Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 1 of 36. PageID #: 1957
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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`Case No. 1:05cv2241
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`JUDGE O'MALLEY
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`OPINION AND ORDER
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`TACORI ENTERPRISES,
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`Plaintiff,
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`v.
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`REGO MANUFACTURING,
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`Defendant.
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`Before the Court are two filings: (1) the Motion of Plaintiff Tacori Enterprises for Partial
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`Summary Judgment (Doc. 87); and (2) Defendant Rego Manufacturing’s Motion for Summary
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`Judgment (Doc. 93). For the reasons articulated below, Plaintiff Tacori Enterprise’s motion for
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`partial summary judgment is GRANTED, and Defendant Rego Manufacturing’s motion for
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`summary judgment is DENIED.
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`I. BACKGROUND
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`Plaintiff Tacori Enterprises (“Tacori”) has brought suit against Defendant Rego
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`Manufacturing (“Rego”), alleging five claims in its Amended Complaint: (1) federal copyright
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`infringement; (2) federal contributory copyright infringement; (3) federal trade dress infringement;
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`(4) unfair competition under Ohio law; and (5) violations of the Ohio Deceptive Trade Practices Act
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`(Doc. 22). Tacori’s federal and state claims arise from Rego’s sale of various engagement and
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`wedding rings in February 2004 that, according to Tacori, infringe Tacori’s copyrighted ring design
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`and/or are confusingly similar to rings that Tacori designs and manufactures. Generally, Rego has
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`taken the position that Tacori has no intellectual property rights in the contested designs.
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 2 of 36. PageID #: 1958
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`The parties have now filed cross-motions for summary judgment. Tacori moves for partial
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`summary judgment on the issue of the validity and enforceability of one of its federally registered
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`copyrights – Copyright Registration No. VA 1-120-166 (also known as the HT 2229 Tacori
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`“Crescent Silhouette” Ring Design) (the “HT 2229 Design”). Rego opposes Tacori’s motion and
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`moves for an order granting it summary judgment on Tacori’s federal copyright and trade dress
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`claims. Specifically, Rego seeks an order that: (1) Tacori does not possess a validly obtained
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`registration from the Copyright Office for the HT 2229 Design and its progeny; (2) Tacori does not
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`have standing to bring a Copyright Infringement Action; (3) Tacori is barred from seeking statutory
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`damages and attorneys’ fees under the Copyright Act; and (4) Tacori does not possess a recognizable
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`trademark upon which Rego infringed.
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`In support of their cross-motions, Tacori and Rego have engaged in extensive briefing.
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`Tacori has filed: (1) a memorandum in support of its motion for partial summary judgment (Doc.
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`87); (2) a reply memorandum in support of its motion for partial summary judgment (Doc. 102);
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`(3) an opposition to Rego’s motion for summary judgment (Doc. 106); (4) a sur-reply to Rego’s
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`motion for summary judgment (Doc. 117); and (5) a supplement to briefing on the motions for
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`summary judgment (Doc. 136). Rego has filed: (1) a memorandum in support of its motion for
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`summary judgment and in opposition to Tacori’s motion for partial summary judgment (Doc. 93);
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`2
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 3 of 36. PageID #: 1959
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`(2) a reply memorandum in support of its motion for summary judgment (Doc. 109); (3) a response
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`to Tacori’s sur-reply (Doc. 118); and (4) a reply to Tacori’s supplemental briefing (Doc. 139).1
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`The most recent round of briefing was generated in response to an opinion issued by United
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`States District Judge Gary Allen Feess on August 20, 2008 in two consolidated Central District of
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`California cases involving Tacori that addressed virtually the same issues presented by the motions
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`in this case. Doc. 136-6 (Tacori Enterprises v. Beverlly Jewellery Co., Ltd., Case No. 06-5170 and
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`Tacori Enterprises v. Pink Diamond, Case No. 07-3939) (the “California Opinion”). In the
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`California Opinion, Judge Feess: (1) granted Tacori’s motion for partial summary judgment as to
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`the validity of the copyright registration of the HT 2229 Design; and (2) denied the defendants’
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`motions for summary judgment as to Tacori’s copyright and trade dress claims. While the Court
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`recognizes that the California Opinion did not involve Rego and is not binding, and that Rego has
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`indicated that some of its arguments were not presented by the defendants in California, the Court
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`nevertheless is persuaded in part by the well-reasoned analysis in the California Opinion and will
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`refer to that analysis in this Opinion and Order where applicable.
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`1 In the interim, Rego also filed a Rule 56(f) motion for a continuance of its deadline to
`file an opposition to Tacori’s motion for partial summary judgment (Doc. 90). Rego requested a
`continuance to allow it time to depose Tacori’s expert witness, Sarkis Nourian. After briefing
`the issue, the Court granted Rego’s motion in part in an Order dated January 4, 2008 (Doc. 94).
`Rego, however, filed its motion for summary judgment eight days before Nourian was scheduled
`to be deposed.
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`3
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`

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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 4 of 36. PageID #: 1960
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`II. STATEMENT OF FACTS
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`A.
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`Facts Related to Tacori’s Copyright of the HT 2229 Design
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`1.
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`Oral Agreement Between Tacorian and Karounian
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`Haig Tacorian, President of Tacori, and Garo Karounian,2 currently the sole shareholder of
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`Anais Designs, Inc.,3 have worked together to create and develop ring designs since approximately
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`1994. Doc. 87-3 (Tacorian Decl. at ¶ 2); Doc. 87-4 (Karounian Decl. at ¶ 2). At an unspecified date
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`at the beginning of their working relationship, Tacorian and Karounian reached an oral agreement.
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`Id.; Karounian Dep. 33:19-21, 103:17-20 (July 16, 2007) (“Karounian Dep.”). Karounian agreed
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`that Tacori would own any ring designs created and developed by him and Tacorian. Doc. 87-3
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`(Tacorian Decl. at ¶ 2); Doc. 87-4 (Karounian Decl. at ¶ 2). In exchange, Tacorian agreed that
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`Karounian’s company, then called Anais Fine Jewelry Mfg., would be the manufacturer of these
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`Tacori ring designs. Id. At no time during this working relationship was Karounian ever an
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`employee of Tacori. Karounian Dep. 91:16-21.
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`2 The parties spell “Karounian” differently; Tacori spells his name “Karounian,” and
`Rego spells his name “Kourounian.” For consistency, the Court will use “Karounian”
`throughout this Opinion and Order.
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`3 As discussed throughout the Opinion and Order, Rego notes in its reply brief that Anais
`Designs, Inc. was not incorporated until May 29, 2003. Doc 109-3 (Corporate Information for
`Anais Designs, Inc.); Doc. 117-2 (Karounian Second Supplemental Decl. at ¶ 4). Karounian,
`however, states in a Declaration that he previously was the owner of Anais Fine Jewelry Mfg., a
`California sole proprietorship, and that in his mind, he treated Anais Fine Jewelry Mfg. and
`Anais Designs, Inc. as the same company. Doc. 117-2 (Karounian Second Supplemental Decl. at
`¶¶ 3-4). Further, Karounian states that Anais Designs, Inc. is the successor-in-interest to Anais
`Fine Jewelry Mfg. and assumed all of the assets and liabilities of Anais Fine Jewelry Mfg. Id. at
`¶ 4. Nevertheless, Rego makes much of the fact that Anais Designs, Inc. did not exist prior to its
`incorporation in 2003.
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`4
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 5 of 36. PageID #: 1961
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`2.
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`Creation of the HT 2229 Design
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`Although there are no records reflecting the actual date of design, Tacorian and Karounian
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`state that the HT 2229 Design was created and developed in 1999. Doc. 87-3 (Tacorian Decl. at ¶¶
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`3, 7 ); Doc. 87-4 (Karounian Decl. at ¶¶ 3, 10)). That summer, Karounian was experimenting with
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`a table-top lathe and two brass rods. Doc. 87-4 (Karounian Decl. at ¶ 3). Karounian’s
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`experimentation initially yielded a ring with a heart-shaped design; then, upon a fortuitous reversal
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`of the heart design, Karounian created a ring with crescent shapes that ultimately became the HT
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`2229 Design. Id. at ¶¶ 3-10; Doc. 87-3 (Tacorian Decl. at ¶¶ 3-5); Karounian Dep. 109:18-112:22.
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`Tacorian and Karounian describe the design process as follows. First, Karounian bored
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`approximately 22 millimeters from the inside of one of the brass rods.4 Doc. 87-4 (Karounian Decl.
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`at ¶ 3). Karounian then grinded the outside of the second brass rod (to approximately 20
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`millimeters) so that it was able to fit inside the first brass rod. Id. at ¶ 4. Karounian next bored
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`approximately 17 millimeters from the inside of the grinded second brass rod. Id. at ¶ 5. Then,
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`Karounian cut both rods and was left with an outer ring (made from the first brass rod) and an inner
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`ring (made from the second brass rod) that could be fit into the outer ring. Id. at ¶ 6. Using a hand
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`grinder, Karounian carved the top portion of a heart on the outer ring and the v-shape part of a heart
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`on the inner ring, so that when the inner ring was fit into the outer ring, heart shapes were seen. Id.
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`at ¶ 7. Karounian then showed this design with heart shapes to Tacorian, and they discussed
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`modifications to the design. Id.; Doc. 87-3 (Tacorian Decl. at ¶ 3). This initial heart-shaped design
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`was labeled the HT 2228 Design. Karounian Dep. 108:23-109:1.
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`4 Drawings that represent each step of the design process are attached as exhibits to
`Karounian’s Declaration. Doc. 87-4.
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`5
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 6 of 36. PageID #: 1962
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`Then, to create the crescent shapes of the HT 2229 Design, Karounian began to reverse the
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`heart shapes of the HT 2228 Design by carving a v-shape part of a heart on the outer ring. Doc. 87-4
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`(Karounian Decl. at ¶ 8). When the solid inner ring was placed inside the carved outer ring, a solid
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`crescent design was created next to a pierced, or open, v-shaped design. Id. Karounian and
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`Tacorian both liked this crescent-shaped design and refined it by, among other things, making the
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`ring thinner, adding a pave diamond setting to each crescent shape, and adding milligrain. Id. at ¶
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`9; Doc. 87-3 (Tacorian Decl. at ¶ 4). This ring design, with crescents in the side of the shank of the
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`ring, was labeled the HT 2229 Design. Doc. 87-3 (Tacorian Decl. at ¶ 5); Doc. 87-4 (Karounian
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`Decl. at ¶ 9).
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`Tacorian and Karounian both state that they were jointly responsible for the creation of the
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`HT 2229 Design. Doc. 102-12 (Tacorian Supplemental Decl. at ¶¶ 2-3); Doc. 102-13 (Karounian
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`Supplemental Decl. at ¶¶ 2-3). They each declare that Tacorian, on behalf of Tacori, and Karounian,
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`on behalf of Anais, were joint authors of the HT 2229 Design. Id.
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`Further, Tacorian and Karounian both state they did not base the design of the HT 2229
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`Design on any other ring or jewelry design. Doc. 87-3 (Tacorian Decl. at ¶ 6); Doc. 87-4
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`(Karounian Decl. at ¶ 11). In fact, both declare that they were unaware of any other rings that had
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`crescents in the side of the shank of the ring at the time the HT 2229 Design was created. Id.
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`Rather, Karounian writes in his Declaration that the initial inspiration of the HT 2229 Design was
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`the result of his “lucky attempt” to reverse the heart-shaped HT 2228 Design. Doc. 87-4 (Karounian
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`Decl. at ¶ 11).
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`6
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 7 of 36. PageID #: 1963
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`3.
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`Tacori’s First Sale of the HT 2229 Design
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`The first ring with the HT 2229 Design was ordered by Deluca Jewelers of Palm Desert,
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`California on September 30, 1999. Doc. 87-3 (Tacorian Decl. at ¶ 7). Tacori shipped the order with
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`the HT 2229 Design to Deluca Jewelers on November 16, 1999. Id.
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`4.
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`Tacori’s Copyright Registration of the HT 2229 Design in 2001
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`On July 31, 2001, Tacori protected the HT 2229 Design by obtaining a federal copyright
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`registration from the United States Copyright Office. Doc. 87-3 (Tacorian Decl. at ¶ 8). Tacori was
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`granted Copyright Registration No. VA 1-120-166 for the HT 2229 Design. Id. As discussed in
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`more detail below, however, Tacori made what it refers to as four “technical” and “inadvertent”
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`mistakes in the 2001 application that were subsequently corrected by Supplemental Registrations
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`filed in 2003 and again in 2005. Id.; Doc. 87-3 at pp. 9-12 (“2001 Certificate of Registration”).
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`First, Tacori indicated that it was the sole author of the HT 2229 Design via a “work made for hire”
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`and thereby failed to include Anais Designs, Inc. as an author. Id. Second, Tacori failed to identify
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`that Tacorian and Karounian contributed to the design as a “work made for hire.” Id. Third, Tacori
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`failed to note that Anais Designs, Inc. transferred ownership of the copyright to Tacori by
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`assignment. Id. And fourth, Tacori incorrectly wrote that the HT 2229 Design was completed in
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`2000 and first published on October 10, 2000, instead of writing that the design was actually
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`completed in 1999 and first published on November 16, 1999. Id.
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`5.
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`Written Assignment Agreement between Tacori and Anais Designs, Inc. in 2003
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`On December 23, 2003, Haig Tacorian, on behalf of Tacori, and Garo Karounian, on behalf
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`of Anais Designs, Inc., entered into a written “Copyright Assignment Agreement For Previously
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`Created Works.” Doc. 93-4 (the “2003 Assignment Agreement”); Doc. 109-3 (Corporate
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`7
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`

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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 8 of 36. PageID #: 1964
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`Information for Anais Designs, Inc.). The 2003 Assignment Agreement sought to memorialize a
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`previous oral agreement between Tacori and Anais. Id.; Karounian Dep. 103:3-105:1; Doc. 117-2
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`(Karounian Second Supplemental Decl. at ¶¶ 5-7). The 2003 Assignment Agreement stated in
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`relevant part:
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`In consideration of past good and valuable consideration, the receipt and sufficiency of
`which is hereby acknowledged, [Anais Designs, Inc.] hereby irrevocably sells, grants,
`conveys, assigns and sets over to Tacori . . . all of [Anais Designs, Inc.’s] right, title and
`interest in and to the jewelry designs created for Tacori for usage in Tacori’s business,
`including but not limited to the designs set forth in ATTACHMENT “A”.
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`Doc. 93-4. Attachment A identified several designs but did not include the HT 2229 Design, which
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`as discussed below, Karounian suggests was intended to be included but unfortunately was omitted
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`from the list. Id.; Doc. 117-2 (Karounian Second Supplemental Decl. at ¶ 6).
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`Rego, however, insists that this omission of HT 2229 from Attachment A was no accident.
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`As noted, Rego points out in its reply memorandum that Anais Designs, Inc. was not incorporated
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`until May 29, 2003. Doc. 109-3 (Corporate Information for Anais Designs, Inc.). Consequently,
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`Rego concludes that the HT 2229 Design could not have been included in Attachment A of the 2003
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`Assignment Agreement, because: (1) Anais Designs, Inc. did not exist when the HT 2229 Design
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`was allegedly created in 1999; and (2) there was no evidence that Karounian had assigned his rights
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`to the HT 2229 Design to Anais Designs, Inc. In other words, Rego submits that Karounian – not
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`Anais Designs, Inc. – still owned the rights to the HT 2229 Design after execution of the 2003
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`Assignment Agreement and apparently still does today.5
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`5 As noted above, and as will be discussed below, Tacori argues that Anais Designs, Inc.
`did, in fact, own the rights to the HT 2229 Design as of the date of the incorporation because it
`was the successor-in-interest to Anais Fine Jewelry Mfg. and had acquired all of its assets and
`liabilities.
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`8
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 9 of 36. PageID #: 1965
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`6.
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`Tacori’s Supplemental Copyright Registration in 2003
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`On December 29, 2003, six days after the 2003 Assignment Agreement was signed, Attorney
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`Howard Kroll, on behalf of Tacori, filed a Supplementary Registration with the Copyright Office
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`regarding its copyright for the HT 2229 Design. Doc. 87-3 at pp. 13-16 (the “2003 Supplementary
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`Registration”). In the 2003 Supplementary Registration, Tacori wrote that Anais Designs, Inc. was
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`a co-author of the HT 2229 Design. Id. Tacori explained, “Anais Designs, Inc., a California
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`corporation, was an author of the jewelry design as the contribution was a work made for hire; name
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`and related information was accidentally omitted” from the 2001 Certificate of Registration. Id.
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`Tacori also wrote in the 2003 Supplementary Registration that Tacori obtained ownership of the
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`copyright “by assignment” and that this “information was accidentally omitted” from the 2001
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`Certificate of Registration. Id.
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`Rego, however, maintains that Tacori’s 2003 Supplementary Registration was still incorrect,
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`because Anais Designs, Inc. was not the author of the HT 2229 Design since it did not exist as of
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`the date of authorship, and was not the owner of the HT 2229 Design because the 2003 Assignment
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`Agreement was ineffective. Rego also suggests that Tacori committed fraud upon the Copyright
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`Office and the public by filing the 2003 Supplementary Registration, most notably because “Tacori
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`deceived the Copyright Office into believing that the [2003 Assignment Agreement] had occurred
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`no later than the time of Tacori’s original filing in 2001.” Doc. 109 at 5. Rego writes, “The
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`recentness of the assignment was concealed from both the Copyright Office and the public that
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`would have been searching these records,” especially when Tacori was starting to file a number of
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`lawsuits against several ring producers who were allegedly infringing Tacori’s copyrighted design.
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`Id.
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`9
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 10 of 36. PageID #: 1966
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`7.
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`Tacori’s Supplemental Copyright Registration in 2005
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`On August 18, 2005, Attorney Howard Kroll, on behalf of Tacori, filed another
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`Supplementary Registration. Id. at 17-18 (the “2005 Supplementary Registration”). In the 2005
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`Supplementary Registration, Tacori wrote that the HT 2229 Design was completed in 1999, not
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`2000. Id. Tacori also wrote that the first publication of the HT 2229 Design occurred on November
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`17, 1999, not October 10, 2000, as was written in the 2001 Certificate of Registration. Id.
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`8.
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`Amended Assignment Agreement Between Tacori and Anais Designs, Inc. in
`2008
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`On February 20, 2008, in the midst of briefing for the parties’ cross-motions for summary
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`judgment, Haig Tacorian, on behalf of Tacori, and Garo Karounian, on behalf of “Anais Designs,
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`Inc., as the successor-in-interest to Anais Fine Jewelry Mfg.,” entered into the “Amended Copyright
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`Assignment Agreement For Previously Created Works.” Doc. 117-2 (the “2008 Amended
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`Agreement”). The 2008 Amended Agreement sought to correct what Karounian describes as the
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`inadvertent omission of the HT 2229 Design and other jewelry designs from Attachment A of the
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`2003 Assignment Agreement. Doc. 117-2 (Karounian Second Supplemental Decl. at ¶ 6).
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`Karounian declared, “It was my intent in 1999, when I agreed orally to assign the copyright of HT
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`2229 to Tacori, in 2003, when I signed the Copyright Assignment Agreement, and in 2008, when
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`I signed the Amended Copyright Assignment Agreement, that Tacori would be the owner of the
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`copyright of HT 2229.” Id. at ¶ 7.
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`B.
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`Facts Related to Tacori’s Trade Dress
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`To date, the United States Patent and Trademark Office (“USPTO”) has not granted the
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`trademark that Tacori first requested in April 2005. Tacori, however, does note that the USPTO has
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`issued a Notice of Publication of the Tacori Trade Dress under 15 U.S.C. § 1062(a), and that this
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`10
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 11 of 36. PageID #: 1967
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`Notice of Publication reflects that the examiner has determined that Tacori “is entitled to
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`registration” of its trade dress.
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`Tacori’s most recent filing with the USPTO, dated November 30, 2007, describes the
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`trademark it seeks to register as follows:
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`DESCRIPTION OF MARK: The mark consists of the appearance of portions of two
`essentially concentric rings, with one of the rings having a larger diameter than the other.
`Embedded between the rings are repeating semi-circles or arcs which appear contiguous to
`each other. A space is created between the contiguous semi-circles or arcs. The dotted lines
`show the placement of the mark on the goods.
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`Doc. 93; see also Doc. 107 (Karounian Decl. at ¶ 2) (describing the “Tacori Trade Dress”).
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`A copy of the drawing that Tacori submitted to the USPTO, depicting the mark it seeks to
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`register and protect, is shown below:
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`Doc. 93.
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`In response to Rego’s motion for summary judgment, Tacorian submitted a declaration
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`attesting to the following in regards to the Tacori Trade Dress:
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`•
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`•
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`Since 1999, Tacori has exclusively and continuously used in commerce ring designs
`that contain the Tacori Trade Dress. Doc. 107 (Karounian Decl. at ¶ 2).
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`Tacori’s customers and interested customers recognize the Tacori Trade Dress as a
`source indicator for Tacori. Id. at ¶ 4 (attaching copies of consumer letters and
`emails).
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`11
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`

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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 12 of 36. PageID #: 1968
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`Tacori has actively advertised the Tacori Trade Dress in the major magazines and
`other venues that advertise these types of goods. Id. at ¶ 5. As of February 2008,
`Tacori has spent approximately $6 million advertising jewelry that contains the
`Tacori Trade Dress. Id.
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`Since 1999, sales of rings that contain the Tacori Trade Dress have resulted in sales
`in excess of $30 million in wholesale sales to premium jewelers. Id. at ¶ 6.
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`Over 15,000 separate pieces of jewelry have been sold bearing the Tacori Trade
`Dress. Id. at ¶ 7.
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`Tacori has over 500 authorized dealers throughout the United States, spread
`throughout 48 states. Id.
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`There have been a number of websites that promote “Tacori Inspired” copies of
`Tacori’s rings that bear the Tacori Trade Dress. Id. at ¶ 9 (attaching representative
`copies).
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`Tacori has identified and warned over 125 separate infringers of Tacori’s ring
`designs that bear the Tacori Trade Dress that they must cease and desist from
`infringing the Tacori Trade Dress. Id. at ¶ 10. Tacori has been able to obtain
`consent judgments and/or admissions from most of these infringers that the Tacori
`Trade Dress is valid and enforceable. Id.
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`Tacori has received a considerable amount of unsolicited media coverage of its rings
`that contain the Tacori Trade Dress. Id. at ¶ 11. For example, in 2007, Tacori
`received the JQ Retailers’ Choice Designer Award in the bridal category. Id.
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`III. LAW AND ANALYSIS
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`A.
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`Standard Of Review
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`This case arises on cross-motions for summary judgment under Rule 56 of the Federal
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`Rules of Civil Procedure. Rule 56(c) governs summary judgment motions and provides:
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`The judgment sought should be rendered if the pleadings, the discovery and
`disclosure materials on file, and any affidavits show that there is no genuine issue
`as to any material fact and that the movant is entitled to a judgment as a matter of
`law.
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`Rule 56(e) specifies the materials properly submitted in connection with a motion for
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`summary judgment:
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`12
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`

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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 13 of 36. PageID #: 1969
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`(1) In General. A supporting or opposing affidavit must be made on personal
`knowledge, set out facts that would be admissible in evidence, and show that the
`affiant is competent to testify to the matters stated. If a paper or part of a paper is
`referred to in an affidavit, a sworn or certified copy must be attached to or served
`with the affidavit. The court may permit an affidavit to be supplemented or
`opposed by depositions, answers to interrogatories, or additional affidavits.
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`(2) Opposing Party’s Obligation to Respond. When a motion for summary
`judgment is properly made and supported, an opposing party may not rely merely
`on allegations or denials in its own pleading; rather, its response must–by
`affidavits or as otherwise provided in this rule–set out specific facts showing a
`genuine issue for trial. If the opposing party does not so respond, summary
`judgment should, if appropriate, be entered against that party.
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`However, the movant is not required to file affidavits or other similar materials negating a claim
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`on which its opponent bears the burden of proof, so long as the movant relies upon the absence
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`of the essential element in the pleadings, depositions, answers to interrogatories, and admissions
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`on file. Celotex Corp. v. Catrett, 477 U.S. 317 (1986).
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`In reviewing summary judgment motions, this Court must view the evidence in a light
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`most favorable to the non-moving party to determine whether a genuine issue of material fact
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`exists. Adickes v. S.H. Kress & Co., 398 U.S. 144 (1970); Singfield v. Akron Metropolitan
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`Housing Auth., 389 F.3d 555, 560 (6th Cir. 2004). A fact is “material” only if its resolution will
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`affect the outcome of the lawsuit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
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`Determination of whether a factual issue is “genuine” requires consideration of the applicable
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`evidentiary standards. Thus, in most civil cases the Court must decide “whether reasonable
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`jurors could find by a preponderance of the evidence that the [non-moving party] is entitled to a
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`verdict.” Id. at 252.
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`Summary judgment is appropriate whenever the non-moving party fails to make a
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`showing sufficient to establish the existence of an element essential to that party’s case and on
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`13
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 14 of 36. PageID #: 1970
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`which that party will bear the burden of proof at trial. Celotex, 477 U.S. at 322. Moreover, “the
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`trial court no longer has a duty to search the entire record to establish that it is bereft of a
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`genuine issue of material fact.” Street v. J.C. Bradford & Co., 886 F.2d 1472, 1479-80 (6th Cir.
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`1989) (citing Frito-Lay, Inc. v. Willoughby, 863 F.2d 1029, 1034 (D.C. Cir. 1988)). The non-
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`moving party is under an affirmative duty to point out specific facts in the record as it has been
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`established which create a genuine issue of material fact. Fulson v. City of Columbus, 801 F.
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`Supp. 1, 4 (S.D. Ohio 1992). The non-movant must show more than a scintilla of evidence to
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`overcome summary judgment; it is not enough for the non-moving party to show that there is
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`some metaphysical doubt as to material facts. Id.
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`B.
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`Validity And Enforceability Of Tacori’s Copyright Of The HT 2229 Design
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`It is undisputed that Tacori has registered the HT 2229 Design with the United States
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`Copyright Office and received Copyright Registration No. VA 1-120-166. Therefore, pursuant
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`to 17 U.S.C. § 410(c), Tacori’s certificate of registration constitutes “prima facie evidence of the
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`validity of the copyright and of the facts stated in the certificate.” Given this statutory
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`presumption of validity, the burden of proving invalidity shifts to Rego. Yurman Design, Inc. v.
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`PAJ, Inc., 262 F.3d 101, 109 (2d Cir. 2001); see Lexmark Int’l, Inc. v. Static Control
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`Components, Inc., 387 F.3d 522, 534 (6th Cir. 2004). Rego attempts to meet its burden by
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`primarily arguing that: (1) the HT 2229 Design is not original and, therefore, not copyrightable;
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`(2) Tacori has not, and still does not, possess an ownership interest in the copyright to the HT
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`2229 Design; and (3) assuming, arguendo, that Tacori now possesses an ownership interest in
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`the copyright to the HT 2229 Design, errors in Tacori’s registration nevertheless render the
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 15 of 36. PageID #: 1971
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`copyright unenforceable.6 As discussed in more detail below, however, the Court concludes that
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`none of Rego’s contentions have factual or legal merit, and that Tacori indeed owns a valid and
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`enforceable copyright of the HT 2229 Design.
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`6 The Court notes that, during litigation of this case and throughout the extensive
`briefing on the cross-motions for summary judgment, Rego has repeatedly changed its arguments
`and theories regarding Tacori’s copyright of the HT 2229 Design. First, on March 27, 2006,
`Rego responded to an initial contention interrogatory by stating that it had no intention to contest
`the validity of Tacori’s copyrights. Second, on May 18, 2006, Rego amended its response,
`stating that Tacori was not the first to design or introduce the rings at issue, because Beverlly
`Jewellry of Hong Kong (one of the defendants now litigating before Judge Feess in the Central
`District of California) was the first to design, market, and distribute the rings in the United
`States. Third, on March 5, 2007, after Rego admitted that the information it received from
`Beverlly Jewellry was not reliable, Rego amended its response one final time, stating generally
`that Tacori was not the first to design or introduce the rings at issue, because the rings were in
`the public domain at the time Tacori alleges to have created them. Fourth, on January 3, 2008,
`despite not amending its contention response, Rego raised three additional theories regarding
`invalidity in a memorandum in support of its motion for summary judgment and in opposition to
`Tacori’s motion for partial summary judgment (Doc. 93): (1) that the assignment of the
`copyright from Anais Designs, Inc. to Tacori in 1999 was not valid under 17 U.S.C. § 204(a),
`because it was not in writing until 2003; (2) that Anais Designs, Inc., not Tacori, was the sole
`author and owner of the HT 2229 Design; and (3) that Tacori still does not possess a valid
`registration of the HT 2229 Design from the Copyright Office. Fifth, on February 12, 2008,
`Rego argued four entirely new theories in a reply memorandum in support of its motion for
`summary judgment (Doc. 109): (1) that the 2003 Assignment Agreement did not transfer the
`copyright to Tacori, because Attachment A did not specifically list the HT 2229 Design; (2) that
`the 2003 Assignment Agreement did not transfer the copyright to Tacori, because Anais Designs,
`Inc. was not incorporated until May 2003 and therefore did not exist when the HT 2229 Design
`was created in 1999; (3) that Tacori committed fraud on the Copyright Office; and (4) that
`Tacori’s 2003 Supplementary Registration was ineffective under 37 C.F.R. § 201.5(b)(2)(ii)(B) -
`(iii)(A).
`While Tacori correctly asserts that Rego may be barred from raising any arguments that it
`did not include in its final amended response to Tacori’s contention interrogatory, see Wechsler
`v. Hunt Health Sys., Case No. 94 Civ. 8294 (PKL), 1999 U.S. Dist. LEXIS 13216, at *5
`(S.D.N.Y. Aug. 27, 1999) (responses to contention interrogatories are treated as “judicial
`admissions” that estop the responding party from asserting positions omitted or different from
`those responses), the Court nevertheless will address Rego’s varied arguments to the extent they
`are dispositive of the cross-motions.
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`15
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`Case: 1:05-cv-02241-KMO Doc #: 141 Filed: 09/25/08 16 of 36. PageID #: 1972
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`1.
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`Originality
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`To be eligible for copyright protection, Tacori’s HT 2229 Design must be original to
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`Tacori. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). “Original, as the
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`term is used in copyright, means only that the work was independently created by the author (as
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`opposed to copied from other works), and that it possesses at least some minimal degree of
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`creativity.” Id. “[T]he requisite level of creativity is extremely low; even a slight amount will
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`suffice. The vast majority of works make the grade easily, as they possess some creative spark,
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`no matter how crude, humble or obvious it might be.” Id. (citation and internal quotation marks
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`omitted).
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`Here, Tacori’s registration certificate establishes a statutory presumption that the HT
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`2229 Design is original. See Boisson v. Banian, Ltd., 273 F.3d 262, 268 (2d Cir. 2001)
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`(“Plaintiffs’ certificates of registration constitute prima facie evidence of the validity not only of
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`their copyrights, but also of the originality of their works.”). Further, Tacori has presented
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`affirmative evidence of originality by: (1) extensively detailing the process in which the HT
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`2229 Design was developed by Garo Karounian and Haig Tacorian; and (2) submitting the
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`declarations of Karounian and Tacorian in which both declare that (a) they did not base the HT
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`2229 Design on any other ring or jewelry design; (b) they were not aware of any other ring
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`design that contained crescents in the side of the shank of the ring when they developed the HT
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`2229 Design; and (c) they had not seen the rings and jewelry pictured in Rego’s expert report
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`prepared by Professor Stanley Lechtzin until the report was issued in July 2007. See Docs. 87-3,
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`87-4.
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`Rego, on the other hand, relies entirely on the expert report of Professor Stanley Lechtzin
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`16
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`Case: 1:0