Diamonds Direct v. Manly Bands
2:23-cv-00870
| D. Utah | Nov 18, 2024Background
- Diamonds Direct (dba Lashbrook) and Manly Bands are competitors in men’s wedding rings; Manly Bands was previously Lashbrook's customer.
- Lashbrook alleges Manly Bands began manufacturing knockoffs of its ring designs in China, and later in its own facilities, after their business relationship ended.
- Lashbrook further claims Manly Bands used unauthorized product images from Lashbrook on its online "Custom Ring Builder" tool, bypassing and altering copyright management information (CMI).
- Lawsuit was filed by Lashbrook against Manly Bands and its executives, alleging copyright infringement, CMI violations, unfair competition under the Lanham Act, and Utah state law claims.
- Defendants filed a motion to dismiss nearly all claims under Rule 12(b)(6) for failure to state a claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright Infringement (Ring Designs) | Lashbrook claims protectable originality in ring designs and copying by Manly Bands | Most ring designs are not protectable; no substantial similarity | Dismissed; designs not sufficiently original or similar |
| Copyright Infringement (Product Images, Vicarious/Contributory) | Manly Bands’ “Custom Ring Builder” causes third parties to make infringing copies; Manly Bands contributed/benefited | No direct third-party infringement alleged | Motion denied; plausible third-party infringement pleaded |
| Falsification/Removal of CMI | Manly Bands removed/obscured Lashbrook’s CMI with intent to conceal infringement | No connection to third-party infringement; intent not pleaded | Motion denied; intent/knowledge adequately alleged |
| Utah Unfair Competition | Malicious cyber activity via unauthorized access/copying of images | Images were publicly accessible; statute excludes copyright claims | Dismissed; statute does not cover copyright claims |
| Lanham Act §43(a) (Trade Dress/Trademark) | Lashbrook’s images are distinctive/non-functional, causing confusion | No non-functionality alleged; pleading deficiency | Dismissed; non-functionality not pleaded |
| Utah Pattern of Unlawful Activities | Pattern of computer crimes under Utah law (copying images) | No cited criminal offense for public image copying/alteration | Dismissed; not criminal as required by statute |
| Civil Conspiracy | Manly Bands and executives conspired to commit unlawful acts | Intracorporate conspiracy doctrine bars claim | Dismissed; intracorporate conspiracy doctrine applies |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (standard for copyright originality)
- Blehm v. Jacobs, 702 F.3d 1193 (separation of idea and expression, substantial similarity)
- Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280 (merger doctrine, unprotectable elements)
- Satava v. Lowry, 323 F.3d 805 (originality in combining commonplace elements)
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading standard for plausibility)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading standard for factual allegations)
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (court may compare works at motion to dismiss)