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Case 4:03-cv-02683 Document 99 Filed in TXSD on 09/30/05 Page 1 of 61
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`

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`§§
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`§§
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`§ CIVIL ACTION NO. 03-2683
`
`ROBERT P. BERG d/b/a BOB BERG
`BUCKLES d/b/a SILVERDALES,
`
`Plaintiff,
`
`v.
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`§§
`
`JOANNE SYMONS d/b/a HY O SILVER, §
`et al.,
`
`§§
`

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`Defendants.
`
`MEMORANDUM AND OPINION SETTING OUT FINDINGS OF FACT AND
`CONCLUSIONS OF LAW
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`This case involves the intellectual property rights to certain western jewelry designs.
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`The parties, formerly husband and wife, worked together selling western jewelry, prize cups,
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`and belt buckles during their marriage and became competitors following their divorce.
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`Robert Berg d/b/a Bob Berg Buckles d/b/a Silverdales (“Berg”) sued Joanne Symons d/b/a
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`Hy O Silver, et al. (“Symons”) for copyright infringement, trade dress infringement, and
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`unfair competition. Symons counterclaimed for tortious interference with business
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`relationships. Symons concedes that she copied certain copyrighted designs of Berg’s, but
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`asserts that she is either a co-owner or licensee of the copyrights and trade dress or, in the
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`alternative, that the copyrights are invalid for lack of originality and for misstatements in the
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`copyright applications. Symons also agrees that the jewelry pieces she designed that were
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`not covered by Berg’s copyrights looked very similar to Berg’s pieces. Symons argues that
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`Berg has not established a protectible trade dress in the design of the western jewelry they
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`both want to produce and sell.
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`This court held a bench trial on the parties’ claims and defenses. Based on the
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`pleadings, the motions and responses, the evidence, the arguments of counsel, and the
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`applicable law, this court enters findings of fact and conclusions of law. In summary, this
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`court finds and concludes that Berg’s copyrights are valid and that Symons is liable to Berg
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`for copyright infringement as to certain jewelry and belt buckle designs. Symons is enjoined
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`from continuing to sell those infringing designs and must pay statutory damages in the
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`amount of $80,000. This court finds and concludes that Berg has not established a
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`protectible trade dress and is not entitled to damages for and an injunction from trade dress
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`infringement. This court denies relief on the counterclaim for tortious interference. The
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`findings of fact and conclusions of law that support these results are set out in detail below.
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`FINDINGS OF FACT
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`I.
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`Background
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`In July 2003, Berg filed this suit alleging copyright infringement, trade dress
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`infringement, unfair competition, and trade dress dilution. Berg sought damages and an
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`injunction to prevent Symons from using his copyrighted jewelry and buckle designs and
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`from copying the trade dress he asserts. Symons asserts co-ownership in the copyrights,
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`claiming that the right to sell pieces using the designs copyrighted during the marriage and
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`containing elements that Berg claimed as his trade dress was community property that was
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`not divided during the divorce proceedings. Symons also asserts that the copyrights were
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`invalid and the trade dress was not protectible. In August 2004, this court denied Symons’s
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`motion for summary judgment on the co-ownership defense with respect to the copyrights.
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`Because disputed issues of material fact precluded summary judgment on the copyright and
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`trade dress issues, this court held a bench trial on all the claims and defenses.1 Both Berg and
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`Symons testified and presented evidence about the design of, and market for, western
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`jewelry, the copyrighted designs, and their claims of superior right to sell jewelry using the
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`designs and design elements at issue.
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`A.
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`Bob Berg Buckles, Hy O Silver, and the Divorce Decree
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`Berg and Symons, both natives of Australia, married in 1984 and divorced in 2000.
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`Before their marriage, Berg was a rodeo performer and a silversmith. In the late 1970s, Berg
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`began designing and selling western jewelry. In 1980, Berg registered the company name
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`“Silverdales” to sell western jewelry and clothing. In 1982, after an injury ended his rodeo
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`career, Berg expanded his jewelry business. Although he focused on belt buckles, he also
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`began to design, produce, and sell western-style rings, necklaces, bracelets, conchos, spurs,
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`knives, and three-piece buckle sets.
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`Berg met Symons in 1983 when she was appearing at rodeos as Miss Rodeo Australia.
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`At that time, Berg produced jewelry himself. As his jewelry business grew, Berg traveled
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`to the United States to attend jewelry shows and recruit American engravers and silversmiths
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`1 The joint proposed pretrial order stipulated that the trial would be to the court. (Docket Entry No.
`62, p. 9).
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`to work as independent contractors, making jewelry and buckles in Australia. Several
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`engravers and silversmiths came to Australia to work with Berg. Hugh Weaver, an
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`accomplished silversmith and engraver from Wyoming who testified at trial on behalf of
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`Symons, worked as an independent contractor for Berg for six months in 1990. (Bench Trial
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`Tr., Feb. 23, 2005, p. 21). Weaver credibly testified at trial that he showed Berg design
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`features that Berg later incorporated into his own belt buckle and jewelry designs, including
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`the use of tapered raised beads on a raised edge.
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`In 1993, Berg and Symons moved to Bandera, Texas, to pursue the western jewelry
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`market in the United States. Symons helped run the office, which was located next to the
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`couple’s house. They advertised and sold the jewelry and buckles using the names “Bob
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`Berg Silverdales” and “Bob Berg Buckles.” They hired independent contractors to sell the
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`jewelry and buckles at trade shows and rodeos. Although some sales were made on the
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`Internet, the couple primarily marketed the jewelry and buckles through direct sales at shows
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`held in conjunction with rodeos and through contracts with rodeo associations. Calls and
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`correspondence related to sales were directed to the Bandera office telephone number and
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`post office box address. The Bandera office would fax orders and design specifications to
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`a production factory in Guadalajara, Mexico, which was run by Cesar Navia. Berg trained
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`Navia to use certain molds, dyes, and engraving and silversmith techniques in manufacturing
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`the jewelry and buckles. (P. Ex. 26, pp. 92–96).
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`Between October 1992 and June 1996, Berg registered four copyrights for western
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`jewelry designs in his name: VA-530-294, VA-547-192, VA-292-803, and VA-817-815.
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`(Docket Entry No. 17, pp. 1–2). The molds used to make the jewelry contained the
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`copyrighted designs. Since the divorce, Berg has registered two additional copyrights, VA-
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`1-091-617 and VA-1-159-548. Each of the copyrights covered a number of specific pieces
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`of jewelry, belt buckles, and similar items.
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`Berg testified that in addition to copyrights of specific designs, his jewelry and
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`buckles have a distinctive “look” that consists of the following elements: black background,
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`the use of “tri-color” (red, green, and yellow) gold; a layer of scrollwork with a vine design,
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`a layer of leaves, and a third layer of flowers; and, when edged, use of a raised silver edge
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`with large tapered beads. Berg testified that the presence of a colored stone in the middle of
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`the flowers is not a distinctive element of his work. He also agreed that not all his pieces use
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`an edge. Berg was not the first to use a black background, more than one color gold, or vine
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`and leaf scrollwork, or to place beads on the edge of a buckle or piece of jewelry. Berg
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`contended, however, that the combination of these pieces was distinctive and had become
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`uniquely associated with the “Bob Berg look.” At the same time, Berg testified that if a piece
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`of jewelry or buckle did not have a black background, it would not infringe his asserted trade
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`dress.
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`The Berg-Symons jewelry business was successful. In 2000, Berg designed the
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`trophy cup for the world championship professional bull riding competition. In an
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`advertisement displaying the trophy cup, Berg and his work were described as follows:
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`A distinctive craftsman of Western buckles and jewelry,
`Australian native Bob Berg has separated his art from others in
`the Western market with his revolutionary techniques and
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`singular designs. Cowboy, artist, and entrepreneur, Berg, who
`hangs his hat in Bandera, Texas, was asked to create an updated
`version of the Bud Light Cup trophy to honor PBR world
`champions in the coming years. Knowledge, experience and
`artistic energy inspired Berg’s work on both the new cup and the
`2000 world championship buckle.
`. . .
`Berg was sidelined from rodeo shortly after his arrival in the
`United States in 1971, yet capitalized on the down time by
`expanding his interest in engraving and silver-work. The
`trademark gold-and-silver-on-black style for which he is now
`famous evolved from this early sideline interest.
`. . .
`Berg has built championship buckles for prominent rodeo
`committees across the United States and supplied buckles to the
`champions of the Australian Pro Rodeo Association for the past
`22 years. Hand-cut and soldered scrollwork and lettering
`characterize Bob Berg designs. Berg initiated the technique of
`stacking tri-color gold to achieve a three-dimensional look in his
`buckles and jewelry.
`
`(P. Ex. 53, pp. 70–71).
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`At trial, Symons testified that when she first met Berg, his work was indistinguishable
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`from “standard” western jewelry produced by all the major rodeo or western belt buckle
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`designers and sellers, such as Gary Gist and Skyline Silversmiths. She described the design
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`elements of Berg’s early work as “fairly standard in the industry,” which included “a berry
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`edge or a rope edge,” gold overlays, an engraved silver background, and colored stones set
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`into the overlays. “A berry edge is the same size all the way around of half-round beaded
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`wire.” (Bench Trial Tr., p. 4). Symons testified that Berg changed his style after meeting
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`Hugh Weaver. In March 1990, Weaver came to Australia to work with Berg as an
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`independent contractor, doing design and engraving work, for six months. (Id. p. 22).
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`Symons and Weaver testified that Weaver created the edge made up of beads with different
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`sizes tapered from large to small beads and showed it to Berg. Although the copyright for
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`one of the jewelry collections includes drawings of edge designs consisting of tapered beads
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`of various sizes on blank buckles, (Trophy Blank Cast Two, BB1249), Berg stipulated at trial
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`that he was not asserting copyright protection for the tapered beaded edge design contained
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`in the drawings.
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`With respect to the trade dress, Symons identified two Weaver pieces that she claimed
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`contained all the elements that Bob Berg claimed as his distinctive trade dress, including the
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`tapered beads on the edge of the buckles and jewelry pieces. Symons identified the
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`Cheyenne Buckle, a copyrighted design, as containing all the elements that Berg asserts as
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`the protected trade dress. (D. Ex. 41). Weaver credibly testified that Berg neither originated
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`nor monopolized the elements Berg identified as his distinctive trade dress. Weaver testified
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`that in 1989, he showed Berg a trophy buckle he designed that included the elements Berg
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`asserts as his trade dress. Weaver testified that, although he was the first to incorporate
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`heavy or oversized beaded edges into three-piece buckle sets, he did not continue to use the
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`beaded edge design in his work. Weaver identified other western jewelry designers who
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`originated and continued to use these design elements. Mark Grain, an engraver, pioneered
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`the use of heavy, oversized, different sized beads on the edge of pieces of western jewelry
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`and buckles. Weaver testified that heavy, graduated beads elevated traditional edge work in
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`western jewelry design and had become a widely used feature in western jewelry. Symons
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`and Weaver testified that the use of round, graduated beads on edges of western jewelry is
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`common, as is the use of a black background. Vine and leaf scrollwork is also a common
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`element in western jewelry. The use of tri-colored gold is less common; Weaver testified
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`that it is “industry standard” to use two colors for belt buckles, but that tri-color gold has
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`been used in jewelry pieces for many years. In short, according to both Symons and Weaver,
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`Berg claimed trade dress based on design elements that are often used in the western jewelry
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`industry.
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`In the fall of 1998, Berg and Symons separated. Berg moved out of the couple’s home
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`in Bandera and bought a house in Cleburne, Texas. The business continued to operate out
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`of the Bandera office and Symons continued to live at the Bandera property. Lyn Liss, who
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`worked as the office manger before the divorce, continued to take orders for jewelry and
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`buckles and manage the business from the Bandera office.
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`
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` In 1999, Berg and Symons filed for divorce in the 249th District Court in Johnson
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`County, Texas. During the divorce proceedings, Symons and Berg signed three agreements:
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`a Rule 11 Agreement2 dated October 19, 1999; a Mediated Settlement Agreement dated
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`February 11, 2000; and a Final Divorce Decree on March 3, 2000. Symons established Hy
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`O’ Silver to sell western jewelry and buckles in competition with Berg. The Johnson County
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`court appointed Mike Bowles as the receiver of all the inventory. (P. Ex. 23). The inventory
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`2 Texas Rules of Civil Procedure require that all agreements between parties or attorneys in a suit be
`contained in a written agreement. TEX. R. CIV. P. 11. Written settlement agreements, often called “rule 11
`agreements,” are enforceable as contracts. See Penton v. Am. Bankers Ins. Co., No. 04-20013, 2004 U.S.
`App. LEXIS 23499 (5th Cir. Nov. 10, 2004) (unpublished opinion); Cavallini v. State Farm Mut. Auto Ins.
`Co., 44 F.3d 256 (5th Cir. 1995). The Rule 11 Agreement between Berg and Symons provided a temporary
`settlement of matters pending trial. (Rule 11 Agreement, D. Ex. 6).
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`consisted of unsold jewelry and buckles and the castings used to make certain jewelry,
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`buckles, and trophy designs. The unsold items and the casting pieces included belt buckles,
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`earrings, bracelets, rings, necklaces, and conchos. The Rule 11 Agreement stated in part as
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`follows:
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`All existing inventories of the manufacturing business are to be
`delivered to Mike Bowles as an accountant serving as temporary
`receiver. Each party will be allowed to sign out various items
`of inventory for the purpose of sale with all of the net revenue
`received from the sales to be delivered weekly to the accountant.
`. . .
`Bob Berg may check out inventory from accountant to take to
`shows and Joanne Berg, although not permitted to go to shows,
`may check out inventory for the purpose of sale . . . . She is
`allowed to handle the daily telephone calls relating to the
`Bandera office.
`. . .
`The accountant will be provided information by the parties
`necessary to account for orders taken at shows for delivery up
`to and including January 31, 2000.
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`It is understood that each party is permitted to enter into sales
`agreements providing for delivery subsequent to February 1,
`2000. Joanne Berg’s transactions are not to be made under the
`names of Bob Berg and/or Silverdale. Each party agrees that
`orders taken under this paragraph are the separate property of
`the party taking the order.
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`(Id.).3
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`3 Both parties accuse the other of diverting sales money and jewelry from Bowles. In October 1999,
`Symons obtained a restraining order that prohibited Berg from visiting the Bandera property, including the
`office. Symons stayed at Berg’s house in Cleburne, Texas on her way to a jewelry show in Glen Rose, Texas.
`Berg was out of town, and Symons, who did not have a key to Berg’s house in Cleburne, obtained a key from
`the real estate agent. Symons testified that she took completed inventory, a jewelry case, and a booth from
`the house. (P. Ex. 26, pp. 168–70).
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`Symons testified that under the Rule 11 Agreement, she was to continue to work in
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`the Bandera office of “Bob Berg Buckles,” answering the telephone as “Bob Berg Buckles,”
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`but could take orders for custom-made products that would not be ready for delivery until
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`after February 1, 2000 (the projected date of the divorce) in the name of Hy O Silver. Those
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`products would be made in the Bob Berg Buckles factory in Mexico with material and molds
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`owned by Bob Berg Buckles. Symons used the same production factory as Bob Berg
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`Buckles to produce the items ordered, but stamped these products with the Hy O Silver label.
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`If Berg took an order for such products, he would be allowed to place those orders in the
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`name of Bob Berg Buckles. This arrangement lasted until February 11, 2000, when the
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`Mediated Settlement Agreement was signed. During the period of the Rule 11 Agreement,
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`Symons obtained jewelry directly from Cesar Navia and began to sell jewelry at trade shows
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`and rodeos. Symons used the Bob Berg Buckles name to register for booths at the shows.
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`In some instances, this prohibited independent contractors who regularly sold Bob Berg
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`jewelry from obtaining booth spaces. Symons began to advertise using the business name
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`Hy O Silver. In advertising, she used the name Symons-Berg, the toll-free numbers and P.O.
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`Boxes at the Bandera office that had been in use since 1993, and described herself as
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`formerly associated with Bob Berg Buckles. Under the Rule 11 Agreement, the receiver
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`controlled the business that came in through the Bandera office. Liss continued to manage
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`the office as she had before the divorce. Symons continued to work in the Bandera office,
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`answering the phone as “Bob Berg Buckles.”4
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`On November 1, 1999, Symons sent a letter to customers of Bob Berg Buckles to
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`inform them of her new business, Hy O Silver. Berg argues that the letter led people to
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`believe that Bob Berg Buckles was out of business or was going out of business. The letter
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`states:
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`I am sending this letter to you as a form of introduction. My
`name is Joanne Symons-Berg, I have been in the buckle and
`jewelry design business for 16 years. Formally I had been
`associated with Bob Berg Buckles. My new company is Hy O
`Silver of Bandera, Texas. . . .
`
`The product offered by Bob Berg Buckles for individuals, rodeo
`committees, youth groups, private ropings, etc. will remain the
`same. The quality of the product workmanship will not change
`and as Hy O Silver we will be adding new items to the line.
`
`We at Hy O Silver have been at this location for 5 years and the
`staff of the past 2 years is remaining the same! We know that
`you have ordered from us in the past and would like to offer you
`a 25% discount on a new order from you if delivered after
`January 31 and a 10% discount on any committee order.
`
`I am aware that it is difficult for all of when changes occur and
`we would like to assure you that only the name has changed. .
`. .
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`(P. Ex. 38). The letter was signed by Joanne Symons-Berg, proprietor, and Lyn Liss,
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`general sales manager.
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`Symons testified that she completed two sales under the name of Hy O Silver for
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`4 In state court, Symons testified that during the Rule 11 negotiations, she and Berg had agreed that
`she would not “work shows” or sell jewelry, but would stay home with the children and help run the Bandera
`office, which would continue to operate as “Bob Berg Buckles.”
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`buckles to be delivered after February 1, 2000. Before the divorce, Berg had contracted with
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`the same two rodeo associations and designed the buckles for them. In 1997, Berg had
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`submitted a bid to the Reno Rodeo Association. In 1999, Hy O Silver completed this
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`contract, using the same buckle design. Symons faxed the order to the Mexico factory for
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`the manufacture of the Reno Rodeo buckles. (P. Ex. 26, pp. 171–73, 178). In 1999, Hy O
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`Silver also completed an order under a contract that Berg had negotiated with the Texas High
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`School Rodeo Association (“THSRA”) in 1997. THSRA had agreed to purchase prize
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`buckles for three years at a price of $275.00 per buckle. (P. Ex. 39). The record contains
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`a letter from the treasurer of the THSRA explaining the transaction with Hy O Silver:
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`I called the phone [number] I had from the invoice in our files,
`which I knew was in Bandera. I don’t remember how the phone
`was answered but I explained [that the THSRA had overpaid
`Bob Berg Buckles for a previous buckle order]. [Lyn Liss]
`explained to me right up front that the Bergs were in the middle
`of a divorce and that Mr. Berg was in the Dallas area still
`making buckles, Mrs. Berg had taken over the business in
`Bandera. . . . [Liss told me that] it might take some time to get
`the money refunded, however, Mrs. Berg’s company now called
`Hi-O-Silver [sic] would honor the $275.00 price as well as give
`the [THSRA] the credit from the overpayment. I didn’t ask for
`Mr. Berg’s phone number nor was it offered.
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`It was explained to me that the same craftspeople and designers
`worked in Bandera as before and that the buckles would look
`exactly like the Bob Berg Buckles we had previously purchased
`with the exception of the name of the back . . . . We placed our
`order and were very pleased with the end product. Looking at
`the buckles you can’t tell any difference from one year to the
`next.
`
`(P. Ex. 39).
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`The Mediated Settlement Agreement executed in February 2000 did not mention Hy
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`O Silver. It required Symons to turn over Bob Berg Buckles’s business records and customer
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`lists within twenty days.5 The Mediated Settlement Agreement did state that Symons would
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`have the right to sell “all business inventory in her possession or subject to her control and
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`all inventories in the possession of” the temporary receiver.
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`The Divorce Decree executed in March 2000 awarded Berg:
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`[t]he business known as Bob Berg Buckles, including but not
`limited to all fixtures, inventory, cash, receivables, accounts,
`goods, and supplies; and all rights of privileges, past, present, or
`future, arising out of or in connection with the operation of the
`business.
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`(P. Ex. 25 ¶ 9). Berg received the same rights in the business known as “Silverdales.” A
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`similar clause awarded Symons rights in “Hy O Silver”:
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`The business known as Hy O Silver, including but not limited to all
`furniture, fixtures, machinery, equipment, inventory, cash, receivables,
`accounts, goods, and supplies; all personal property used in connection
`with the operation of the business; and all rights and privileges, past,
`present, or future, arising out of or in connection with the operation of
`the business.
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`(Id.). Symons also received “[a]ll inventory in the possession of Michael Bowles, Receiver,”
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`which included the unsold inventory of Bob Berg Buckles. (Id. ¶ 10). Symons testified that
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`she asked her lawyers to add the provision giving her Hy O Silver after the parties had signed
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`the Mediated Settlement Agreement, which did not refer to that entity.
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`5 Symons testified that she used the records of Bob Berg Buckles to create the mailing list for
`advertising materials for Hy O Silver, including the November 1, 1999 letter. A former employee of Bob
`Berg Buckles had created a customer list and saved it on the hard drive of the computer in the Bandera office,
`but the computer crashed and the list was apparently lost. Symons testified that the she took the old
`computer to Perry Holt, a student who does computer work on the side, and traded it for a new computer.
`(P. Ex. 26, pp. 194–95).
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`Symons was allowed to sell the unsold inventory of Bob Berg Buckles in the
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`receiver’s possession, including inventory covered by Berg’s copyrights and the trade dress
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`he asserts. It took her approximately a year to sell the unsold inventory, which had a value
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`of approximately $200,000. The Divorce Decree did not mention “copyrights,” but was
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`intended as final distribution of all property.
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` In November 2000, Berg filed a motion in the 249th District Court for Johnson
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`County, Texas, for a preliminary injunction to enjoin Symons from using the P.O. Box and
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`phone number at the Bandera office to advertise or sell under the Hy O Silver name, from
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`advertising Hy O Silver as a new name of Bob Berg Buckles, and from redirecting customers
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`who visited the Bob Berg Buckles website to the Hy O Silver website. Berg v. Berg,
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`C20000346 (Tex. Dist. Ct.-249th Nov. 13, 2000). Berg also asked the court to order Symons
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`to return business assets from the Bandera office, including molds, dies, and business
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`records. (P. Ex 26, p. 91). Symons’s counsel argued that the phone number and address
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`were “accessories or accouterments” to the real estate that Symons received in the divorce,
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`and that enjoining Symons would allow Berg to reap the benefits of Hy O Silver’s
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`advertising efforts. (Id., pp. 207–08, 211).
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`The evidence presented to the state court showed that Liss had used domain names
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`to redirect customers visiting the Bob Berg Buckles and Silverdales websites to the Hy O
`
`Silver website. (P. Ex. 118). Symons testified at the November 13, 2000 injunction hearing
`
`that Liss had done so without her knowledge. (P. Ex. 26, pp. 123–24). The evidence
`
`presented to the state court also showed that in August 2000, Wrangler hosted the 2000 Bud
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`14
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`Case 4:03-cv-02683 Document 99 Filed in TXSD on 09/30/05 Page 15 of 61
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`Light Texas Team Roping Champion Finals in Fort Worth, Texas. The program describing
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`the events and the prizes listed prize buckles made by “HY O SILVER (formerly Bob Berg)
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`Buckles.” (P. Ex. 57). Symons testified in the injunction hearing that she had sent a
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`promotional letter to Bud Light offering to provide prize buckles made by Hy O Silver
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`“formerly of Bob Berg Buckles” and that the omitted “of” was a typo. (P. Ex. 26, p. 135).
`
`The state court enjoined Symons from using the Bob Berg Buckles name, allowed her to
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`advertise with Berg’s personal name in hyphenated form only, and cautioned her to be
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`careful in the words she chose for advertising. (Id., pp. 217–19). Symons was not enjoined
`
`from manufacturing and selling either Berg’s copyrighted designs or new designs that used
`
`what he asserts to be his trade dress.
`
` Symons testified in her deposition and at the bench trial that she initially hired Cesar
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`Navia to produce the jewelry she sold through Hy O Silver. (P. Ex. 146, p. 70). Symons has
`
`used the same jewelry producers that Berg uses since she started Hy O Silver. (Id., pp.
`
`70–71). Berg asserts that Symons had “stolen” equipment, castings, and employees. Berg
`
`submitted a copy of a March 2004 letter that he sent the FBI, alleging unlawful pirating and
`
`counterfeiting by Symons in Mexico. Symons acknowledges that she used the same
`
`production facility but argues that no legal impediment limited her ability or right to do so.
`
`Symons testified at trial that, while under the Rule 11 Agreement, she sold Bob Berg
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`designs under the Hy O Silver name, and that after the divorce, she continued to sell some
`
`of Berg’s copyrighted designs. She testified that after her divorce, she began making more
`
`of her own designs, but still uses the same design elements that Berg asserts as his protected
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`15
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`Case 4:03-cv-02683 Document 99 Filed in TXSD on 09/30/05 Page 16 of 61
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`trade dress. Symons and Berg are selling to the same market. Both sell at rodeo shows, sell
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`contracts to rodeo associations, and use the Internet to sell jewelry and belt buckles.
`
`B.
`
`The Parties’ Claims and Defenses
`
`At trial, Symons stipulated to selling specific jewelry designs that Berg had
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`copyrighted. Symons asserts that she had an implied license to produce and sell the designs
`
`at issue. The implied license to continue making the jewelry designs is based on the divorce
`
`agreements she and Berg executed. Symons relies on the fact that under the Rule 11
`
`Agreement, she had the right to sell jewelry during the divorce proceedings, and that under
`
`the Divorce Decree, she had the rights to Hy O Silver. Symons asserts that the parties
`
`intended the divorce to divide Bob Berg Buckles, and that Hy O Silver would continue to sell
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`the same products that Bob Berg Buckles sold. Berg responds that Symons and Hy O Silver
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`were granted only the right to sell the unsold inventory of Bob Berg Buckles for a limited
`
`time.
`
`Symons also asserts that the copyrights were invalid, based on errors and omissions
`
`in the copyright applications. In her posttrial brief, Symons concedes that the errors are
`
`primarily clerical. She maintains, however, that the copyrights are invalid because Berg
`
`did not disclose that Weaver had contributed to the designs, so they were not Berg’s original
`
`work. (P. Ex. 5, ‘815 Copyright, p. 1249).
`
`As to the trade dress claim, Symons argues that Berg’s asserted trade dress is not
`
`protected under the Lanham Act. Symons testified that although Berg uses and combines
`
`identical elements and some people have recognized a piece as a “Bob Berg” piece, (Bench
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`16
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`Case 4:03-cv-02683 Document 99 Filed in TXSD on 09/30/05 Page 17 of 61
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`Trial Tr., p. 5), there are a number of western and rodeo jewelry designs that use the same
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`elements and have a similar appearance. Symons argues that Berg cannot show
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`distinctiveness. Berg presented magazine articles that describe his pieces as innovative and
`
`presented witnesses—Lorainne Owen and Michelle Lillie—who testified that they associate
`
`the asserted trade dress elements as Bob Berg’s signature look.
`
`III.
`
`The Copyright Claims
`
`A.
`
`The Applicable Legal Standards
`
`To prove copyright infringement, the plaintiff must show ownership of a valid
`
`copyright, and actionable copying. Galinao v. Harrah’s Operating Co., Inc., 416 F.3d 411,
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`414 (5th Cir. 2005). To prove actionable copying, “a side-by-side comparison must be made
`
`between the original and the copy to determine whether a layman would view the two works
`
`as ‘substantially similar.’” Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d
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`357, 374 (5th Cir. 2004) (quoting Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816
`
`(5th Cir. 1997)). “Copyright ownership is shown by (1) proof of originality and
`
`copyrightability and (2) compliance with the applicable statutory requirements.” Compaq
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`Computer Corp. v. Ergonome Inc., 387 F.3d 403, 407 (5th Cir. 2004).
`
`The originality requirement “means only that the work was independently created by
`
`the author (as opposed to copied from other works), and that it possesses at least some
`
`minimal degree of creativity.” Norma Ribbon & Trimming Inc. v. Little, 34 U.S.P.Q.2d
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`1603, 1604 (5th Cir. 1995) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
`
`345 (1991)). “A certificate of registration, if timely obtained, is prima facie evidence both
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`17
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`Case 4:03-cv-02683 Document 99 Filed in TXSD on 09/30/05 Page 18 of 61
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`that a copyright is valid

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