Yurman Wins Right To Protect His Look

November 2, 1999

Yurman Wins Right To Protect His Look

David Yurman Designs, New York City, won a major victory in its copyright infringement and trade dress lawsuit against Prime Art & Jewel, Dallas, TX. The case was decided Nov. 1 in Federal District Court for the Southern District of New York.

The jury found the five Yurman copyrights at issue were valid and that Prime Art & Jewel had copied four of them. The decision declared Yurman's look was original and inherently distinctive enough to merit trademark protection under the trade dress provisions of trademark law. Trade dress protection is granted when a work is sufficiently original and inherently distinctive so it indicates to a consumer that it comes from a single source of origin – in other words, consumers would be likely to recognize a style as coming from a single designer, even if they don'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 the product has come from a single source.

The decision extends protection to Yurman's designs beyond those pieces he has protected by copyright and allow him to claim market ownership of his overall look.

The award to Yurman was $275,000 in statutory damages under copyright law and $800,000 in punitive damages under unfair competition laws of New York state. After post-trial motions are complete, the appeal process is open to both parties.

- by William H. Donahue Jr., Esq.