The opinion of the court was delivered by: KAPLAN
LEWIS A. KAPLAN, District Judge.
Plaintiff contends that defendants are infringing its allegedly copyrighted design for charms suitable for affixation to children's charm bracelets. The matter is before the Court on plaintiff's motion for a preliminary injunction and the motion of the individual defendant to dismiss the action as to him for lack of personal jurisdiction.
The Development of the Dispute
Plaintiff Markowitz Jewelry Company, Inc. ("MJC") is in the business of creating, manufacturing and distributing jewelry charms. It refers here to nine certificates of registration obtained by it for various of its items which, it says, have been displayed in the trade since 1988 and advertised since 1991.
In October 1996, defendant Vivit Lervisit, president and sole shareholder of defendant Chapal Zenray, Inc. ("Zenray"), visited MJC's New York office. He advised Baruch Markowitz, plaintiff's vice president, that Zenray was selling copies of MJC copyrighted charms to certain stores, including Hills, Mercantile and Target.
The record is silent as to Markowitz's immediate reaction to this news. In any case, however, Lervisit and Markowitz on that occasion discussed the possibility of an arrangement pursuant to which MJC would permit Zenray to sell copies of MJC copyrighted charms.
As far as the record discloses, no agreement was reached. Shortly after the October 1996 meeting, representatives from Target, Mercantile and Hills confirmed to Markowitz that they were buying allegedly infringing charms from Zenray.
MJC's preliminary injunction motion is, to say the least, confusing as to precisely which articles allegedly are infringed. The moving affidavit attaches nine certificates of registration for works described as "jewelry charm" but does not include photographs of the deposit copies.
The declaration of plaintiff's expert attaches photocopies of what he describes as copyrighted MJC charms and of the allegedly infringing items,
but there is nothing in the declaration that permits the reader to connect the photocopies of the allegedly infringed charms with any of the certificates of registration. An unauthenticated letter attached to plaintiff's opening brief, however, contains photocopies of what the letter says are the deposits filed with registrations VA 651-593 and 595, which are said to correspond to MJC's style # # 939-2 and 940-2, respectively.
This is confirmed by copies certified by the Copyright Office and submitted with defendants' papers.
In consequence, these two are the only items for which plaintiff has produced both evidence of registration and a copy capable of being compared with the accused articles.
The charms in question consist of a birthstone mounted in a gold-colored setting designed to represent a boy or a girl. Each setting consists of four elements: (1) a bail, which is a piece that permits the charm to be suspended from a necklace or bracelet, mounted atop (2) a round frame to hold a stone representative of the head, mounted atop (3) a frame to hold a stone representative of a torso, and (4) four beaded chains, each consisting of three beads, affixed appropriately to represent arms and legs. The "boy" and "girl" figures are substantially identical except that the boy torso frame is elliptical while the girl torso frame is triangular.
The overall appearance of the accused items is very similar to the allegedly infringed items. Each has the same components, and each component other than the bail is the same general shape. The accused items are about 40 percent larger than the allegedly infringed.
Putting aside such matters as the validity of MJC's copyrights and whether any otherwise copyrightable elements are functional and hence unprotectible, matters of no mean bearing on plaintiff's claim, there is little doubt as to the substantial similarity of the accusing and accused works. In view of the grounds on which this matter is decided, however, no further discussion is necessary at this time.
The Preliminary Injunction Motion
In order to obtain a preliminary injunction, MJC "must demonstrate (a) irreparable harm, and (b) either (1) a likelihood of success on the merits, or (2) sufficiently serious questions going to the merits to make them fair grounds for litigation and a balance of hardships tipping decidedly in its favor."
Irreparable injury is a sine qua non -- if there is no irreparable ...