Yurman Decision Upheld
Punitive damages are in question
A federal judge has upheld an October 1999 trial jurys finding that five copyright David Yurman designs are valid and that pieces of jewelry sold by Prime Art & Jewel infringed on four of those copyrights. In post-trial motions, PAJ had argued the copyrights were not valid and PAJ had not copied Yurmans designs.
The judge also upheld the jurys finding that Yurman Designs Inc., New York City, possesses a protectible trade dress, giving it trademark protection on its overall look. He also upheld the jurys finding that 20 pieces by Dallas, TX-based PAJ infringed on that trade dress and that the infringements were willful.
Statutory Damages Upheld
Based on the copyright finding, the judge upheld statutory damages of $275,000 against PAJ for copyright infringement. But the judge ruled the $800,000 punitive damages awarded to Yurman under the state law claim of unfair competition could not stand because the jury didnt award actual damages under the trade dress or unfair competition findings.
Maxim H. Waldbaum, lead trial counsel for Yurman Designs, says that in so ruling, the judge was not striking the award completely, only saying it could not stand at that amount. Molly Buck Richard, PAJs trial counsel, says she believes the award was stricken. The court will address this issue after Waldbaum submits a proposed final judgment.
The judge also issued a permanent injunction requiring PAJ to stop manufacturing, distributing or selling the pieces the jury found were copyright-infringing or trade-dress-infringing and to destroy all such pieces in its possession.
Not All Cable Covered
The judge did not issue an injunction against all cable jewelry. He said he was unable to divine from the testimony of a variety of witnesses a coherent or specific description of the trade dress or distinctive look the jury found to exist. He said an overly broad or imprecisely worded injunction could give Yurman Designs an undeserved and anticompetitive monopoly on cable designs.
The decision was rendered by Judge Robert W. Sweet of the U.S. District Court for the Southern District of New York, the presiding judge at the Yurman/PAJ trial in October. For an analysis of the trials findings, see Professional Jeweler, January 2000, p. 129.
Yurman and PAJ have the right to appeal any finding or ruling made in this case to the Circuit Court of Appeals.
by William H. Donahue Jr.