Court Awards Merit Diamond an Injunction in Copyright Case

A U.S. court has awarded Merit Diamond Corp. a preliminary injunction prohibiting Frederick Goldman and retailers BJ’s Wholesale Club and Kohl’s from manufacturing and selling an item Merit claims infringes on its copyrighted Three Stones Pendant.

The court also ordered a recall of existing stocks of the pendant. But it declined to give Merit an order of seizure that would require Goldman to surrender molds and devices used to manufacture the pieces in question.

The ruling noted that “Merit’s and Goldman’s pendant designs share several distinctive features, including their use of similarly shaped and similarly polished metal S-curves; their similar tapering of the bales and the end portions of the precious-metal S-curves; and their similar sizing.” It noted that “the Goldman pendant design has a slightly more rounded and linear look than Merit’s design [but] this difference does not in itself overcome the more visually dominant similarities between the designs’ ‘total concept and feel.’”

Fredrick Goldman responded in a statement: “The item in question was produced by our company from original artwork based on prior items designed by our design team. We were notified by Merit of their filing of copyright of their similar item prior to our creation. We are respectful of the intellectual property rights of others and have asked our retailers to return to us any unsold products.”

The injunction is preliminary, and the case may still proceed to trial. Merit president Gigi Kaplan says he’s “satisfied” with the ruling and hints the company may take other legal actions. The company is also seeking damages under copyright law.

Kohl’s said the company does not comment on pending litigation. BJ’s did not return a phone call from JCK.