IP Law Daily Internet seller ordered to cease copying jewelry manufacturer’s protected designs
Wednesday, February 1, 2017

Internet seller ordered to cease copying jewelry manufacturer’s protected designs

Origami Owl, a producer of low-priced jewelry, was entitled to an injunction prohibiting an individual (Julie Mayo) from continuing to produce and sell jewelry that was similar to Origami Owl’s patented design for a heart-shaped glass locket and its copyrighted jewelry designs, the federal district court in Phoenix, Arizona has decided. The court granted summary judgment to Origami Owl on its patent and copyright infringement claims and awarded it minimum statutory damages for each of the 11 copyrights Mayo infringed, totaling $8,250 (Origami Owl LLC v. Mayo, January 31, 2017, Campbell, D.).

Origami Owl creates and produces low-priced ornamental jewelry, sold on the Internet and through a sales force of independent distributors. In January 2015, Origami Owl filed suit against West Coast Charms, LLC (WCC), its principal, Julie Mayo, and Ann Mayo, claiming copyright infringement, design patent infringement, trademark infringement, and unfair competition. WCC filed various counterclaims. In February 2016, the court entered default judgement against WCC. On January 17, 2017, the court entered judgment against Ann Mayo pursuant to a stipulation. The case against Julie Mayo had been stayed during the pendency of a bankruptcy proceeding, but the stay was lifted on September 23, 2016.

Origami Owl contended that following her bankruptcy, Julie Mayo continued to offer and sell infringing charms, dangles, and heart-shaped glass lockets. Origami Owl moved for partial summary judgment on its copyright and design patent infringement claims and requested a permanent injunction. Mayo, proceeding pro se, also moved for summary judgment. The court denied Mayo’s motion, finding that she failed to advance any legal argument or facts to support a cognizable defense.

Copyright infringement. To establish copyright infringement, a plaintiff must prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. To establish ownership, Origami Owl provided copyright certificates covering all 42 jewelry items Mayo allegedly infringed. Mayo failed to offer any evidence to rebut the presumed validity of Origami Owl’s copyrights.

As to the element of copying, it was undisputed that Mayo had access to Origami Owl’s works. In email exchanges with representatives at Origami Owl, Mayo specifically stated that she intended to use Origami Owl’s designs. She also ignored demands to cease infringement.

In determining whether two works are substantially similar, courts in the Ninth Circuit employ a two-part analysis: an objective extrinsic test and a subjective intrinsic test. Regarding the extrinsic test, the court made a side-by-side comparison of Origami Owl’s copyrighted works and Mayo’s works, and found them to be "identical in subject matter, shape, color, and arrangement." Mayo herself conceded as much. The court also determined that the intrinsic test was satisfied. Because the works were simple jewelry items, in the court’s view, an ordinary, reasonable observer would find the works substantially similar in their "total concept and feel."

Origami Owl was entitled to summary judgment on its copyright infringement claim. The court granted Origami Owl’s request for minimum statutory damages for each of the 11 copyrights infringed, totaling $8,250.

Design patent infringement. Origami Owl also was entitled to summary judgment on its patent infringement claim. Origami Owl owns U.S. Patent No. D.711.278, a design patent for a heart-shaped glass locket. In determining whether an accused product infringes a patented design, courts apply the "ordinary observer" test. Based on a side-by-side comparison of Mayo’s heart-shaped glass locket with Origami’s patented locket, the court determined that "overall ornamental visual impression" of the lockets was similar.

Permanent injunction. The court granted Origami Owl’s request for a permanent injunction barring Mayo from infringing on its copyrights and design patent. An injunction was warranted, according to the court, because "Defendant has no regard for Plaintiff’s copyright or patent interests or the federal law requiring that they be honored." She had ignored multiple warnings, notices, and requests to cease the infringement. To the court, it was clear that "only an injunction will stop Defendant’s infringement and protect Plaintiff’s rights."

The case is No. 2:15-cv-00110-DGC.

Attorneys: E. Jeffrey Walsh (Greenberg Traurig LLP) for Origami Owl LLC. Julie E. Mayo d/b/a West Coast Charms, pro se.

Companies: Origami Owl LLC; West Coast Charms

MainStory: TopStory Copyright Patent ArizonaNews

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