pieces, both in the window and in a showcase inside HWR. (Tr. at 1222-24.)
Specific pieces of Preville's jewelry in issue, namely Exhibits B and H2, appeared in an advertisement in the May/June 1994 and July/August 1994 issues of JQ trade magazine. (Ex. NNN, RRR) An advertisement featuring Preville's Exhibit G appeared in the January/February 1994 issue of JQ magazine. (Ex. OOO) Preville Exhibit P was featured in an advertisement by HWR in the Summer 1994 Aspen Catalogue issued in late Spring 1994. (Ex. UUU) Preville Exhibits B, D and E were advertised in the September/October 1994 issue of JQ magazine (Ex. OO), which was issued in August 1994. Preville Exhibits B, D, E and O were advertised in the November 1994 issue of Town and Country (Ex. SSS), which was issued in September 1994. (Tr. at 1014-28.) This action was not commenced until February 16, 1995.
Ms. Ripka's deposition testimony of March 23, 1995 and her affidavit of February 16, 1995 provide the only example of any instance where a customer--Mrs. Muriel Horowitz--refused to purchase Plaintiff's jewelry because it could be purchased "cheaper" from Preville.
(Ex. U) At trial, Mrs. Horowitz denied that she ever stated she could purchase less expensive jewelry that looked like Plaintiff's from Preville. Mrs. Horowitz testified that she had never heard of Preville until she had been contacted by one of Preville's attorneys after this action was commenced and that she never has been to Preville's showroom. (Tr. at 237-45.) She also denied a suggestion that she was rude to Ms. Ripka at a luncheon in the Spring of 1994. (Tr. at 243.) Mrs. Horowitz also testified she had purchased two pieces of Plaintiff's jewelry in the fall of 1994 (Tr. at 240), contrary to Ms. Ripka's sworn statement that she had purchased only one necklace.
Mr. LaDu also denied statements attributed to him by Plaintiff's employee Gail Franklin, who Plaintiff did not call to testify at trial. Ms. Franklin alleged in her deposition testimony (Ex. ZZZ) and in her affidavit, sworn to on February 9, 1995, that Mr. LaDu said Preville made copies of Judith Ripka jewelry. (Tr. at 1224-25, 1228.) The Court accepts the contradictory testimony of Mr. LaDu, a former employee of HWR who came from Aspen, Colorado and testified in Court in an open and direct manner.
Plaintiff filed its first applications for copyright in December, 1994. Its other applications were filed in late March and early April of 1995, after the initiation of this action; those applications claim dates of first publication by month and year but not by date.
At trial, the testimony of Judith Ripka, Plaintiff's President and principal witness, was characterized by long pauses on direct and cross examination. She was not a credible witness. Ms. Siskin's deposition and trial testimony about the source of her inspiration for her designs was not very credible. The Court is dubious that testimony as to source of inspiration of design can usually be effectively weighed at trial. Ms. Greenberg's testimony about her knowledge of her husband's legal problems was not credible but not directly relevant to the issues in this trial. Plaintiff's lack of inventory records, books of account, sales records and invoices clearly documenting Plaintiff's business and the sales of the Exhibits at issue in this litigation was very troubling, particularly for a business in which one store allegedly had gross sales of $ 3 million in 1994 and inventory control of relatively valuable stock would be important.
Throughout discovery, Plaintiff also withheld evidence of customers' names at the store from which sales were made, thus denying evidence of the manner in which her business was conducted and corroboration of her oral testimony.
I. Copyright Infringement
To prevail on a claim of copyright infringement, a plaintiff must show valid ownership of a copyright and unauthorized copying by the defendant.
See e.g. Rogers v. Koons, 960 F.2d 301, 306 (2d Cir. 1992), cert. denied, 506 U.S. 934, 121 L. Ed. 2d 278, 113 S. Ct. 365 (1992); Stillman v. Leo Burnett Co. Inc., 720 F. Supp. 1353, 1358 (N.D.Ill. 1989). The Stillman court provided the following explanation:
To prevail on a copyright claim, a plaintiff must prove (1) a valid copyright, and (2) illicit copying. To prove illicit copying, he must establish both (1) copying, and (2) unlawful appropriation...To establish copying, a plaintiff must show (1) access, and (2) substantial similarity between the works 'when compared in their entirety including both protectible and unprotectible material'...Finally, to show unlawful appropriation (i.e. substantial similarity as a matter of law), the plaintiff must demonstrate that the defendant's copying extended to the plaintiff's protectible expression.
Stillman, 720 F. Supp. at 1358.
To prove actionable copying, a plaintiff must first show that her work was actually copied. A court may infer copying in the absence of direct evidence if the plaintiff demonstrates (a) substantial similarities between the two works; and (b) that the defendant had access to the copyrighted work. Laureyssens v. Idea Group. Inc., 964 F.2d 131, 140 (2d Cir. 1992). In the determination of whether actual copying occurred, "substantial similarity" means similarity between protected and unprotected elements of the work being considered. Access may be inferred when a defendant had a reasonable opportunity to view the plaintiff's work before creating its own. See Gaste v. Kaiserman, 863 F.2d 1061, 1066-67 (2d Cir. 1988); see also ABKCO Music, Inc. v. Harrisongs Music, Ltd., 722 F.2d 988, 998 (2d Cir. 1983).
Access may be established if a copyrighted work has been published, or evidence is introduced showing that "a third party with whom both the plaintiff and the defendant were dealing had possession of plaintiff's work." 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 13.02(A) 17-18 (1990). Access may also be inferred if the article alleged to infringe is strikingly similar to the copyrighted piece. Limited distribution of a copyrighted item may not be sufficient to support a finding of access. See, e.g., Selle v. Gibb, 741 F.2d 896 (7th Cir. 1984) (Court found plaintiff's song which was the subject of a copyright action was not published where the extent of dissemination was that plaintiff "played his song with his small band two or three times in the Chicago area and sent a tape and lead sheet of the music to eleven music recording and publishing companies. Eight of the companies returned the materials to [the plaintiff]; three did not respond." Id. at 898.)
Here, Plaintiff has not shown "distribution of copies" of its creations. Instead, the evidence suggests that each individual creation was designed for and sold to an individual.
A court must also determine whether the alleged copying constituted infringement. To prove infringement, a plaintiff must demonstrate substantial similarity between protected elements of its work and the work of the defendant. See Laureyssens, 964 F.2d at 141; see also Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir. 1976), cert. denied, 429 U.S. 980, 50 L. Ed. 2d 588, 97 S. Ct. 492 (1976). The Second Circuit recently provided insight into the meaning of "substantial similarity" in determining infringement in Knitwaves, Inc. v. Lollytogs, Ltd. (Inc.) d/b/a French Toast, 71 F.3d 996, 1995 WL 673250 (2d Cir. 1995), a case concerning copyright protection for fabric design. The court in Knitwaves, like this Court, compared products containing both protectible and unprotectible elements. In such a case, the Knitwaves court explained,
our inspection must be "more discerning"; we must attempt to extract the unprotectible elements from our consideration and ask whether the protectible elements, standing alone, are substantially similar.