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From Intellectual Property Law Daily, September 27, 2017

Replica-pill jewelry was protectable, but not infringed by works with similar concept

By Thomas Long, J.D.

An artist and metallurgist who made charm bracelets and necklaces featuring replicas of pharmaceutical pills failed to state copyright infringement claims against other designers and sellers of allegedly similar jewelry, the federal district court in New York City has determined. Although two of the three designs asserted by the artist were sufficiently original to merit copyright protection, the defendants’ works were not substantially similar to the asserted works. Copyright infringement claims brought under both U.S. and Canadian law were dismissed. In addition, the artist’s state-law unfair competition and trade dress infringement claims were preempted by the Copyright Act (Wolstenholme v. Hirst, September 26, 2017, Koeltl, J.).

Plaintiff Colleen Wolstenholme was a trained metallurgist who designed jewelry that incorporated replicas of pharmaceutical pills. Three of her designs were at issue in this case. The first work was a set of silver and gold replicas of various pharmaceutical pills (the "Pill Charms"). Wolstenholme used a lost-wax casting process to create the replica pills, and then soldered them to a loop to make them usable as charms. The second work was a charm bracelet incorporating some of the Pill Charms as charms on the bracelet ("Charmed"). The last work was a rosary-style necklace that incorporated some of the Pill Charms into the chain and pendant ("Hail Mary"). According to Wolstenholme, she intended the works to be "an indictment of society's treatment of pharmaceutical drugs." Wolstenholme owned a Canadian copyright registration for each of the three works. She applied for U.S. copyright registrations for the designs, but the applications were denied on the grounds that the works lacked originality.

Wolstenholme asserted that defendants Damien Hirst and Other Criteria (US), LLC, made and sold three works that infringed Pill Charms, Charmed, and Hail Mary (the "Hirst Works"). Two of the challenged works are bracelets that also incorporated replicas of pharmaceutical pills as charms (the "Hirst Bracelets"). The third was a rosary necklace that incorporated replica pills into the chain and pendant (the "Hirst Necklace"). Wolstenholme filed suit for infringement under both Canadian and U.S. copyright law, and for unfair competition and trade dress infringement under New York state law. The defendants moved to dismiss all of the claims.

Copyrightability—originality. The defendants argued that Wolstenholme’s jewelry lacked the requisite originality to qualify for copyright protection. Rejection of the copyright applications by the U.S. Copyright Office was not dispositive of the issue, the court noted, and the court made its own determination as to originality. Wolstenholme conceded that the designs of the pills themselves were not copyrightable. This concession was understandable, the court said, in light of cases stating that derivative works that simply cast a prior work in a new medium were not original. Therefore, the court dismissed the claim for copyright infringement of the Pill Charms under the U.S. Copyright Act.

However, Wolstenholme alleged sufficient originality in the selection, coordination, and arrangement of the Pill Charms in the Charmed and Hail Mary work to survive a motion to dismiss with respect to those two designs. Wolstenholme alleged that she deliberately chose only certain pills from the thousands available on the market, and that she combined and arranged the charms to express her idea for pill-inspired jewelry. The designs allegedly comprised unique combinations of pharmaceutical charms arranged in a pattern of various sized round and other geometric shaped tablets intermixed with capsules. She also interspersed charms "for weight and symmetry" and grouped together replications of pills that were often prescribed together. For Hail Mary, Wolstenholme stated that she "creatively selected" which pharmaceutical pills to use in the crucifix and creatively coordinated and arranged the charms on the chain. The creative selection, arrangement, and combination of the pills used in Charmed and Hail Mary was sufficient to meet the low bar of originality required by the Copyright Act. Therefore, those works were protectable, the court decided.

Substantial similarity. Even if Wolstenholme’s works were entitled to copyright protection, the Hirst Works were not substantially similar to protectable elements of those works and therefore could not infringe them. First, the court noted that the concept of pill-inspired jewelry was not itself protectable. Any similarities in the bracelets and necklaces that stemmed merely from the fact that they were both pieces of jewelry that incorporated replica pills were excluded under the substantial similarity analysis. The court considered only Wolstenholme’s selection, coordination, and arrangement of the replica pills on Charmed and Hail Mary to determine whether the overall "look and feel" was substantially similar to those elements found in the Hirst Works. In the court’s view, it was plainly observable that that the Hirst Bracelets and Necklace were not substantially similar to Charmed and Hail Mary. The Hirst Bracelets contained numerous differences from Charmed in the selection, arrangement, and coordination of the charms. The Hirst Works used different replica pills and different numbers of charms, and they incorporated other design elements not present in Wolstenholme’s designs. The parties’ respective necklaces were made of different materials. The works were, overall, dissimilar. Accordingly, the copyright infringement claims under U.S. law were dismissed.

Canadian copyright claims. Although the Charmed and Hail Mary works were sufficiently original under Canadian law because Wolstenholme exercised skill and judgment in the selection and arrangement of the Pill Charms incorporated into the works, the claims were dismissed because the Hirst Bracelets and Necklace did not infringe on the originality of Charmed and Hail Mary. Canadian law required there to be reproduction of a "substantial" part of a work for infringement to occur. For the same reasons that the court found a lack of substantial similarity under U.S. law, the court found that the defendants did not substantially copy Wolstenholme’s works.

Unfair competition and trade dress infringement. The defendants argued that Wolstenholme’s state-law unfair competition and trade dress infringement claims were preempted by the Copyright Act. The court agreed. In those claims, Wolstenholme did not allege that the defendants took any actions that caused her harm other than their alleged copying of her works. Wolstenholme merely sought to enforce her exclusive right to reproduce, distribute, and display her protectable works, and those rights were protected by the Copyright Act. Therefore, the claims were dismissed.

The case is No. 16 Civ. 4385 (JGK).

Attorneys: John L. Krieger (Dickinson Wright PLLC) for Colleen Wolstenholme. Dale Margaret Cendali (Kirkland & Ellis LLP) for Damien Hirst and Other Criteria [US], LLC.

Companies: Other Criteria [US], LLC.

MainStory: TopStory Copyright Trademark NewYorkNews

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