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January 2000

Managing: Legal Issues

Designer Victory

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 state.

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 market."

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 one source.

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 ways:

  • Lost sales if consumers bought PAJ pieces because they were less expensive or because they thought they were buying Yurman's jewelry.
  • 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.



 

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