Yurman Trade Dress Win Reversed; Copyright Infringement Upheld

September 4, 2001

Yurman Trade Dress Win Reversed; Copyright Infringement Upheld

The Second Circuit Court of Appeals overturned designer David Yurman's landmark 1999 "trade dress" victory in federal court against Prime Art & Jewel, Dallas, TX, on Aug. 10 [see "Designer Victory"]. Trade dress protection is granted to a product design when the body of work is sufficiently original and distinctive to indicate to a consumer it comes from a single source.

Though the court of appeals also reversed an unfair competition finding against PAJ, it did reaffirm a copyright infringement finding against the Texas company, which requires it to pay $275,000 in statutory damages to Yurman for copyright infringement on four specific pieces of jewelry. PAJ is also required to stop manufacturing, distributing or selling the pieces and must destroy all such pieces in its possession.

The court's ruling on trade dress leaves intact the June 2000 post-trial ruling disallowing an $800,000 punitive damages award to Yurman, as well as his request for attorney's fees.

In overturning the trade dress finding, the Court defined a crucial requirement of trade dress law, one 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," the ruling stated.

Molly Buck Richard, one of the attorneys who represented PAJ at the 1999 trial in the Federal District Court of New York, had argued Yurman's 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 at the end of the case rather than allowing the jury to decide. The Court of Appeals came to the same conclusion. "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 Appellate Court's 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. "We need not decide whether Yurman could formulate a description of design elements to support a trade dress claim sufficient to protect a line of Yurman jewelry because Yurman has not even offered one for our consideration," said the opinion. "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."

This decision 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 of non-copyrighted pieces. For manufacturers and retailers, it makes clear that copyright and trademark law remain serious issues in the jewelry marketplace and cease-and-desist letters should be taken seriously, referred to counsel and responded to. In light of Yurman's copyright claims being upheld and other designers winning copyright infringement suits, don't interpret this decision as a death knell for federal protection of jewelry design.

Yurman has the option to seek a rehearing before the Circuit Court of Appeals or seek review of the decision by the U.S. Supreme Court.

- by William H. Donahue Jr.