Copyright Infringement: How Close Is too Close?
Here are three questions to answer before you sell jewelry that may have been copied
Copyright-infringement disputes are common in the jewelry industry. To avoid expensive and time-consuming legal problems, you should know the issues that arise when a manufacturer or designer claims pieces youre selling or thinking of selling infringe on a copyright.
Ignoring a warning from a copyright owners attorneys could be a costly mistake. If it turns out the items you are selling do infringe on a valid and enforceable copyright, you may find yourself involved in litigation, your stock impounded and your company liable for damages.
The Uniform Commercial Code may give you legal recourse against your supplier, but it may not be worth much if the copyright litigation wipes out your supplier. The safest bet is to avoid such problems in the first place.
Here are three general questions you (or your attorney) should answer before you sell merchandise that could potentially infringe on a copyright design.
1. Does the designer or manufacturer own a valid copyright?
A copyright is obtained through the U.S. Patent and Trademark Office in Washington, DC. Look for the copyright symbol on advertising or check with the company claiming copyright protection.
2. Was the piece in question copied from the copyright original?
In court, the plaintiff may prove actual or physical copying by showing the defendant had access to the copyright work and that there is probative similarity between the two pieces. (Probative similarity means the two pieces are enough alike to reasonably indicate one was copied from the other.)
It may be difficult if not impossible to know whether the manufacturer of the piece youre selling had access to the copyright owners piece. But access doesnt necessarily mean the alleged infringer had to have seen the original piece. If the copyright piece was on the market first and was advertised or displayed at trade shows, thats enough to establish access.
Whether there is probative similarity is simply a question of how alike the pieces look. If you lay the two pieces side by side and a consumer would be likely to say they look like copies, the test has probably been met.
But just because a designer copied the theme or certain aspects of a copyright design doesnt necessarily mean it was unlawful or the copyright was infringed. Theres another important analysis.
3. Was there illegal copying, also known as unlawful appropriation?
To determine whether copying is illegal, a court uses a two-step analysis. First, the court must isolate protectible from unprotectible elements in the copyright piece. Second, it must determine whether there is substantial similarity between those protectible elements and the allegedly infringing piece. Lets consider a case decided in summer 1999 by Judge Jed S. Rakoff in the U.S. District Court for the Southern District of New York. The case centered on a lawsuit in which Sandberg & Sikorski accused Andin International, both of New York City, of infringing on its copyright design of a mother-and-child heart-shaped pendant. The judges analysis is a good example of how a court puts copyright law into action.
- What is not protectible? In most jewelry designs, some elements can be protected by copyright and some cannot. This is because most jewelry, no matter how distinctive, contains elements that have been used before in a wide range of designs. Hearts, flowers, animals, fish, birds, cabochon gems, pendants, rings, bracelets, earrings, pins and precious metals such as silver, gold and platinum are all common elements that could not reasonably be copyrighted. Granting exclusive use of any of these elements would confer a monopoly over a large segment of the entire jewelry industry. In this case, the judge found the heart shape and the subject matter of a mother and child are not protectible.
- What is protectible? Unique or creative expressions of an idea are protectible. The judge acknowledged that under certain circumstances, the original way a heart-shaped mother/child motif is expressed could be protectible. He agreed with S&S that certain elements in its design are protectible.
- Is there substantial similarity? Next, the judge looked at the two mother/child motifs to determine whether they are substantially similar, a legal term that simply means an ordinary consumer would be likely to overlook any differences between the designs and declare the pieces are the same.
The judge found enough differences between how the two pieces express the idea of a mother and child in a heart shape to decide one does not infringe the copyright of the other. For example, he said the mother and child in the Andin piece are more abstract than in the copyright piece, which he found to be more detailed and representational. He also said the Andin piece shows less of the childs body because the feet and legs are fused into the line of the heart. In addition, the judge noted that one is entirely polished gold while the other is polished and matte together. Additionally, he noted the heads of the mother and child touch in one design but not in the other.
A Dissenting Voice
Philip Gottfried, trial attorney for Sandberg and Sikorski, basically agreed with the principles of law the judge used, but not with the way he applied the facts of the case to those principles. He argued the overall aesthetic effect of the protectible elements should be compared and that it was inappropriate to focus so much on the differences in details.
However, Edward Meilman, counsel for Andin, said that when you disregard the common, unprotectible elements of the heart shape and the mother-and-child motif, its the remaining details that have to be compared. In this case, he said, there is virtually no similarity between the remaining details.
For the time being, at least, Meilmans and Andins point of view has won the day.
by William H. Donahue Jr.
William H. Donahue Jr. is an attorney practicing in New Jersey.