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Copyright and Jewelry Design Story


#1

Hi all, an interesting copyright case involving jewellery from the
globe and mail newspaper in Canada.

It glitters. It sparkles. It’s art
www.theglobeandmail.com

Pyrrha, a small but savvy jewellery firm, takes to the courts
to protect its original designs – and livelihood – from
counterfeits, ALEXANDRA GILL writes

ALEXANDRA GILL

VANCOUVER – In Greek mythology, Pyrrha was the daughter of
Epimetheus, the primordial titan, and Pandora, a poisoned gift
from the gods. When Zeus put an end to the Golden Age by
unleashing a great flood, Pyrrha and her husband, Deucalion,
braved the storm together. After crashing through the waves
for nine days in a chest, the two emerged as mankind’s sole
survivors.

Flash forward to present times.

Today, Pyrrha Design Inc. is a small but valiant jewellery
company, based in Vancouver and owned by husband-and-wife team
Wade Papin and Danielle Wilmore. Five years ago, when a
Saskatchewan retailer threatened the couple’s livelihood by
flooding the market with cheap replicas of their work, they
fought back by taking their own Pandora’s Box to federal court.
Settled last month, it was a watershed copyright lawsuit – one
that could have far-reaching implications for other Canadian
artists.

At stake was the question of whether jewellery is a work of
art, protected by the Copyright Act, as are painting, music and
works of literature, or a “useful article” with a utilitarian
function. Although U.S. law is clear – jewellery is indeed an
artistic work and as such is entitled to copyright protection
– the issue had never been tested in Canada.

Because the case was settled out of court, a final conclusion
has still not been laid down in law. But a ruling last winter
from the Federal Court of Appeal, siding with Pyrrha, strongly
suggests that original jewellery designs should be protected by
copyright.

“If it was just about us, we might not have pursued it for so
long,” Papin explains when we sit down for classic cocktails at
Nu restaurant in Vancouver, where the trendy designers are well
known in fashionable social circles.

“Counterfeiting has become endemic to the jewellery design
industry,” he continues. “Something needed to be done.”

As part of the settlement, Papin and Wilmore received an
undisclosed financial sum from Daniel Mysak, president of the
Western Canadian accessories retail chain SpareParts, along
with a big box of sterling silver pendants, earrings and rings
(bearing an uncanny similarity to Pyrrha’s fibre optic glass
Cat’s Eye line) and a promise that he would stop producing the
products.

“For the next person who wants to take something like this on,
it will be a lot easier,” says Papin. “We’ve made a lot of
headway and given other designers a foot to stand on.”

When the dispute began five years ago, the self-taught
Vancouver design team was in the process of establishing a
solid reputation in the United States. Their funky handmade
designs – including a Danish modern-inspired line of
silkscreens on burled walnut – were being sold in such
prestigious stores as Terence Conran in Manhattan and Fred
Segal in Los Angeles, and in gift shops at the Museum of
Contemporary Art in Los Angeles and the Andy Warhol Museum in
Pittsburgh.

More recently, their Deucalion line of rugged men’s pendants
and cuffs appeared in the Hollywood film The Chronicles of
Riddick, while their Seals rings and necklaces (cast from
19th-century wax seals) showed up at this year’s New York
Fashion Week – on the runway at Araks’s lingerie show and in
gift bags for front-row VIPs. Britney Spears, Gwen Stefani and
Jessica Alba are clients.

In other words, Pyrrha makes top-quality jewellery. So when
the firm’s exclusive Vancouver retailer called to ask why it
had begun selling to a shopping-mall vendor, the designers
panicked.

“We jumped in the car and went right over,” Wilmore recalls.
“We had been copied in small ways before, but when we saw this
line we both felt nauseous. He had 10 different designs,
stamped with his trademark, with the exact same bevel, chain
and colour combinations. It was even displayed in much the
same way we would display it.”

Mind you, the SpareParts products had been manufactured in
Taiwan and were selling for half the price of Pyrrha’s line.

“It’s always been our mandate to keep our production in
Canada,” says Papin. “This was such cheap quality, we were
outraged. Around the same time, we saw a friend in Yaletown
wearing one of ‘our’ rings, which actually turned out to be
[Mysak’s]. So here we had people going around saying, ‘Look at
my new piece of Pyrrha’ – as the stone falls out,” he says
with a bitter laugh.

Their peers advised them there was nothing they could do.
“Everyone said, ‘The industry thrives on knock-offs,’ or
’Imitation is the highest form of flattery.’ This wasn’t
imitation. To us, it was theft,” exclaims Wilmore, who still
gets flustered when she talks about it.

The couple hired Jennifer Conkie, the high-profile Vancouver
lawyer who had just come out of a much-talked-about trial in
which she successfully represented musician Sarah McLachlan in
a lawsuit brought on by a disgruntled songwriter.

Eventually, after a cease-and-desist letter failed to persuade
Mysak to back down, Pyrrha took the case to court. All along,
the retailer had maintained that jewellery is a "useful"
article, because it is worn on the body, and if more than 50
copies of any one design are made, it is exempt from the
Copyright Act and can be counterfeited with impunity.

Pyrrha’s lawyer argued that jewellery is no more useful than a
painting on a wall or a sculpture adorning a lobby. Unlike a
jacket or a pair of eyeglasses, it is not worn for warmth, to
improve eyesight or for any function other than aesthetic
appearance. On March 23, 2004, Justice Paul Rouleau dismissed
the claim. Siding with Mysak, the motions judge explained in a
summary judgment that jewellery is not protected by the
Copyright Act, but should be dealt with under the Industrial
Design Act, because it is a three-dimensional object “not
bought purely and simply for its artistic properties, but
because of the utility of the article apart from design.”

The designers were devastated – and broke. “We had already
spent $30,000 on the case and gotten nowhere,” recalls Wilmore.

Their lawyer agreed to launch an appeal, continuing with the
case on a contingency basis. “Whether you’re famous or
not-so-famous, large or not-so- large, I feel strongly about
the importance of copyright protection for artists of all
genres,” Conkie explains. “It’s hard enough for artists to
make their way in the business world. The Copyright Act should
be there to protect them and given full force and effect.”

On Dec. 13, 2004, a Federal Court of Appeal agreed,
unanimously, to overturn the earlier decision. The ruling judge
noted that there was an issue of “genuine interest” to be heard
that hadn’t been litigated previously.

"A tie pin or cufflinks may be useful types of jewellery that
hold clothing together, while other objects such as a brooch or
earring may be purely ornamental and not useful at all,
valuable only for their own intrinsic merit as works of art,"
Justice Allen M. Linden said in the decision, which allowed
the case to proceed to a full and fair trial.

Although the decision was an important one, observed closely
in the legal field and cited in intellectual property
newsletters from here to Australia, Pyrrha still wasn’t much
further ahead. In the following year, the case bogged down with
pre-trial applications and disagreements on technicalities.

“We were met with a surprising amount of resistance,” says
Conkie, who received approximately 10,000 questions for
discovery from the defendant’s lawyer.

“When you’re involved in something like this for five years,
you can understand why some people opt for the baseball-bat
route,” Papin jokes. “They were trying to drown us in paper. We
really wanted this case to be heard, but when [Mysak] finally
agreed to settle and stop making the product, which is what we
were after all along, we had to accept it and move on with our
lives.”

Although the case sends a strong message to would-be
counterfeiters, the issue of whether jewellery is, indeed, art
is still left hanging, legally speaking.

“In all truth, it would have been valuable to complete the
case and have the court say clearly that jewellery is
copyright-protected and counterfeiting is a copyright
infringement,” says Conkie.

Although Papin says he’s pretty sure no one will be copying
Pyrrha’s designs any time soon, he and Wilmore now have to
decide what they’re going to do with the “big box of offending
jewellery” they received as part of the settlement.

With a laugh, Papin says: “We’re thinking about pouring it all
into clear acrylic and making it into an art piece called
Knock-Off.”


#2

charles -

thanks for the great account of the pyrrha designing couple’s
success against Daniel Mysak and SpareParts. i had no idea that
canadian law is so far behind in its treatment of artists’
intellectual properties.

the court’s attitude on copies of items according to utility
categories struck me as archaic, counterproductive and narrow minded.
how can canada attract vulnerable industries to a country that says
"we will welcome your industry and, by the way, your product will
have no protection under our so-called ‘copyright law’?

it could be illuminating to see the professions and associations of
the elected officials enacting such a nudge, nudge, wink, wink ‘law’.
it was amazing to hear pyrrha, in such an 18th century laissez-faire
system of jurisprudence, won the hard fought battle and wound up with
more than a box of spare parts -

"…he and Wilmore now have to decide what they’re going to do with
the "big box of offending jewellery [knockoffs by SpareParts] they
received as part of the settlement.

With a laugh, Papin says: “We’re thinking about pouring it all into
clear acrylic and making it into an art piece called Knock-Off.”

wouldn’t “don’t knock-off” be more to the point?

ive