## Facts

- Diamond Direct, LLC designed and sold “ballerina-style” diamond rings featuring a skirt of tapered baguettes set on rows of narrow vertical prongs, paired with clustered stones above.
- Diamond Direct claimed its designs were distinguishable from existing ballerina-style rings because they combined the ballerina skirt with a multi-tiered, rounded cluster of tightly packed small stones.
- The designs at issue included one reference style and two larger styles with subtle dimensional differences.
- Star Diamond Group, Inc., a competitor, sold rings Diamond Direct alleged copied Diamond Direct’s designs and overall ring configuration.
- Diamond Direct asserted copyright protection in its ring designs based on registration certificates.
- Diamond Direct asserted unregistered trade dress in the overall ring configuration and claimed the design had acquired secondary meaning identifying Diamond Direct as the source.
- Diamond Direct relied primarily on approximately $150,000 in advertising and sales of roughly 3,000 rings; it offered no consumer survey evidence.

## Issues

1. Whether Diamond Direct’s ring designs contained sufficient original, protectable expression to support valid copyrights despite extensive prior art in ballerina-style rings.
2. Whether, assuming valid copyrights, Star Diamond copied protectable elements of Diamond Direct’s designs.
3. Whether Diamond Direct’s unregistered product-design trade dress had acquired secondary meaning identifying Diamond Direct as the source.
4. Whether Diamond Direct could show a likelihood of consumer confusion as to source under Lanham Act § 43(a).
5. Whether related state-law unfair competition claims survived if the federal intellectual property claims failed.

## Decision

- The court granted Star Diamond’s motion for summary judgment and dismissed the amended complaint in full.
- The court held Diamond Direct failed to establish valid copyright protection in the claimed designs because the asserted features did not show protectable originality in a crowded field of similar jewelry designs.
- The court held Diamond Direct failed to raise a triable issue that its unregistered ring configuration had acquired secondary meaning; without secondary meaning, the trade dress claim failed.
- The court dismissed the related state-law claims as coextensive with and dependent on the failed federal claims.

## Legal Principles

- Copyright requires (1) ownership of a valid copyright and (2) unauthorized copying of original elements; only original expression is protectable.
- A copyright registration certificate is prima facie evidence of validity, but the presumption is rebuttable and its weight is within the court’s discretion.
- In design fields with extensive prior art, the scope of protectable expression is narrow; incremental variations on common styles may be insufficient to establish protectable originality.
- Unregistered trade dress under Lanham Act § 43(a) requires proof of (1) distinctiveness (often through secondary meaning for product design) and (2) likelihood of consumer confusion.
- Secondary meaning may be shown through factors such as advertising, sales success, duration and exclusivity of use, media coverage, and direct consumer evidence (including surveys); in markets with common similar designs, stronger proof is typically required.

## Conclusion

The court entered summary judgment for the defendant because the plaintiff’s ballerina-style ring designs did not contain protectable original expression in light of prior art, and the plaintiff’s unregistered product-design trade dress lacked sufficient evidence of secondary meaning to function as a source identifier, requiring dismissal of the federal and parallel state-law claims.


Diamond Direct, LLC v. Star Diamond Grp., Inc., 116 F. Supp. 2d 525 (S.D.N.Y. 2000)