Errant earrings: (c) but not trade dress success likely, still no irreparable harm

Ear Charms, Inc. v. Bling Jewelry, Inc., 2017 WL 2957796,
No. CV 16-02091 (C.D. Cal. Apr. 11, 2017)
Sandra Callisto designed a “stylish alternative to pierced
earrings” for Ear Charms, specifically “wave” earrings, which allegedly bore “a
unique and distinctive trade dress in the overall design of the product” consisting
of “four curls, bent in gentle turns that roll around the perimeter of the ear,
each widening to greater degrees until flattening out— like a wave rolling onto
land.”  Ear Charms registered copyrights
in the wave earrings.  Bling allegedly
sold copies smaller in size, scale, and weight than those of Ear Charms, which Ear
Charms alleged showed that defendants created molds and stamping dies from its
products. Defendants had also been making wholesale purchases of Ear Charm
products.
 

registered and allegedly infringing designs

Defendants didn’t challenge the validity of the copyrights,
and the court found access plus virtual identicality, leading to likely success
on the merits of the copyright claim. 
(As to the designs for which applications were merely pending, there
seems to me to be a Kalpakian problem
for some—how do you expect a starfish ear wrap to look?  As a dedicated Etsy browser, I think some,
though not all, of these are pretty much the basic idea of an X ear wrap.  Also, applying for one registration for a
silver-plated version of a charm and one for a gold-plated version seems to
miss the point of the copyright system.)
 

registration pending designs and alleged copies

Trade dress infringement: Ear Charms alleged inherent
distinctiveness of its “wave” trade dress, but Walmart says no go.  In
showing secondary meaning, Ear Charms relied on its founder’s declaration,
which averred that Ear Charms had been sold since 1982 and “state[d] in very
general terms that in thirty-five years the public has come to recognize
earrings bearing the Product Trade Dress and associate those products with high
quality and conformity to Plaintiff’s specifications and that the Product Trade
Dress has established strong secondary meaning and extensive goodwill.” Such a
conclusory declaration was insufficient to show likely success.  Ear Charms argued that intentional copying
shifted the burden to the defendant to show lack of secondary meaning, but the
Ninth Circuit disagrees, given that “[c]ompetitors may intentionally copy
product features for a variety of reasons. They may, for example, choose to
copy wholly functional features that they perceive as lacking any secondary
meaning because of those features’ intrinsic economic benefits.”
Unfair competition/misleading advertising under the
UCL:  Ear Charms suggested that the
relevant wrong here was conversion, but such a claim would be preempted by the
Copyright Act given that defendants lawfully bought Ear Charms products.
Likewise, the misleading advertising claim fell with the trade dress claim.

Irreparable harm: there’s no presumption of such harm in
copyright cases after eBay. The conclusory
claim that defendants’ solicitation of Ear Charms customers “ha[s], and unless
enjoined will, detrimentally effect [sic] Plaintiff’s overall ability to
control the use of [its intellectual property], thereby causing injury to
Plaintiff,” and the claim that Ear Charms “suffered lost profits and lost
customer goodwill” were insufficient.  Ear
Charms argued that defendants’ poor quality products would harm Ear Charms’
reputation, but lost goodwill/reputation claims “must be supported by
sufficient evidence demonstrating that such loss is likely,” and Ear Charms
lacked evidence. 

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