
    Kathleen TODD, Plaintiff, v. MONTANA SILVERSMITHS, INC.; Rod’s Western Palace, Inc., and Corral West Ranchwear, Inc. Defendants.
    No. Civ.A. 01CV383JLK.
    United States District Court, D. Colorado.
    July 19, 2005.
    Richard W. Hanes, Hanes & Schultz, P.C., Colorado Springs, CO, for Plaintiff.
    Robert James Herrington, Holland & Hart, LLP, Boulder, CO, J. Anthony King-ton, Chester, Wilcox & Saxbe, LLP, Columbus, OH, for Defendants.
   MEMORANDUM OPINION AND ORDER

KANE, Senior District Judge.

This action for copyright infringement was brought by Plaintiff Kathleen Todd on March 2, 2001. Todd is an individual Colorado resident who designs, manufactures, and sells “western-themed” jewelry. Defendant Montana Silversmiths, also designs, manufactures, and sells “western-themed” jewelry. Defendants Rod’s Western Palace and Corral West Ranchwear are resellers of Montana’s jewelry.

In June of 1996, Plaintiff created a barbed-wire style bracelet and a set of matching earrings. Before designing her jewelry, Plaintiff sought out classic western symbols such as boots, spurs, cowboy hats, horseshoes, etc., and brought them into her studio. Her intention for the particular pieces at issue here was to “make jewelry that looked like barbed-wire” but was more “aesthetically pleasing.” She filed for and received copyright registrations for her bracelet and earrings on August 31,1999, and November 6, 2000, respectively. Plaintiff has been advertising and selling both pieces since she designed them in 1996.

Plaintiff alleges that beginning in the summer of 2000, Defendant Montana began selling a line of jewelry similar to Plaintiffs. The particular pieces in question are four variations of Defendant Montana’s two-strand, three-barb bracelet, as well as a set of matching earrings. Defendant Montana subsequently designed several additional variations of these pieces, but these later variations are not at issue here.

On August 2, 2002, Plaintiff moved for summary judgment that Defendant Montana’s jewelry depicted in Plaintiffs Exhibits 3, 40, 4, and 5 infringe on Plaintiffs copyright as a matter of law. On August 30, Defendants filed two separate cross-motions for summary judgment. The first argues that Plaintiff has made no original contributions to her barbed-wire jewelry that do not already exist in ordinary public domain barbed-wire, so as a result, her jewelry lacks sufficient originality to be the subject of a valid copyright. The second motion is closely related, arguing that since none of the individual elements contained in Plaintiffs jewelry are properly copyrightable, Defendants may duplicate them without violating Plaintiffs copyright.

I GRANT Defendants’ Motion for Summary Judgment Based on the Unprotecta-bility of Plaintiffs Barbed-Wire Jewelry Under the Copyright Laws.

To prove copyright infringement, Plaintiff must show that: (1) she held a valid copyright, and (2) that Defendants copied protectable elements in her work. Feist Publ’ns, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Possession of a copyright registration certificate creates a presumption of validity, 17 U.S.C. § 410(c), although that presumption is rebuttable. Durham, Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980) (“[A] certificate of registration creates no irrebuttable presumption of copyright validity.”). Defendants may rebut the presumption created by the certificate by presenting evidence which casts doubt on the copyrightability of the work in question. Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir.1997).

The validity of Plaintiffs copyright is a question appropriate for summary judgment. Magic Mktg., Inc. v. Mailing Servs. of Pittsburgh, Inc., 634 F.Supp. 769 (W.D.Pa.1986) (“The issue of copyright-ability is typically resolved by a motion for summary judgment.”). But see Julia Reytblat, Is Originality in Copyright Laiv a “Question of Law” or a “Question of Fact?”: The Fact Solution, 17 Cardozo Arts & Ent. L.J. 181 (1999) (arguing that a jury is better equipped than a judge to evaluate the originality necessary to support copyright).

For an item to be copyrighted, it must exhibit some form of originality. Feist, 499 U.S. at 345, 111 S.Ct. 1282. The threshold of originality needed to qualify for copyright protection is admittedly low. Feist requires only that the author “make the selection or arrangement independently (i.e., without copying that selection or arrangement from another work), and that [the work] display some minimal level of creativity.” Id. at 358, 111 S.Ct. 1282. Novelty is not required for originality, but the author must have made some contribution to the work which is irreducibly his own. Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 102 (“No matter how poor artistically the ‘author’s’ addition, it is enough if it be his own.”).

Copyright protection only extends to expression, never the underlying idea. 17 U.S.C. § 102(b). Even an item that possesses a valid copyright may contain both protectable and unprotectable types of expression. Feist, 499 U.S. at 348, 111 S.Ct. 1282. The former consists of the author’s original creative contributions, 17 U.S.C. § 102(a), while the latter consists of (among other things): purely functional elements, 17 U.S.C. § 102(b), public domain elements, Nimmer on Copyright 1.05[A][2], scenes a faire, id. at [B][3], forms of expression which are inextricably linked to the underlying idea, id. at [B][4], and simple changes of medium, id. at 2.08[C][2].

The question at issue here is what element, feature, or aspect of Plaintiffs jewelry, which does not fall into one of the unprotected categories listed above, properly qualifies as original expression? Defendants argue that Plaintiffs jewelry contains no original expression, because each constituent element falls into one of these unprotected categories. Examining each element in turn, Defendants assert that:

• The wire twist, shape of the barbs, end caps, ear posts, and earring clasps are unprotectable because they are based on functional or utilitarian considerations.

• The placement of the barbs and the spacing between them is dictated by elemental symmetry and is unprotectable as expression inherent in the idea of barbed-wire jewelry.

• The size and shape of Plaintiffs jewelry are based on common “cuff-style” and “hoop-style” designs which exist in the public domain.

• The use of silver wire rather than steel is unprotectable because a change of medium does not qualify for copyright protection.

Defendants argue that since none of these elements are protectable, and since there is nothing else outside these elements to which protection could attach, Plaintiff cannot possess a valid copyright.

Plaintiff argues that Defendants’ emphasis on the individual elements of her jewelry is misplaced. Instead, she claims that the originality inquiry centers not on the protectability of the elements themselves, but on the overall design of the pieces. Plaintiff asserts that copyright protection actually attaches to the particular way she has “formed, placed, balanced and harmonized together the elements of her barbed wire styled jewelry.” This choice of words evokes the language of 17 U.S.C. § 101 quoted in Feist, where the Supreme Court acknowledged that copyright protection could be granted to the manner in which a set of otherwise unprotectable facts were “selected, coordinated, or arranged.” 499 U.S. at 356, 111 S.Ct. 1282.

Plaintiff urges the court to view her jewelry holistically, arguing that an artistic creation is necessarily greater than the sum of its parts. She advances a view that copyright can reside in a work’s “creative gestalt”—a certain ineffable quality which is incapable of objective description.

To reconcile these two competing theories of where Plaintiffs copyright resides, I consider the language of Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir.2001), instructive. Yurman involved several pieces of copyrighted jewelry composed of silver, gold, twisted cable, and colored stones. The court held that even though these elements existed individually in the public domain, the “originality in Yurman’s four designs inheres in the ways Yurman has recast and arranged those constituent elements.” Id. at 110. While this language supports Plaintiffs theory of copy protection, there is a critical distinction that must be drawn between the facts of Yurman and those in the present action.Unlike the designer in Yurman, Plaintiff has not “recast and arranged” the public domain elements of her jewelry in an original way. Instead, she has taken the constituent elements of barbed-wire and arranged them in a way that by all objective measures still matches the elemental arrangement of barbed-wire. (One can imagine any number of original ways to rearrange silver wire, barbs, end caps, etc., although the final product might be neither aesthetically pleasing nor wearable as jewelry.) ,

While Plaintiff is no doubt a skilled artist capable of making jewelry with a certain aesthetic appeal, she has failed to show what copyrightable feature(s) she has added to her work to separate it from ordinary public domain barbed-wire. Plaintiff is correct that the court should not take an excessively atomistic view of her jewelry. Just as Shakespeare’s Hamlet is undeniably more than an assemblage of letters and Van Gogh’s Starry Night is not just a fortuitous collection of brush strokes, Plaintiffs jewelry cannot simply be dissected into its component pieces. Yet while the combination of public domain letters in Hamlet is entirely unique, the same cannot be said of the combination of the public domain elements in Plaintiffs jewelry. The fact remains that for all her aesthetic choices, the final arrangement of the elements in her jewelry still corresponds to the arrangement of public domain barbed-wire.

Although a work’s “creative gestalt” is fundamental to aesthetic criticism, when evaluating copyrightability, the concept lacks thé precision necessary to maintain predictability in the law. Like all good art, Plaintiffs jewelry has an emotional appeal that cannot be described solely with reference to its component pieces. But “creative gestalt” is too inchoate a concept for courts to use if they are to fashion a consistent copyright jurisprudence.

The clearest question for decision concerns the degree of originality required for copyright. Plaintiff claims copyright in an arrangement of lesser elements that, when viewed individually, are not capable of supporting copyright. While Feist holds that copyright may legitimately be extended to such an arrangement, I conclude that Plaintiffs particular arrangement does not possess the requisite originality because of its lingering similarity to barbed-wire. That none of the elements of Plaintiffs jewelry is capable of being copyrighted individually suggests an arrangement of these elements must be held to a more exacting standard. This follows logically from the proposition that when dealing with items derived from the public domain, a work is copyrightable only if the creator has added “some substantial, not merely trivial, originality.” Durham, 630 F.2d at 910.

There is some troublesome language in the widely cited case of L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486, 490 (2d Cir.1976), that “ ‘while a copy of something in the public domain will not, if it be merely a copy, support a copyright, a distinguishable variation will ....’” (quoting Gerlach-Barklow Co. v. Morris & Bendien, Inc., 23 F.2d 159, 161 (2d Cir.1927)). No one could seriously contend that Plaintiffs jewelry is indistinguishable from actual barbed-wire. It is, however, unclear if the term “distinguishable,” as used by the court in Batlin, means visually distinguishable or conceptually distinguishable. For two reasons, the latter is the better interpretation.

First, if a court were to grant copyright in an arrangement that is visually but not conceptually distinguishable from barbed-wire, it would risk giving Plaintiff a monopoly over the idea itself. Arguably it would be impossible for other artists to create barbed-wire style jewelry (no matter how visually distinguishable) without infringing on Plaintiffs copyrighted arrangement. See Satava v. Lowry, 323 F.3d 805, 812 (9th Cir.2003).

Second, even if it is visually distinguishable, Plaintiffs arrangement is not truly “original” in the ordinary meaning of the word. Instead, her arrangement remains that of barbed-wire, which has been in the public domain for years. It is apparent Plaintiffs jewelry has a certain “je ne sais quoi” that ordinary barbed wire does not possess. Despite the artistic appeal of her work, however, whatever ineffable qualities it possesses stem from “trivial” variation, not “substantial” variation as contemplated in Durham.

Any expression contained in Plaintiffs work is a necessary concomitant of the idea of barbed-wire jewelry. As such, it may not be copyrighted. “Only by vigorously policing the line between idea and expression can we ensure both that artists receive due reward for their original creations and that proper latitude is granted other artists to make use of ideas that properly belong to us all. Satava v. Lowry, 323 F.3d at 805.

Based on the foregoing, Defendant’s Motion for Summary Judgment Based on the Unprotectability of Plaintiffs Barbed-Wire Jewelry Under the Copyright Laws is GRANTED and Plaintiffs Partial Motion for Summary Judgment is. DENIED. Defendants’ Motion for Summary Judgment Based on the Absence of Evidence That They Copied Protectable Elements is DENIED as MOOT. Judgment in this case shall enter in favor of Defendants and against Plaintiff. The parties shall bear their own costs. 
      
      . The incompatibility of law with aesthetics is alluded to in the Latin maxim “de gustibus non est disputandum [concerning matters of taste there can be no argument].”
     