According to federal district judge Xavier Rodriguez of the Western District of Texas (San Antonio Division), the creation and sale of belt buckles featuring a mirror image of a copyright-protected team penning logo constituted copyright infringement.

William C. Spent d/b/a Spent Saddlery & Feeds created a logo of three riders penning three head of cattle. He registered this logo with the United States Copyright Office. Spent later contracted with Award Design Medals, Inc. (Award Design) to create a die and produce a motif featuring Spent’s team penning logo. 

Spent gave Award Design limited rights to use this "team penning logo" to create belt buckles and other products exclusively for Spent. Award Design created the die and included a copyright notice.

"You copied my belt buckle, pardner!"

Unbeknownst to Spent, someone with Award Design created a “mirror image” of Spent’s logo, which also deleted the copyright notice.

Award Design went out of business. A predecessor company to Montana Silversmiths, Inc. purchased certain assets of Award Design, including the mirror image of Spent’s logo that did not include the copyright notice. Montana Silversmiths sold approximately 1,100 products featuring the mirror image of Spent’s logo.

Spent sued Montana Silversmiths and Award Design for copyright infringement, and moved for summary judgment on his claims.

The court granted Spent’s motion for summary judgment against both defendants in part, holding that both engaged in copyright infringement. According to Judge Rodriguez,

Award Design does not contest that it engaged in copyright infringement. Although Montana Silversmiths, Inc. argues that it believed itself to be a valid owner of the Team Penning logo, this is not a defense to the copyright infringement claim, although this argument is relevant to the issue of willfulness.”

The court held that there was a genuine issue of material fact as to whether the copyright infringement was willful. Thus, the court held that to the extent Spent was alleging that the defendants “willfully” engaged in copyright infringement, Spent’s motion for summary judgment was denied. 

Take aways: 

1) You can be completely oblivious to the fact that you are engaging in copyright infringement, and still be held liable. Purchasers of equine gear for resale would be wise to consult an attorney who is knowledgeable in the area of patent and/or copyright law prior to the purchase; and

2) The creation of a “mirror image” of copyrighted work does not defeat copyright protection.

Case information: Spent v. Montana Silversmiths, 2012 WL 400964, Civil No. SA-11-CA-307-XR (W.D. Texas, Feb. 7, 2012)