uses a matte finish and highly polished highlights. Mr. Ladu testified to the uniform use of the matte-highlighted combination by Defendant. (Tr. at 1229.) In addition, Preville's earring collection, marked for identification as Defendant's Exhibit YY, showed Defendant's use of the matte-highlighted finish. Photographs of certain of Plaintiff's and Defendant's pieces taken side by side at the inspection confirm this as well. (Tr. at 797-803; Ex. PP, QQ, RR, SS, TT, UU and VV.)
Ms. Ripka admitted that the green gold color of her jewelry has "been around for ages and ages in various forms... Other people, I am sure, used it and have used it for many, many centuries." (Tr. at 69.) Green gold is generally used by designers in the ancient inspired genre, including Preville. (Tr. at 1046.)
In response to questioning by the Court, Ms. Ripka testified that her jewelry was unique primarily because of its color, the type of fluting and beading used, and its functional features including the "clip-in/clip-out" and "screw-in/screw-out" elements:
The Court: What are the features that you combine that make them unique?
The Witness: I am not going to be long. The total picture is that everything kind of goes with everything.
The Court: What is the combination of features?
The Witness: The combination of the features are where I apply everything to my pieces. It's thought out. It connects from one piece to the next....
The Court: The question has to do with the uniform look. Give me the features. What are the combination of features which give it a uniform look?
The Witness: The color of the gold, the type of fluting, the beads. The design of the piece itself to me would be the most important feature because the thought comes first and then when it's presented into gold it's the way it's done for me. The placement are [sic] the features to me, a big part of the features. The clip-in/clip-out part are a big part of the features which are not part of this -- it's part of this board but not part of the case.
The Court: What are the features?
The Witness: That they clip in, clip out. So you can take a necklace and wear it with pearls, wear it with leathers, wear it with beads, wear an all-gold necklace. So you change the centers and you change the back part of it. So the necklace becomes daytime, afternoon, evening, because you can make the center very dressy with an all-gold-and-diamond necklace and for daytime you can clip in something that is not so dressy in the front, a carving, and then you can clip leather into it. And the same with the pearls. You can screw leather into the pearls. You can screw every color type of bead, lapis, malachite, anything you can think of, citrine beads, so on and so forth, into the pearls so they can again become totally different. A feature to me is that you can change the same piece of jewelry and wear it at different times of the day or evening or if you are in a different mood.
Plaintiff's expert, Joyce Jonas, acknowledged that "everyone" in the industry was designing jewelry with a similar look as plaintiff's pieces in issue:
Q: In reviewing these magazines and the catalog, did you see any other manufacturer who captures the look of Judith Ripka?
A: I mean, everybody is doing it now. It's all over the place.
A: Any other manufacturer?
The Court: What do you mean, "it's all over the place?"
The Witness: Everybody is doing this look now.
The Witness: Everybody is designing jewelry that looks like this.
The Court: What do you mean "everybody?"
The Witness: I must have seen illustrations that were submitted to me by the defendants of 20 jewelers who were working in a similar style today making jewelry in 1994 in this very similar look.
(Tr. at 869.) Ms. Jonas also admitted that the design elements, themes and motifs used by both Plaintiff and Preville "have been around forever and the beading and the motif and the twist work and even the mystery clasp and the whole idea of a wardrobe, all of that. Nothing is new. All of those have been used before and both were using them." (Tr. at 832.)
Ms. Jonas confirmed that most high-end jewelry designers design in collections. (Tr. at 877.) Prospective purchasers of jewelry scrutinize pieces of high-end jewelry they are considering buying carefully. (Tr. at 895.)
Plaintiff submitted advertisements picturing pieces of its jewelry, dating from December 1993 through February 1995 (Ex. 29-36, 39-41, 42A, 43-44, 46, 48-50, 54 and 58). Most of these advertisements feature jewelry designs that are not the subject of this litigation. Two advertisements in evidence portray pieces at issue in this litigation. Plaintiff's Exhibit 34 is an advertisement from the New York Times, dated November 27, 1994, which shows Plaintiff's Exhibit 10, Plaintiff's Exhibit 7 as two bracelets, and two necklaces that appear to be versions of Exhibit 1, but contain either extra links instead of pearls or different end caps. Plaintiff's Exhibit 50, a Neiman-Marcus Christmas catalogue issued in or about November 1994, features Plaintiff's Exhibits 10 and 7. (Tr. at 403, 413-14.)
Although Ms. Ripka was recalled to testify that a passerby can see jewelry in a window display in her Manhasset store (Tr. at 386), David Ripka, Plaintiff's officer who signed many of its copyright registrations in evidence, testified at his April 11, 1995 deposition:
Q: If I'm walking down the street and I stop in front of the store and I don't go in, are there any pieces of jewelry in a window that I can see?
Q: Would I have to go into the store physically to actually see any pieces of jewelry?
Q: Is there a display inside the store under glass?
A: That is where the jewelry is displayed.
Q: Have you ever been to that store?
Q: Is the door to that store kept locked except to let ...