271 F. Supp. 3d 625
S.D.N.Y.2017Background
- Artist Colleen Wolstenholme created three pill-replica jewelry works: Pill Charms (individual metal pill replicas), Charmed (charm bracelet using selected Pill Charms), and Hail Mary (rosary-style necklace using Pill Charms).
- Wolstenholme owns Canadian registrations for the three works; U.S. registration applications were denied for lack of originality.
- She sued Damien Hirst and Other Criteria (US), LLC, alleging U.S. and Canadian copyright infringement, Canadian moral-rights infringement, and New York state unfair competition/trade dress (Counts One–Four).
- Defendants moved to dismiss under Fed. R. Civ. P. 12(b)(6), arguing lack of originality, lack of substantial similarity, and preemption of state-law claims by the Copyright Act.
- Court found Pill Charms unprotectable (derivative/insufficient originality); Charmed and Hail Mary sufficiently original as arrangements, but the Hirst works were not substantially similar to those protectable elements.
- Court dismissed all federal and Canadian copyright claims and dismissed state-law claims as preempted (or for failure to plead required extra elements); leave to replead denied without prejudice to a formal motion to amend.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Originality of Pill Charms | Pill replicas are original artistic works | Pill replicas are mere reproductions/derivative and not original | Pill Charms unprotectable (dismissed) |
| Originality of Charmed and Hail Mary (selection/arrangement) | Selection, coordination, arrangement of pill charms show minimal creativity | Arrangements are insufficiently creative | Charmed and Hail Mary meet low originality threshold (survive at pleading stage) |
| Substantial similarity (U.S. copyright) | Hirst works copy Wolstenholme’s protectable selections/arrangements | Differences in selection, number, arrangement, additional unique Hirst charms show no substantial similarity | No substantial similarity; U.S. copyright claims dismissed |
| State-law unfair competition / trade dress / dilution | Design copying caused confusion and trade dress dilution | Claims are equivalent to copyright claims and lack extra elements (no deceptive acts or source confusion) | State-law claims preempted or inadequately pleaded; dismissed |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (originality requires independent creation and minimal creativity)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (plausibility standard for pleading)
- Ashcroft v. Iqbal, 556 U.S. 662 (legal conclusions not accepted as true on motion to dismiss)
- Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir.) (originality in selection, coordination, arrangement; more discerning ordinary observer test)
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir.) (substantial similarity standard; judge may resolve as matter of law)
- Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir.) (compilations of unprotectable elements can be protected by original arrangement)
- Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119 (2d Cir.) (discerning ordinary observer and excluding unprotectable elements)
- Kregos v. Associated Press, 3 F.3d 656 (2d Cir.) (state unfair-competition claims grounded solely in copying are preempted)
- Computer Associates Int’l, Inc. v. Altai Inc., 982 F.2d 693 (2d Cir.) (preemption and extra-element analysis for state-law claims)
- Herbert Rosenthal Jewelry Corp. v. Honora Jewelry Co., 509 F.2d 64 (2d Cir.) (idea-expression dichotomy in jewelry design)
- McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184 (2d Cir.) (Rule 12(b)(6) pleading standards)