Microsoft Word - 2023-08-04_Harry Winston Jewelry Review Board Decision Letter

August 4, 2023

Timothy D. Pecsenye, Esq.

Blank Rome LLP

One Logan Square

130 North 18

Street

Philadelphia, PA 19103

Re: Second Requests for Reconsideration for Refusal to Register Bracelet,

Bracelet, Bracelet, Earring, Necklace, EASPFSCLGF, NKSPCABFDBU,

NKSPCUDRPSRI (SR # 1-7240328586, 1-7240328540, 1-7240328484, 1-

7237998918, 1-7237998891, 1-7483384688, 1-7483426204, 1-7483384661;

Correspondence IDs: 1-3VG5TAF, 1-3X4FBI1, 1-3X4L57J)

Dear Mr. Pecsenye:

The Review Board of the United States Copyright Office (“Board”) has considered Harry

Winston SA’s (“Harry Winston”) second requests for reconsideration of the Registration

Program’s refusal to register jewelry design claims in the works titled “Bracelet” (“Bracelet #1”),

“Bracelet” (“Bracelet #2”), “Bracelet” (“Bracelet #3”), “Earring,” “Necklace,” “EASPFSCLGF,”

“NKSPCABFDBU,” and “NKSPCUDRPSRI” (each individually, a “Work,” and collectively,

the “Works”). After reviewing the applications, deposit copies, and relevant correspondence,

along with the arguments in the second requests for reconsideration, the Board: (1) reverses the

Registration Program’s denials of registration of the claims for Earring, EASPFSCLGF, and

NKSPCABFDBU; and (2) affirms the Registration Program’s denials of registration for the other

Works.

I. DESCRIPTION OF THE WORKS

The Works are eight jewelry designs.

 Bracelet #1 is a chain bracelet consisting of repeating clusters of four diamonds

separated by rectangular dark blue sapphires. Each diamond cluster has two round

and two marquise diamonds.

 Bracelet #2 is a chain bracelet consisting of a repeating pattern of blocks of five small

baguette and two round diamonds separated by rectangular dark blue sapphires.

 Bracelet #3 is a zipper-style bracelet consisting of a center row of rectangular

emeralds surrounded on each side by rows of marquise diamonds, which are

connected briefly at the center by three sets of marquise diamonds. The prongs

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-2-

around the emeralds are gold in color and the prongs surrounding the diamonds are

silver in color.

 Earring is an earring consisting of two curves linked by a center row of six

rectangular emeralds surrounded on each side by rows of marquise diamonds. The

prongs around the emeralds are gold in color and the prongs surrounding the

diamonds are silver in color. It appears that the two shapes are attached by two

marquise diamonds to form a single earring.

 Necklace consists of two strands, each with a center row of rectangular emeralds

surrounded on each side by rows of marquise diamonds. The two strands connect at

the bottom of the necklace, with one strand extending slightly lower to a point, and

each strand appears to end with a cluster of marquise diamonds. The prongs around

the emeralds are gold in color and the prongs surrounding the diamonds are silver in

color.

 EASPFSCLGF is an earring formed with a round center stone surrounded by six

sapphires. Three of the sapphires are oval and three are pear-shaped, but the oval and

pear-shaped sapphires are arranged in an asymmetrical pattern. A ring of eight single

and double marquise diamonds surrounds the sapphires.

 NKSPCABFDBU is a necklace consisting of different shaped diamonds accented

with a large sapphire at the base. Below the sapphire is a dyad of marquise diamonds,

a triad of round diamonds, and then a single marquise diamond at the bottom. There

is a cluster of diamonds at the clasp and the two necklace strands consist of

alternating marquise and round diamonds.

 NKSPCUDRPSRI is a necklace consisting of round diamonds accented with a large

sapphire pendant. The pendant features a large sapphire surrounded by rows of

marquise and round diamonds. There is a cluster of diamonds on top of the clasp and

each necklace strand consist of round diamonds.

The Works are depicted in the images below, which were submitted as deposits to the Office:

As a general matter, the Board reminds Harry Winston and future applicants of the requirements for jewelry

deposits. While applicants for jewelry claims are not required to submit the physical work to the Office; they are

required to provide identifying materials. See 37 C.F.R. § 202.20(c)(2)(xi)(A)(2). Identifying material deposits are

“two-dimensional reproductions or renderings of the work” that “show the entire copyrightable content” of the work

or that at least provide “an adequate representation of such content.” Id. § 202.21(a), (b). The Office recommends

that jewelry applicants provide deposits that “include all of the copyrightable elements that the applicant intends to

OFFICE PRACTICES § 908.3 (3d ed. 2021) (“COMPENDIUM (THIRD)”).

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-3-

Bracelet #1 Bracelet #2

Bracelet #3 Earring

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-4-

Necklace EASPFSCLGF

NKSPCABFDBU NKSPCUDRPSRI

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-5-

II. ADMINISTRATIVE RECORD

Harry Winston submitted applications for Bracelet #1, Bracelet #2, Bracelet #3, Earring,

and Necklace on December 19, 2018, and EASPFSCLGF, NKSPCABFDBU, and

NKSPCUDRPSRI on March 7, 2019. Copyright Office registration specialists refused

registration of the claims, finding that none of the Works “contain any design element that is

both sufficiently original and creative.” Initial Letter Refusing Registration of Necklace,

Earring, Bracelet #1, Bracelet #2, and Bracelet #3 from U.S. Copyright Office to Timothy

Pecsenye at 1 (June 6, 2019).

Subsequently, in letters with substantively identical contentions, Harry Winston

requested that the Office reconsider its initial refusals to register the Works. Letter re: Bracelet

#1 from Timothy Pecsenye to U.S. Copyright Office (Sept. 6, 2019).

After reviewing the

Works in light of the points raised in the First Requests, the Office reevaluated the claims and

again concluded that the Works “do not contain the requisite creativity necessary to obtain

Refusal of First Request for Reconsideration of Bracelet #1, Bracelet #2, Bracelet #3, Earring,

and Necklace from U.S. Copyright Office to Timothy Pecsenye at 3 (Jan. 9, 2020).

The Office

also noted that each Work “consists of a simple arrangement of geometric elements and colors

which fail to exhibit sufficient creativity to warrant registration.” Refusal of First Request for

Reconsideration of NKSPCUDRPSRI from U.S. Copyright Office to Timothy Pecsenye at 3

(Feb. 10, 2020).

In eight individual letters, all dated April 9, 2020, Harry Winston requested that, pursuant

to 37 C.F.R. § 202.5(c), the Office reconsider for a second time its refusals to register the Works.

See, e.g., Letter re: Bracelet #1 from Timothy D. Pecsenye to U.S. Copyright Office (Apr. 9,

2020) (“Bracelet #1 Second Request”).

In those letters, Harry Winston asserted that each

Work’s “elements form a unique and protectable design” that “at the very least, [contain] the

minimum degree of creativity and authorship required to obtain registration.” See, e.g., id. at 6.

Initial Letter Refusing Registration of NKSPCABFDBU and EASPFSCLGF from U.S. Copyright Office to

Timothy Pecsenye at 1 (June 26, 2019); Initial Letter Refusing Registration of NKSPCUDRPSRI from U.S.

Letter re: Bracelet #2 from Timothy Pecsenye to U.S. Copyright Office (Sept. 6, 2019); Letter re: Bracelet #3 from

Timothy Pecsenye to U.S. Copyright Office (Sept. 6, 2019); Letter re: Earring from Timothy Pecsenye to U.S.

2019); Letter re: EASPFSCLGF from Timothy Pecsenye to U.S. Copyright Office (Sept. 26, 2019); Letter re:

NKSPCABFDBU from Timothy Pecsenye to U.S. Copyright Office (Sept. 26, 2019); Letter re: NKSPCUDRPSRI

from Timothy Pecsenye to U.S. Copyright Office (Sept. 26, 2019) (collectively, the “First Requests”).

Refusal of First Request for Reconsideration of EASPFSCLGF and NKSPCABFDBU from U.S. Copyright Office

to Timothy Pecsenye at 3 (Feb. 10, 2020); Refusal of First Request for Reconsideration of NKSPCUDRPSRI from

U.S. Copyright Office to Timothy Pecsenye at 3 (Feb. 10, 2020).

Letter re: Bracelet #2 from Timothy D. Pecsenye to U.S. Copyright Office (Apr. 9, 2020) (“Bracelet #2 Second

Request”); Letter re: Bracelet #3 from Timothy D. Pecsenye to U.S. Copyright Office (Apr. 9, 2020) (“Bracelet #3

Second Request”); Letter re: Earring from Timothy D. Pecsenye to U.S. Copyright Office (Apr. 9, 2020) (“Earring

Second Request”); Letter re: Necklace from Timothy D. Pecsenye to U.S. Copyright Office (Apr. 9, 2020)

(“Necklace Second Request”); Letter re: EASPFSCLGF from Timothy D. Pecsenye to U.S. Copyright Office (Apr.

9, 2020) (“EASPFSCLGF Second Request”); Letter re: NKSPCABFDBU from Timothy D. Pecsenye to U.S.

D. Pecsenye to U.S. Copyright Office (Apr. 9, 2020) (“NKSPCUDRPSRI Second Request”).

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-6-

Harry Winston asserted that the Works are “complex” and contain arrangements that symbolize,

evoke, or portray certain subjects through diamonds and gemstones. See, e.g., id. at 5; see also

EASPFSCLGF Second Request at 5 (contending that the Work is a “complex and thoughtful

arrangement” that “portrays a blossoming flower”). The Board responds to each of these

arguments below.

III. DISCUSSION

After carefully examining each of the Works and applying the relevant legal standards,

the Board finds that three of the Works, Earring, EASPFSCLGF, and NKSPCABFDBU, contain

the requisite creativity necessary to sustain claims to copyright. Accordingly, the refusals of

these Works are reversed. The remaining five Works, however, do not contain the requisite

creativity and therefore, are not eligible for copyright protection.

A work may be registered if it qualifies as an “original work[] of authorship fixed in any

tangible medium of expression.” 17 U.S.C. § 102(a). In the copyright context, the term

“original” consists of two components: independent creation and sufficient creativity. See Feist

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). First, the work must have been

independently created by the author, “as opposed to copied from other works.” Id. Second, the

work must possess sufficient creativity. Id. Only a modicum of creativity is necessary, but the

Supreme Court has held that some works fail to meet even this low threshold. Id. at 358–59.

Some combinations of common or standard design elements may contain sufficient

creativity with respect to how they are juxtaposed or arranged to support a copyright claim.

Nevertheless, not every combination or arrangement will be sufficient to meet this test. See id. at

358 (finding the Copyright Act “implies that some ‘ways’ [of selecting, coordinating, or

arranging uncopyrightable material] will trigger copyright, but that others will not”). A

determination of copyrightability in the combination of standard design elements depends on

whether the selection, coordination, or arrangement is done in such a way as to result in

copyrightable authorship. Id.; see also Atari Games Corp. v. Oman, 888 F.2d 878, 883 (D.C.

Cir. 1989); Coach, Inc. v. Peters, 386 F. Supp. 2d 495, 498–99 (S.D.N.Y. 2005). A mere

simplistic arrangement of non-protectable elements does not demonstrate the level of creativity

necessary to warrant protection. See Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (“[A]

combination of unprotectable elements is eligible for copyright protection only if those elements

are numerous enough and their selection and arrangement original enough that their combination

constitutes an original work of authorship.”).

The Office’s regulations implement the longstanding requirement of originality set forth

in the Copyright Act. See, e.g., 37 C.F.R. § 202.1(a) (prohibiting registration of “familiar

symbols or designs”); id. § 202.10(a) (stating “to be acceptable as a pictorial, graphic, or

sculptural work, the work must embody some creative authorship in its delineation or form”).

Through its regulations, the Office provides guidance that copyright does not protect familiar

shapes or designs. Id. § 202.1(a); see also COMPENDIUM (THIRD) § 906.1 (noting that common

geometric shapes are not protectable).

Jewelry, such as the designs before the Board, are works of artistic craftsmanship.

COMPENDIUM (THIRD) § 925.1 (listing examples of works of artistic craftsmanship, including

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-7-

“ornamental jewelry”). The Copyright Act provides that sculptural works “include works of

artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are

concerned.” 17 U.S.C. § 101 (definition of “pictorial, graphic, and sculptural works”). Though

the term “works of artistic craftsmanship,” is not defined in the Act, the Supreme Court has

described these works as “works of art that might also serve a useful purpose.” Star Athletica,

L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1011 (2017) (discussing Copyright Office

regulations as considered in Mazer v. Stein, 347 U.S. 201 (1954)). When considering the

copyrightability of jewelry, the Office applies the “mirror image” of the Star Athletica test for

useful articles: the Office segregates the “mechanical or utilitarian aspects” of the work, while

considering the remainder for registration. COMPENDIUM (THIRD) § 925.2. In evaluating these

elements, the Office “will consider both the component elements of the design and the design as

a whole,” which may include decoration on the surface of the jewelry, such as engraving, as well

as the selection and arrangement of various elements such as shape and color. Id. § 908.3.

The Board provides its analysis of each of the Works below, beginning with the three that

it concludes can sustain a claim for copyright.

A. Earring

Earring is a jewelry design that includes several elements, all of which are common

geometric shapes or minor variations thereof. See 37 C.F.R. § 202.1(a) (“works not subject to

elongated ellipses, which are not copyrightable elements. See COMPENDIUM (THIRD) §§ 906.1,

906.2 (noting that copyright “does not protect common geometric shapes”); see also DBC of NY,

Inc. v. Merit Diamond Corp., 768 F. Supp. 414, 416 (S.D.N.Y. 1991) (discussing rectangles and

ellipses, along with other shapes, as in the public domain and unprotectable, and describing

marquise stones as “well-known in the jewelry trade”).

The Work as a whole, however, contains a sufficient amount of original and creative

authorship. “A work containing only a few elements may be copyrightable if the decoration,

arrangement, use of color, shapes, or textures are sufficient to support a claim.” COMPENDIUM

(THIRD) § 908.3; see also Satava, 323 F.3d at 811 (“[A] combination of unprotectable elements

is eligible for copyright protection only if those elements are numerous enough and their

selection and arrangement original enough that their combination constitutes an original work of

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-8-

authorship.”). This Work is arranged in a way that the two portions of the earring connect and

overlap using several marquise diamonds and have a curvature in both an upward and downward

direction. Additionally, both portions of the earring appear arched in mirroring positions

creating a three-dimensional effect. For these reasons, the Board finds that the Work is arranged

in an original manner that contains more than de minimis authorship. See Yurman Design, Inc. v.

PAJ, Inc., 262 F.3d 101, 110 (2d Cir. 2001) (originality in jewelry design inhered in the ways

plaintiff “recast and arranged” standard elements); Wolstenholme v. Hirst, 271 F.Supp.3d 625,

636 (S.D.N.Y. 2017) (holding, on a motion to dismiss, that the “selection, arrangement and

combination” of pharmaceutical charms on a bracelet and necklace were sufficiently original to

be protectable by copyright).

B. EASPFSCLGF

EASPFSCLGF is a jewelry design that includes several elements, all of which are

common geometric shapes or minor variations thereof. See 37 C.F.R. § 202.1(a). The Work’s

deposit copy includes photos of both the front and the back of the jewelry. The front consists of

circles, cones, ovals, and elongated ellipses, which are not copyrightable elements. See

COMPENDIUM (THIRD) §§ 906.1, 906.2; see also DBC of NY, Inc., 768 F. Supp. at 416. The back

of the Work appears to mirror the jewelry design itself as the shape of a flower, outlining what

appears to be each diamond or gemstone. For this reason, the Board views the underside of the

earring as containing non-functional elements that employ additional creative choices. Cf.

COMPENDIUM (THIRD) § 908.3 (noting that “[p]urely functional elements, such as a plain clasp or

fastener” are not considered in analyzing copyrightability of jewelry designs).

The Work as a whole, however, contains a sufficiently creative selection or arrangement

that is protectable by copyright. Specifically, the Work is not presented in a uniform or repeating

pattern, but instead depicts an arrangement that goes beyond a “[c]ommon or symmetrical

arrangement[]” and contains varying, asymmetrical shapes in both the sapphires and the

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-9-

marquise diamonds. COMPENDIUM (THIRD) § 908.3; see also Satava, 323 F.3d at 811. The

sapphires are various shapes consisting of three oval and three pear-shaped diamonds, arranged

in a non-repetitive pattern, and the marquise diamonds are grouped irregularly, consisting of

either one or two stones. See COMPENDIUM (THIRD) § 908.3 (“A work containing only a few

elements may be copyrightable if the decoration, arrangement, use of color, shapes, or textures

are sufficient to support a claim.”); Cosmos Jewelry Ltd. v. Po Sun Hon, Co., 470 F. Supp. 2d

1072, 1082 (C.D. Cal. 2006) (finding copyrightable “the minute characteristics of the blossom

petals, the arrangement of blossoms and other flourishes in different variations on the ‘multi-

blossom’ pendants, rings, earrings, etc., and the particular ‘mixture’ of sand used in producing

the sand-blast finish”); Yurman Design, Inc., 262 F.3d at 110; Wolstenholme, 271 F.Supp.3d at

636. Overall, the distinctive manner in which the elements are arranged meets the creativity

threshold required for copyright protection.

C. NKSPCABFDBU

NKSPCABFDBU is a jewelry design that includes several elements, all of which are

common geometric shapes or minor variations thereof. See 37 C.F.R. § 202.1(a). These spheres,

ovals, and elongated ellipses are not individually copyrightable elements. See COMPENDIUM

(THIRD) §§ 906.1, 906.2; see also DBC of NY, Inc., 768 F. Supp. at 416.

The Work as whole, however, contains several creative design choices that imbue the

Work with a sufficient amount of original and creative authorship. Specifically, the Work

consists of a necklace chain with two alternating patterns that change halfway up the chain. See

COMPENDIUM (THIRD) § 908.3. The top half of the chain consists of graduated alternating

marquise and round diamonds, while the bottom half consists of graduated alternating marquise

and clusters of round diamonds. The Work’s clasp is adorned with two marquise diamonds

surrounding a round diamond, all of which sit atop a single round diamond. The bottom of the

pendant consists of an asymmetrical arrangement featuring two marquise diamonds stacked on

top of three round diamonds, followed by a single, large marquise diamond. See Satava, 323

F.3d at 811. The Work’s combination and arrangement of all these unprotectable elements

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-10-

satisfies the requirement of creative authorship necessary to sustain a claim to copyright. See

Yurman Design, Inc., 262 F.3d at 110; Wolstenholme, 271 F.Supp.3d at 636.

To be clear, the Board’s decisions regarding Earring, EASPFSCLGF, and

NKSPCABFDBU relate only to the Works as a whole—the specific arrangements of various

shapes—and do not extend individually to any of the standard or common elements depicted in

the Works, such as rectangles, circles, cones, ovals, spheres, and elongated ellipses or the

faceting of the individual stones. See 37 C.F.R. § 202.1(a) (“[W]orks not subject to copyright

[include] . . . familiar symbols or designs”); see also COMPENDIUM (THIRD) §§ 908.2, 908.3.

D. Bracelet #1

Bracelet #1 is a jewelry design that includes only a few elements, all of which are

common geometric shapes or minor variations thereof. See 37 C.F.R. § 202.1(a). The Work

consists of rectangles, spheres, and elongated ellipses, which are not copyrightable elements.

COMPENDIUM (THIRD) § 906.1; see also DBC of NY, Inc., 768 F. Supp. at 416. While Harry

Winston discusses the “brilliant white diamonds and vivid dark blue sapphires,” Bracelet #1

Second Request at 5, color alone is not protectable. See 37 C.F.R. § 202.1(a) (stating that

coloring is not subject to copyright); COMPENDIUM (THIRD) § 906.3 (“mere coloration or mere

variations in coloring alone are not eligible for copyright protection”). Thus, the individual

elements that make up the Work are not copyrightable.

The jewelry design as a whole also does not contain a sufficiently original selection or

arrangement to be protected by copyright. The Office will not register jewelry “made up of only

commonplace design elements arranged in a common or obvious manner.” COMPENDIUM

(THIRD) § 908.2; see also id. § 313.4(J) (“[A] work consisting of a simple combination of a few

familiar symbols or designs with minor linear or spatial variations” is not copyrightable.); DBC

of New York, Inc., 768 F. Supp. at 416 (holding the diamond rings at issue uncopyrightable

because they are “on the whole, not exceptional, original, or unique”). Here, the Work is

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-11-

arranged by repeating the non-protectable elements (i.e., diamonds and sapphires) throughout the

bracelet in a symmetrical manner, which is not a creative arrangement. See Satava, 323 F.3d at

811; COMPENDIUM (THIRD) § 908.3 (noting that “a work containing multiple elements may be

uncopyrightable if the elements are repeated in a standard geometric arrangement or a

commonplace design” and “symmetrical arrangements” are generally not copyrightable).

Furthermore, the Work’s theme—“X” and “O” bracelets—is commonplace within the

jewelry industry.

While Harry Winston argues that the Work “form[s] a unique and protectable

design,” Bracelet #1 Second Request at 6, arranging these elements in this way does not rise

above de minimis creativity. Therefore, the Work as a whole is insufficient to support copyright

registration. See Diamond Direct, LLC v. Star Diamond Group, Inc., 116 F.Supp.2d 525, 528

(S.D.N.Y. 2000) (“[C]opyright may protect the particular way in which the underlying elements

are combined—if the particular method of combination is itself original.”).

Additionally, Harry Winston states that the Work’s arrangement “evokes the imagery of a

strand of the symbolic letters ‘X-O-X-O,’” with the marquise and round diamonds representing

the letter “X” and the sapphires representing the letter “O, which together “symbolizes the

common phrase representing ‘hugs and kisses.’” Bracelet #1 Second Request at 5.

Harry

Winston further contends that by wearing the Work, “the recipient’s wrist is literally and

figuratively wrapped in symbolic love.” Id. When deciding whether a work is copyrightable,

however, the Office “will not consider any meaning or significance that the work may evoke”

and “will not consider the author’s inspiration for the work, creative intent, or intended

meaning.” COMPENDIUM (THIRD) §§ 310.3, 310.5.

See, e.g., C. 1980 Vintage 14kt Yellow Gold XO Bracelet. 7”, ROSS-SIMONS, https://www.ross-simons.com/c.-

1980-vintage-14kt-yellow-gold-xo-bracelet.-7-quot--JEBX+906260+070+4Y.html (last visited July 31, 2023);

Amethyst XO Line Bracelet 11.52 Carat tw 14K Gold, ARNOLD JEWELERS, https://arnoldjewelers.com/shop/jewelry/

bracelets/fashion-statement-bracelets/amethyst-xo-line-bracelet-11-52-carat-tw-14k-gold/ (last visited July 31,

2023).

Even if the Board accepted Harry Winston’s argument that the diamonds and gemstones represent the letters “X”

and “O,” it would reach the same conclusion. As explained above, a repeating pattern of shapes—or letters—is not

a creative arrangement meriting copyright protection.

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-12-

E. Bracelet #2

Bracelet #2 is a jewelry design that includes only a few elements, all of which are

common geometric shapes or minor variations thereof. See 37 C.F.R. § 202.1(a). The Work

consists of circles and rectangles, which are not copyrightable elements. COMPENDIUM (THIRD)

§ 906.1; see also DBC of NY, Inc., 768 F. Supp. at 416. While Harry Winston discusses the

“brilliant white diamonds and vivid dark blue sapphires,” Bracelet #2 Second Request at 4, as

noted above, color alone is not protectable. See 37 C.F.R. § 202.1(a); COMPENDIUM (THIRD)

§ 906.3. Thus, the individual elements that make up the Work are not copyrightable.

The jewelry design as a whole also does not contain a sufficiently creative selection or

arrangement to be protected by copyright. As discussed above, the Office will not register

jewelry “made up of only commonplace design elements arranged in a common or obvious

manner.” COMPENDIUM (THIRD) § 908.2; see also id. § 313.4(J); DBC of New York, Inc., 768 F.

Supp. at 416. Here, the Work is arranged by repeating the non-protectable elements (i.e.,

uniformed-sized diamonds and sapphires) throughout the bracelet in a symmetrical manner,

which is not a creative arrangement. See Satava, 323 F.3d at 811; COMPENDIUM (THIRD)

§ 908.3. Further, the Work is a type of link bracelet whose configuration is unoriginal within the

jewelry industry.

Despite Harry Winston’s statement that the Work is a “highly complex and

colorful arrangement” that is meant to “accentuate the regal beauty and radiance of the blue

sapphires,” Bracelet #2 Second Request at 4, the arrangement is commonly used throughout the

jewelry industry and does not possess more than de minimis creativity. Additionally, for the

reasons discussed in Bracelet #1, Harry Winston’s arguments regarding the Work’s meaning or

See, e.g., ART DECO EMERALD AND DIAMOND LINK BRACELET, LANG ANTIQUES,

https://www.langantiques.com/art-deco-emerald-and-diamond-link-bracelet.html (last visited July 31, 2023);

Antique Art Deco 9.36cts Asscher-cut Diamond Platinum Square Link Bracelet, 1STDIBS,

https://www.1stdibs.com/jewelry/bracelets/link-bracelets/antique-art-deco-936cts-asscher-cut-diamond-platinum-

square-link-bracelet/id-j_16537282/ (last visited July 31, 2023); Vintage 1940 Deco Revival Flexible Link Bracelet,

VINTAGE JEWELRY COLLECT, https://www.vintagejewelrycollect.com/product/vintage-1940-deco-revival-flexible-

link-bracelet/ (last visited July 31, 2023).

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-13-

significance are unpersuasive. See COMPENDIUM (THIRD) §§ 310.3, 310.5; Bracelet #2 Second

Request at 4–5. Thus, the Work as a whole does not possess the required creativity for copyright

registration. See Diamond Direct, LLC, 116 F.Supp.2d at 528.

F. Bracelet #3

Bracelet #3 is a jewelry design that includes only a few elements, all of which are

common geometric shapes or minor variations thereof. See 37 C.F.R. § 202.1(a). The Work

consists of rectangles and elongated ellipses, which are not copyrightable elements.

COMPENDIUM (THIRD) §§ 906.1, 906.2; see also DBC of NY, Inc., 768 F. Supp. at 416. While

Harry Winston discusses the “brilliant white diamonds and vivid dark green emeralds,” Bracelet

#3 Second Request at 5, as discussed above, color alone is not protectable. See 37 C.F.R.

§ 202.1(a); COMPENDIUM (THIRD) § 906.3. Thus, the individual elements that make up the Work

are not copyrightable.

The jewelry design as a whole also does not contain a sufficiently creative selection or

arrangement to be protected by copyright. As discussed above, the Office will not register

jewelry “made up of only commonplace design elements arranged in a common or obvious

manner.” COMPENDIUM (THIRD) § 908.2; see also id. § 313.4(J); DBC of New York, Inc., 768 F.

Supp. at 416. Here, the Work’s arrangement consists of two sets of three strands of diamonds

and emeralds, which are all uniform in size, shape, and color. The sets are arranged in a

symmetrical manner, absent one marquise diamond at the bottom of the Work; the entirety of

which is not a creative arrangement, but is standard and commonplace within the jewelry

industry.

See Satava, 323 F.3d at 811; COMPENDIUM (THIRD) § 908.3. Both bracelet strands

See, e.g., Diamond and Emerald Art Deco Revival Gold Bracelet Estate Fine Jewelry, 1STDIBS,

https://www.1stdibs.com/jewelry/bracelets/tennis-bracelets/diamond-emerald-art-deco-revival-gold-bracelet-estate-

fine-jewelry/id-j_15631442/ (last visited July 31, 2023); OSCAR HEYMAN ART DECO DIAMOND AND

SAPPHIRE TRIPLE LINE BRACELET, LANG ANTIQUES, https://www.langantiques.com/oscar-heyman-art-deco-

diamond-and-sapphire-triple-line-bracelet.html (last visited July 31, 2023); Vintage Corletto Italian Diamond Ruby

18K Yellow Gold Bead Link Bracelet, DOVER JEWELRY AND DIAMONDS, https://www.doverjewelry.com/corletto-

italian-diamond-ruby-18k-yellow-gold-bead-link-bracelet.html (last visited July 31, 2023).

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-14-

also begin with a triad of marquise diamonds. While Harry Winston argues that the Work is a

“complex arrangement,” Bracelet #3 Second Request at 5, the Work is more akin to the example

in the Compendium that evidences de minimis authorship. See COMPENDIUM (THIRD) § 908.2

(refusing registration to a brooch consisting of “three parallel rows of sapphires” because the

design was “common” and contained “only a de minimis amount of authorship in the

arrangement of stones”). The Work’s arrangement of what appears to be three sets of marquise

diamonds affixed together, providing the Work with a slight coil-like design, does not alter the

Board’s analysis, as this is also common in the jewelry industry.

The Work also, unlike

Earring that is subject to copyright protection, does not appear arched or create a three-

dimensional effect. Additionally, for the reasons discussed in Bracelet #1, Harry Winston’s

arguments regarding the Work’s meaning or significance fail. See COMPENDIUM (THIRD)

§§ 310.3, 310.5; Bracelet #3 Second Request at 5–6. Thus, the Work as a whole is insufficient to

support copyright registration. See Diamond Direct, LLC, 116 F.Supp.2d at 528; Vogue Ring

Creations, Inc. v. Hardman, 410 F. Supp. 609, 612 (D.R.I. 1976) (finding the ring design not

protectable because it was “utterly devoid of any ‘original creativity’”).

G. Necklace

Necklace is a jewelry design that includes only a few elements, all of which are common

geometric shapes or minor variations thereof. See 37 C.F.R. § 202.1(a). The Work consists of

rectangles and elongated ellipses, which are not copyrightable elements. COMPENDIUM (THIRD)

§§ 906.1, 906.2; see also DBC of NY, Inc., 768 F. Supp. at 416. While Harry Winston discusses

See, e.g., ANCIENT SENSUALITY - VICTORIAN ETRUSCAN REVIVAL 10K ROSE GOLD GARNET SNAKE

BRACELETS (VICB004), RARITIES ANTIQUE JEWELRY, https://raritiesantiquejewelry.com/products/nc-pair-of-

victorian-etruscan-revival-10k-rose-gold-genuine-garnet-bracelets (last visited July 31, 2023); Etruscan Revival

Bracelet, ALICE KARLE APPRAISAL, https://www.alicekarleappraiserfineart.com/etruscan-revival-bracelet/ (last

visited July 31, 2023); VICTORIAN 3.90 CTW OLD MINE & EUROPEAN CUT DIAMOND PLATINUM 18 KARAT

YELLOW GOLD ANTIQUE SNAKE BANGLE BRACELET, WILSON’S ESTATE JEWELRY,

https://www.wilsonsestatejewelry.com/products/victorian-3-90-ctw-old-mine-european-cut-diamond-platinum-18-

karat-yellow-gold-antique-snake-bangle-bracelet (last visited July 31, 2023).

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-15-

the “brilliant white diamonds and vivid dark green emeralds,” Necklace Second Request at 5, as

discussed above, color alone is not protectable. See 37 C.F.R. § 202.1(a); COMPENDIUM (THIRD)

§ 906.3. Therefore, the individual elements that make up the Work are not copyrightable.

The jewelry design as a whole also does not contain a sufficiently creative selection or

arrangement to be protected by copyright. As discussed above, the Office will not register

jewelry “made up of only commonplace design elements arranged in a common or obvious

manner.” COMPENDIUM (THIRD) § 908.2; see also id. § 313.4(J); DBC of New York, Inc., 768 F.

Supp. at 416. The Work’s unprotectable elements are arranged in a standard and commonplace

manner within the jewelry industry.

See Satava, 323 F.3d at 811; COMPENDIUM (THIRD)

§ 908.3. The Work is a similar arrangement to Bracelet #3, consisting of a symmetrical

arrangement, absent the one marquise diamond near the clasp of the Work, that repeats

throughout the necklace and consists of three strands of diamonds and gemstones, which are all

uniform in size, shape, and color. COMPENDIUM (THIRD) § 908.3. Both necklace strands also

end with a triad of marquise diamonds. Contrary to Harry Winston’s assertion, the Work is not a

“complex and colorful arrangement.” Necklace Second Request at 5. Rather it is more akin to

the example in the Compendium that evidences de minimis authorship. See COMPENDIUM

(THIRD) § 908.2. Similar to Bracelet #3, the Work’s arrangement of affixing the two necklace

strands together through marquise diamonds does not alter the Board’s analysis.

Additionally,

the fact that one necklace strand extends slightly lower than the other does not alter the Board’s

decision that the Work cannot be protected by copyright. Further, for the reasons discussed in

connection with the above analysis of Bracelet #1, Harry Winston’s arguments regarding the

Work’s meaning or significance fail. See COMPENDIUM (THIRD) §§ 310.3, 310.5; Necklace

Second Request at 5–6. Therefore, the Work as a whole is insufficient to support copyright

registration. See Diamond Direct, LLC, 116 F.Supp.2d at 528; Vogue Ring Creations, Inc., 410

F. Supp. at 612.

Supra note 9.

Supra note 10.

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-16-

H. NKSPCUDRPSRI

NKSPCUDRPSRI is a jewelry design that includes only a few elements, all of which are

common geometric shapes or minor variations thereof. See 37 C.F.R. § 202.1(a). The Work’s

deposit copy includes photos of both the front and the back of the jewelry. The front consists of

circles, elongated ellipses, a cone, and a rectangle, which are not copyrightable elements.

COMPENDIUM (THIRD) §§ 906.1, 906.2; see also DBC of NY, Inc., 768 F. Supp. at 416. The back

of the Work appears to mirror the jewelry design itself, outlining each diamond or gemstone, and

what appears to be a clasp-like feature that runs diagonally from the top corner of the pendant to

the bottom corner. The clasp-like feature that is part of the pendant and the settings surrounding

each diamond or gemstone are not protectable by copyright. See COMPENDIUM (THIRD) § 908.3

(noting that generally “[p]urely functional elements” are not copyrightable or considered when

analyzing copyrightability). While Harry Winston discusses the “brilliant white diamonds” and

“vivid blue sapphire,” NKSPCUDRPSRI Second Request at 5–6, color alone is not protectable.

See 37 C.F.R. § 202.1(a); COMPENDIUM (THIRD) § 906.3. Thus, the individual elements that

make up the Work are not copyrightable.

The jewelry design as a whole also does not contain a sufficiently original selection or

arrangement to be protectable by copyright. As previously discussed, the Office will not register

jewelry “made up of only commonplace design elements arranged in a common or obvious

manner.” COMPENDIUM (THIRD) § 908.2; see also id. § 313.4(J); DBC of New York, Inc., 768 F.

Supp. at 416. Here, the unprotectable elements of the Work are arranged in a standard manner

that is commonplace in the jewelry industry—surrounding a larger gemstone with smaller

diamonds or other gemstones.

See Satava, 323 F.3d at 811; COMPENDIUM (THIRD) § 908.3.

The Work consists of two symmetrical necklace strands, each with round diamonds that are

See, e.g., 70.14CT CEYLON SAPPHIRE & 44.50CT DIAMOND NECKLACE & EARRINGS SUITE, NALLY

JEWELS, https://nallyjewels.com/products/510-000-703 (last visited July 31, 2023); White Gold, 6.65ct Ceylon

Sapphire and Diamond Necklace, SOTHEBY’S, https://www.sothebys.com/en/buy/_white-gold-1546ct-ceylon-

sapphire-and-diamond-necklace-5cc4 (last visited July 31, 2023).

Timothy D. Pecsenye, Esq. August 4, 2023

Blank Rome LLP

-17-

uniform in shape and color and shrink in size towards the bottom of each strand. See

COMPENDIUM (THIRD) § 908.3. These symmetrical strands come together to display a sapphire

pendant that is surrounded by smaller marquise and round diamonds. The round diamonds are

uniform in shape and color and are symmetrically arranged around the sapphire. See id. The

marquise diamonds surrounding the round diamonds also appear arranged in a symmetrical

pattern. See id. While Harry Winston asserts that the Work is a “complex and thoughtful

arrangement,” well-known jewelry designs that consist of a combination of common elements

are not “exceptional, original, or unique” enough to render a piece of jewelry sufficiently

creative. DBC of NY, Inc., 768 F. Supp. at 416; see also COMPENDIUM (THIRD) § 908.3. The

arrangement of marquise diamonds on the top clasp and the pear-shaped diamond where the

necklace strands meet, taken together with the Work’s other elements, also do not imbue the

Work with a sufficient amount of creativity to render the Work copyrightable. The Work, unlike

NKSPCABFDBU that is subject to copyright protection, does not contain several creative design

choices, such as necklace chains with two alternating patterns that change halfway up the chain

or asymmetrical arrangements. Additionally, for the reasons discussed in connection with the

analysis of Bracelet #1, Harry Winston’s arguments regarding the Work’s meaning or

significance are unpersuasive. See COMPENDIUM (THIRD) § 310.3; 310.5; NKSPCUDRPSRI

Second Request at 5–6. Thus, the Work’s arrangement is insufficient to support copyright

registration. See Diamond Direct, LLC, 116 F.Supp.2d at 528.

IV. CONCLUSION

For the reasons stated herein, the Review Board of the United States Copyright Office

reverses the refusals to register the copyright claims in Earring, EASPFSCLGF, and

NKSPCABFDBU. The Board now refers these works to the Registration Policy and Practice

division for registration of these three Works, provided that all other application requirements are

satisfied. The Board affirms the refusals to register the copyright claims in the other Works:

Bracelet #1, Bracelet #2, Bracelet #3, Necklace, and NKSPCUDRPSRI. Pursuant to 37 C.F.R.

§ 202.5(g), this decision constitutes final agency action with respect to the affirmed refusal

decisions in this matter.

__________________________________________

U.S. Copyright Office Review Board

Suzanne V. Wilson, General Counsel and

Associate Register of Copyrights

Maria Strong, Associate Register of Copyrights and

Director of Policy and International Affairs

Jordana Rubel, Assistant General Counsel