Managing: Legal Issues
David Yurman Designs wins a major court victory in its
quest to protect the look it has promoted so widely. Copyright
and trademark law were at issue
David Yurman Designs' first copyright and trademark infringement
lawsuit to go to trial ended in a major victory against Prime
Art & Jewel in November when a jury found Yurman's overall
look is original and distinctive enough to warrant trademark
protection and PAJ infringed on that look.
The jury also found the five Yurman copyrights at issue were
valid and PAJ copied four of them. The case was decided in U.S.
District Court for the Southern District of New York.
The jury decided PAJ, Dallas, TX, should pay Yurman, New York
City, $275,000 in statutory damages under copyright law and $800,000
in punitive damages under unfair competition laws of New York
PAJ said its lawyers will explore every avenue of appeal to
have the finding overturned. "PAJ did not copy any of David
Yurman's designs and believes strongly that the jury erred in
its finding," the company said in a prepared statement.
PAJ also said the dispute would not affect its ability to meet
the requirements of its customers. "Although these pieces
[20 items from its Athena line] represent an insignificant part
of our revenue, as a matter of principle, we will continue to
resist this effort to drive us from a legitimate segment of the
Determining a Trademark Look
The ruling on Yurman's copyright pieces is fairly clear-cut:
the jury believed Yurman's five copyrights were valid and PAJ
infringed on four of them. But the jury's decision that Yurman's
"look" is original and inherently distinctive enough
to merit trademark protection makes the case most significant.
The latter decision was made applying the trade dress provisions
of trademark law. Trade dress protection is granted when a work
is sufficiently original and inherently distinctive to indicate
to a consumer it comes from a single source. In other words,
consumers would be likely to recognize the style as coming from
a single designer, even if they didn't know the designer's name.
The jury also found Yurman's look was entitled to trade dress
protection because of a legal theory known as secondary meaning.
A product garners secondary meaning if advertising and marketing,
unsolicited attention from the media or a product's longevity
establish in the mind of a typical consumer that it comes from
What exactly constitutes a product's trade dress? It's the
overall look and total image, including such features as size,
shape, color and texture. Every product has a trade dress, but
not every product's trade dress is protectable. To be protectable
from infringement, a product's trade dress has to achieve secondary
meaning or be inherently distinctive.
Inherent distinctiveness and secondary meaning are legal terms
that lie at the heart of the battle between Yurman Designs and
PAJ. They're both based on the idea that when consumers see a
certain design or look, they believe it comes from a certain
designer. As a result, the look becomes more salable.
Jewelry that's similar or identical to that designer's look
can confuse consumers regarding who made it. Yurman contended
in court that PAJ's jewelry would damage him because consumers
could think it was his design. The damage could occur in two
- Lost sales if consumers bought PAJ pieces because they were
less expensive or because they thought they were buying Yurman's
- Harm to his reputation due to the sale of similar-looking
but, in Yurman's opinion, inferior jewelry.
Yurman did not have to prove loss of business or damage to
his reputation or even that any consumers were confused by the
similarity. He only had to prove a likelihood of confusion.
For Designers and Imitators
Maxim Waldbaum, Yurman's lead counsel during the trial, said
the verdict will encourage designers to create designs and develop
a distinctive look, knowing their work, creativity and investment
could be protectable.
He also stressed designers now can feel confident that when
they send cease-and-desist letters, they will be considered more
carefully. He said it was not uncommon for manufacturers and
retailers to ignore cease-and-desist letters.
This case makes it clear designers can argue successfully
that even common jewelry elements can be put together in a way
that becomes distinctive to a jury. Yurman took the position
at trial that his collection of pieces had to be looked at in
its entirety what might be referred to as the trademarked
look instead of as separate elements. PAJ took the position
Yurman didn't have a protectable look because it was not original,
but rather was a compilation of non-protectable elements already
in use by others. On the stand, David Yurman admitted he did
not invent sterling silver cable or the process of oxidation
and did not own any protectable interest in the gems or the way
they were cut. He said he created his look by putting these non-protectable
elements together in a unique way.
PAJ also argued Yurman's look was not protectable because
it could not be articulated. None of the witnesses who testified
for Yurman was able to put into simple words a specific definition
of his look, PAJ argued. PAJ lawyer Molly Buck Richard said at
trial Yurman's inability to articulate or define his look is
a fatal flaw and as a matter of law, he does not have a protectable
interest in his look. Though Richard did not want to make a press
statement, PAJ says it will appeal and this argument may be part
of that action.
Time will tell if PAJ's legal team can prevail. Until then,
designers looking to protect their distinctive looks have won
a major victory.
By William H. Donahue Jr.
William H. Donahue is an attorney practicing in New Jersey.
|David Yurman's ubiquitous advertising was a determining
factor in a jury's recent decision that his look was protectable.
His lawyers argued such ads establish in the mind of a typical
consumer the product has come from
a single source.
Copyright © 1999 by Bond Communications.