IP Law Daily, COPYRIGHT—D. Utah: Copyright infringement claims for ring designs dismissed but other claims proceed, (Nov 20, 2024)

By Brian Craig, J.D.

There is no substantial similarity between the protectable ring designs and the allegedly infringing designs.

In a copyright infringement case between competing companies that sell men’s wedding rings, the federal district court in Utah has dismissed claims alleging copyright infringement of ring designs but claims alleging removal of copyright management information will move forward. In dismissing the claims alleging infringement of the ring designs, the court found no substantial similarity between the protectable ring designs and the allegedly infringing designs. The court declined, however, to dismiss claims for unlawful falsification and removal of copyright management information based on allegations of using a coding mechanism to obscure a watermark (Diamonds Direct, L.C. v. Manly Bands, No. 2:23-cv-00870-AMA-JCB (D. Utah Nov. 18, 2024)).

Diamond Direct, L.C. doing business as Lashbrook (hereinafter “Lashbrook”) and Manly Bands both sell men’s wedding rings. Manly Bands was once a customer of Lashbrook. Manly Bands would source and resell products from Lashbrook. In 2021, the relationship turned sour when Lashbrook discovered that Manly Bands was manufacturing knockoffs of some of the most popular ring designs through a third party in China. Manly Bands insisted that the designs were not protected by copyright and then started making rings in its own facilities. Lashbrook sued Manly Bands along with its Co-CEOs and President for copyright infringement, unlawful falsification and removal of copyright management information (“CMI”), unfair competition under the Lanham Act, and various Utah state-law violations. To support falsification and removal of CMI, the complaint alleges that Manly Bands rips some of the product images directly from Lashbrook’s servers and then uses a coding mechanism to obscure Lashbrook’s watermark so it can pass those images off as its own. Manly Bands moved to dismiss.

Copyright infringement. The court dismissed the claims alleging copyright infringement with the ring designs. The court found that many of the ring designs are not entitled to copyright protection. The court agreed with the Copyright Office’s conclusion that many of the designs were insufficiently creative to qualify for registration. The designs are similar to unprotectable sculptures consisting of simple works made from basic combinations of a few commonplace elements. Many of the designs have a contrasting inlay or inner band, but such basic shapes are not protectable. For example, a wedding ring with a titanium exterior and an inner band made of hardwood is not protected by copyright.

Furthermore, the court found no substantial similarity with the other rings designs that are registered with the Copyright Office. For a ring with a coniferous tree line, Manly Bands’ design reflects differing expressions as to the height, density, shape, and branch structure of the tree. For another alleged infringing ring design, there are key differences in the shape and orientation of the grains in the two designs. A ring with a mountain range design sold by Manly Bands has less contrast, more sloped mountainsides, and sharper peaks in a more rugged arrangement than Lashbrook’s design. Because there is no substantial similarity between Lashbrook’s protectable designs and the allegedly infringing designs, the court dismissed the copyright infringement claims.

Vicarious liability. The court, however, denied the motion to dismiss the claims alleging contributory and vicarious liability. Lashbrook asserts copyright infringement claims regarding the product images. The complaint alleges that Manly Bands knew that infringing copies of the product images were made each time a consumer used a customer ring builder on the Manly Bands website, and that Manly Bands contributed to those infringements by making the product images available on its website. Thus, Lashbrook has pleaded each element of a contributory liability claim. Lashbrook has also alleged that Manly Bands had the right to supervise consumers’ infringements and profited from them through sales and market exposure.

Removal of CMI. The court also denied the motion to dismiss the claims alleging falsification and removal of CMI with the images. Falsification and removal of CMI required intent and knowledge. The complaint sufficiently alleges that Manly Bands knowingly used Lashbrook’s CMI alongside the product images with the intent to conceal its infringement of the images with its custom ring builder feature.

Trade dress. Next, the court dismissed the claims under the Lanhan Act alleging unfair competition and trade dress infringement. Here, Lashbrook has not alleged that the product images are non-functional, which is a required element under the Lanham Act for trade dress infringement.

State law claims. Finally, the court dismissed Utah state law claims for unfair competition, pattern of unlawful activity, and civil conspiracy. Lashbrook’s claim under the unfair competition statute arises from alleged copyright infringement. The statute does not list copyright infringement as a possible basis for a claim, even though patent and trademark infringement are listed. Lashbrook’s civil conspiracy claim is barred because Manly Bands, as a business entity, cannot conspire with its own Co-CEOs and President.

Therefore, the court dismissed the copyright infringement claims surrounding the ring designs but permitted the claims alleging falsification and removal of CMI of images to proceed.

The Case is No. 2:23-cv-00870-AMA-JCB.

Judge: Allen, A.

Attorneys: Brian N. Platt (Workman Nydegger) for Diamonds Direct. Brian D. Saucier (Mandell Menkes LLC) for Manly Bands.

Cases: Copyright TechnologyInternet Trademark UtahNews