Yurman Decision Upheld; Punitive Damages In Question

May 5, 2000

Yurman Decision Upheld; Punitive Damages In Question

A judge upheld an October 1999 trial jury's finding that five copyrighted David Yurman designs are valid and pieces of jewelry sold by Prime Art & Jewel infringed four of those copyrights. In post-trial motions, PAJ argued the copyrights were not valid and PAJ had not copied Yurman's designs.

The judge also upheld the jury's finding that Yurman Designs Inc., possessed a protectible trade dress, giving it trademark protection on its overall look. He also upheld the jury's finding that 20 PAJ pieces infringed on that trade dress. Finally, the judge upheld the jury's decision the infringements were willful.

Based on the copyright finding, statutory damages against PAJ of $275,000 for copyright infringement were upheld.

However, 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 did not award Yurman 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 that it could not stand at that amount. Molly Buck Richard, PAJ's trial counsel, says she believes the award was stricken. This issue will be addressed by the Court after Waldbaum submits a proposed final judgment.

The judge also issued a permanent injunction against PAJ requiring it 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. He did not issue an injunction against all cable jewelry. He stated 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 easily provide Yurman with an "undeserved and anticompetitive monopoly" on cable designs. The decision was rendered by Federal 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 last October (see Yurman Wins Right to Protect His Look). For an analysis of the trial's findings, see Professional Jeweler magazine, January 2000, p. 129.

Both 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., Esq.