Appeals Court Reverses Yurman Trade Dress Win, Upholds Copyright Finding
The designer couldn't articulate the distinctive elements that would give the jewelry wide protection, the court says
The Second Circuit Court of Appeals effectively voided a 1999 federal jury finding that was significant because it said jewelry designer David Yurmans line was so distinctive it deserved overall protection from copying.
Such protection is called trade dress and is granted when a body of work is sufficiently original and distinctive to indicate to a consumer it comes from a single source. Yurman, of New York City, secured his 1999 victory in a lawsuit against Prime Art & Jewel of Dallas, TX (Professional Jeweler, January 2000, p. 129).
However, in its August 2001 opinion, the Appeals Court said Yurman could not define his look and, therefore, did not deserve trade dress protection.
The court also reversed an unfair competition finding against PAJ, but the company didnt emerge without some damage. The court reaffirmed a copyright infringement finding that requires PAJ to pay $275,000 in statutory damages involving four specific pieces of jewelry. PAJ also must stop manufacturing, distributing or selling those pieces and must destroy all such pieces in its possession.
Trade Dress Details
In overturning the trade dress finding, the Appeals Court defined a crucial requirement of trade dress law that it said Yurman failed to meet: A plaintiff seeking to protect its trade dress in a line of products must articulate the design elements that compose the trade dress.
Molly Buck Richard, an attorney who represented PAJ at the 1999 trial in the Federal District Court of New York, had argued Yurmans inability to articulate or define his look was a fatal flaw in a trade dress case. She said the judge who presided over the Yurman trial should have dismissed the trade dress claims rather than allow the jury to decide. The Appeals Court agreed, saying: The focus on the overall look of a product [or products] does not permit a plaintiff to dispense with an articulation of the specific elements which comprise its distinct dress. Courts will be unable to shape narrowly tailored relief if they do not know what distinctive combination of ingredients deserves protection ... And if a court is unable to identify what types of designs will infringe trade dress, how is a competitor in the jewelry business to know what new designs would be subject to challenge by Yurman? Competition is deterred not merely by successful suit, but by the plausible threat of a successful suit.
Trade Dress Still Alive
The Appeals Courts opinion does not say trade dress cannot be used to protect a line of jewelry. It says Yurman did not adequately describe the elements in his jewelry entitled to trade dress protection. The court said, Pressed by PAJ on appeal to provide some description of its trade dress, Yurman produced the following: The artistic combination of cable jewelry with other elements. But the word artistic simply begs the question; and unless Yurman seeks protection for cable itself, the jewelry must be supposed to combine cable with other elements. This articulation is altogether too broad to be a protectable, source-identifying expression.
The ruling has implications for designers, manufacturers and retailers. For designers, it may mean copyrighting specific pieces could be a safer way to protect designs than trying to rely on trade dress protection.
For manufacturers and retailers, it makes clear that copyright and trademark law remain serious issues in the jewelry marketplace and that cease-and-desist letters should be taken seriously, referred to counsel and responded to.
In light of Yurmans copyright claims being upheld and other designers winning copyright infringement suits, this decision is not a death knell for federal protection of jewelry design.
Yurman has the option to seek a rehearing before the Circuit Court of Appeals or request a review of the decision by the U.S. Supreme Court.
William H. Donahue Jr.
William H. Donahue Jr. is an attorney practicing in New Jersey.