Anything Your Heart Designs: Swarovski Hit with Copyright Infringement of Galatea’s “Two In One Heart” Design

by Knobbe Martens
Contact

Knobbe Martens

On December 4, 2017 Galatea Jewelry (“Galatea” or “Plaintiff”) filed a copyright infringement suit in the District Court for the Central District of California against the well-known crystal jewelry producer and retailer Swarovski North America Limited and its related entities, Swarovski Retail Ventures Ltd., Swarovski Digital Business USA Inc., and Swarovski Crystallized LLC (collectively, “Swarovski”).

Galatea states that in 2009, its principal, Chi Huynh developed a jewelry design that he called TWO IN ONE HEART Design which was comprised of two overlapping hearts that were made from a single loop of metal. Later, Chi also created a catalog of other types of jewelry in the TWO IN ONE HEART Design, which now makes up Galatea’s Two of One Heart™ line. Galatea now owns, by assignment from Chi, the copyrights in the TWO IN ONE HEART Design (U.S. Copyright Registration No. VAu 1-002-027) and the TWO OF ONE HEART Catalog (U.S. Copyright Registration No. VAu 1-010-959).

This suit arises out of Swarovski’s alleged infringement of Galatea’s copyrighted jewelry designs. At issue in this case is Chi’s design for Galatea’s Two of One Heart™ line.

Galatea’s TWO IN ONE HEART Design can be seen below

According to the complaint, Chi’s designs for Galatea are sold in over 1,000 retail jewelers throughout the U.S., exhibited at major trade shows, and sold on Galatea’s website http://galateausa.com/.  Galatea claims that in 2010, several years before Swarovski’s alleged infringement, Galatea offered for sale and sold its Two of One Heart™ line which included the TWO OF ONE HEART Designs. Galatea states these were sold through the TWO OF ONE HEART Catalog, Galatea’s retail network, website, and trade shows, one of which Galatea claims Swarovski routinely participated in. 

Galatea alleges that around January 2016, several years after Galatea created and publicized its TWO OF ONE HEART Designs, Swarovski began to manufacture and sell, without permission from Chi or Galatea, jewelry that featured a design that was a copy of, or substantially similar to, the TWO OF ONE HEART Designs. Galatea claims that Swarovski promoted the allegedly infringing design as part of its Valentine’s Day collection and introduced promotional ads and videos featuring the well-known supermodel Miranda Kerr. 

The Galatea and Swarovski products can be seen below: 

 

Galatea claims that prior to Swarovski’s advertisement and production of its allegedly infringing products, Swarovski did not offer heart design jewelry that was arranged in the same manner that Galatea had designed its TWO OF ONE HEART Designs. Galatea explains that its designs involve an optical illusion of one heart that is comprised of two hearts which overlap in the same loop of metal. 

In the complaint, Galatea provided the images below to explain the steps Swarovski allegedly took to copy its design.  Galatea alleges that Swarovski merely (1) horizontally flipped the Galatea design; (2) removed the existing diamonds; (3) covered a larger portion of the design with crystals; and (4) tapered the points and rounded the edges.

Additionally, examples of Swarovski’s advertisements that Galatea included in its complaint can be seen below:

Galatea alleges that Swarovski had access to Galatea’s TWO OF ONE HEART Designs through Galatea’s website, trade shows, industry publications, and retail jeweler network. Moreover, Galatea alleges that Swarovski intentionally or recklessly copied Galatea’s designs, which Galatea claims constitutes willful copyright infringement of their designs under 17 U.S.C. § 501. Among Galatea’s demands for relief are injunctive relief, recovery of either its damages and Swarovski’s profits attributable to its alleged infringement of Galatea’s designs, or statutory damages that Galatea claims should be enhanced due to its claim that Swarovski’s infringement was willful and/or reckless.

It will be interesting to see how Swarovski defends this suit and whether Swarovski argues the elements in the jewelry are not copyrightable because they are scenes a faire. Generally, to prove copyright infringement, a Plaintiff must show that the infringing design is “substantially similar” to the copyrighted design.  However, under the scenes a faire doctrine, courts will not protect a copyrighted work from infringement if the expression embodied in the work necessarily flows from a commonplace idea, the elements of the work are indispensable, or the elements of the work are standard in the treatment of a certain idea.  If the court determines that scenes a faire applies to elements of a design, then it will only be entitled to “thin” copyright protection and the Plaintiff must prove that the infringing design is “virtually identical” to its copyrighted design, which is significantly harder to prove.  Copyright protection can also be granted based on the “selection and arrangement” of unprotectable elements.  But, under the Ninth Circuit’s Satava case, the bar for copyrightability due solely to selection and arrangement is quite high: “a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.” It will also be interesting to see whether the crystal jewelry retailer can really have anything its heart designs.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Knobbe Martens | Attorney Advertising

Written by:

Knobbe Martens
Contact
more
less

Knobbe Martens on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.