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Possible copyright infringement


#1

I own a small independent bespoke jewellery company in the UK. We
specialise in providing a personal tailored service to our clients,
and everything is handmade to order. We had a client that came to us
with a very specific request for a design for an engagement ring
that they wanted us to create using some diamonds that had been left
to her by a relative that had passed away. The ring consisted of 8
tapering ‘spokes’, channel-set with 3 diamonds in each spoke that
spun around a central larger diamond. The client provided us with 8
diamonds (which were to be set as the first diamond in each ‘spoke’)
and a larger central diamond (we were to supply 16 additional
stones). We took pictures of the ring at various stages of
manufacture because it was quite unusual. That was almost 2 years
ago. The pictures of the finished ring can be seen on our website
(http://www.danielprince.co.uk) for those of you that are interested.

Anyway, we have since used the image of the ring in an advert of our
services in Vogue magazine. Which led to us being contacted by a
jewellery designer that is now threatening legal action because of
copyright infringement. Their solicitors have provided me with a
photograph of a similar looking ring that they allege was designed
and constructed by their client in 1999. Their claim appears to be
genuine, and obviously our client may have seen the design or the
ring before coming to us. My question is, as a bespoke jeweller, how
are we to know whether a client’s designs or inspirations are
original? How can we protect ourselves from a torrent of similar
claims at copyright infringement in the future? Were we right to
advertise the ring? Are we in breach of copyright?

All comments welcome, positive constructive comments that is. Please
bear in mind that up until now, we had no knowledge of a 3rd party
being involved, and had no reason to suspect that the ring was not
conceived by our client.


#2

Hi Daniel.

Because you have innocenly stumbled onto someone else’s design you
can reasonably claim “accidental discovery”. Let the designer know
that this was not intentional and that you are claiming accidental
discovery and have no intention of futher infringing on their
copyright. This should satisfy the designer but if it does not your
defense is reasonable and prudent and would very likely be considered
as such by any court who would bother to actually hear this
complaint.

Best regards,
David


#3
    My question is, as a bespoke jeweller, how are we to know
whether a client's designs or inspirations are original? 

You will never know this for certain. Well, “never” is a strong
word, but assume it safely.

    How can we protect ourselves from a torrent of similar claims
at copyright infringement in the future? 

Only use your own original designs in advertisements.

     Were we right to advertise the ring? Are we in breach of
copyright? 

I’m sure James E. White will tell you all about that.

    All comments welcome, positive constructive comments that is.
Please bear in mind that up until now, we had no knowledge of a 3rd
party being involved, and had no reason to suspect that the ring
was not conceived by our client. 

I believe you had no knowledge of a third party. However, since you
can never know a client’s motivation, you should consider
advertising your own conceptions only, never a client’s.

James in SoFl


#4

Daniel Prince

    are we to know whether a client's designs or inspirations are
original? How can we protect ourselves from a torrent of similar
claims at copyright infringement in the future? Were we right to
advertise the ring? Are we in breach of copyright? 

Most likely this is a classic “only the lawyers will win” case, both
sides will just spend money on lawyer fees. I am not a lawyer (or a
solicitor) and you’ll have to make your own decisions (with or
without the aid of legal counsel).

The last question first. No, you are likely NOT violating the other
designer’s copyright–your client may (or may not) be BUT it will be
entirely up to the other designer’s solicitors to prove that. Most
likely that is a very tough proposition unless the other designer’s
ring design had been very heavily advertised or had otherwise somehow
become “well known” even though you honestly hadn’t seen it. (They
can still attempt to prove you knowingly copied, or should have known
you were copying, the design of the other designer but the hurdles
they would have to jump for that would likely be even higher.)
Except for the design instigation of your client your entire
effort was independent creation and even if two people independently
create exactly the same expression they are both entitled to claim
their own copyright rights in it.

Do you have a sketch given to you by the requester of the ring? With
that and sufficient corroborating materials/witnesses you’re likely
to be exonerated (even though it may unfortunately cost you a pretty
pence for that to occur).

What to do now? There are basically 2 choices:

  1. sit and wait and see what happens (i.e., do nothing until a
    lawsuit is filed against you) or

  2. take some proactive approach (with or without solicitor help). I
    think, if you have the aforementioned sketch, I’d opt for the latter
    and cc your client. Prepare a very brief reply that tells the story
    of how you came to do the ring and provide a copy of the sketch and
    the client info (then optionally pass that by a solicitor and rework
    as needed) and send them to the other designer’s solicitor. The
    advantages of coughing up the money for your own solicitor review are
    that you (hopefully) can be prevented from innocently and
    inadvertently making a statement that could later be used (or
    twisted) to hang you or give them a new, non-copyright, grounds to
    nail you. Of course one risk you run is incurring the wrath (or
    whatever) of your client (who you’ve done nothing more than cc in the
    matter) regardless of whether they are guilty or innocent.

If you opt to wait it spares you and your client if nothing more
ever happens and your own trouble (and possible expense) from being
proactive but, should a lawsuit be filed, you’re bound to pay more in
trouble if you try to defend yourself or more trouble and expense if
you hire a solicitor at that point. And, of course, then the client
must be dragged into the fray.

Assuming that the client “did” see a SIMILAR ring (we’ll assume the
two are not identical), at least say the client also runs in the same
circles that known clients of the other designer run in (so the
"proof" that your client was copying at least the “idea” of the other
designer’s ring is “met”), then the issues that will really make the
solicitors rake in the fees (probably in advance if you please) are
where the line between “copying” the idea (which is 100% legal) and
"making a derivative work" (which is often but not always a violation
of copyright) comes into play. There is no bright line test and your
result in court is very likely to be as influenced by the solicitors,
judge(s), and any specific jury as it is by the real facts of the
case.

As to how to avoid the problem occurring again I wouldn’t worry
about it at all. It will just irritate clients and the vast majority
(say 99.87% or thereabouts, probably higher) of client design wishes
will have no ready distinctiveness that anyone will ever question.

Meanwhile be thinking about compromise positions, say a flat fee
from you (or much preferably your client) that constitutes a
settlement for about what the design “royalty” might be (that the
other designer thinks they were robbed of) and/or would you be
willing to not use the picture of that ring in your advertising
(i.e., a “free” sacrifice on your part). Be aware that the other
designer will want to recover all their solicitor’s costs plus a bit
and the solicitor may very well be angling to get their fees up for
a nice personal profit too. Sorry you’re in the pickle but do the
best you can with it and don’t hold it against the rest of the world.

James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com


#5

I am neither a Barrister nor Solicitor, nor a lawyer (I am in the
U.S.,) and I think that you MUST discuss with a legal professional.
It seems LOGICAL to me, that if an infringement did occur, it was
your client who commited it, not you…but the law isn’t always
logical !

p.s. can you define ‘bespoke’ for those of us not in U.K.?

David Barzilay
Lord of the Rings
607 S Hill St Ste 850
Los Angeles, CA 90014-1718
213-488-9157


#6

There was a jewellery store in Toronto (my city) some years ago…it
was called…ready?..> “Jewel’s ’ R Us” well not too long after a
series of “Toys 'R Us” lawyers and accountants came trooping down to
the stores’ owner and guess what? They are not “R Us” anymore…they
had a “Cease and Desist” order thrown at them and fines higher than
the moon…they changed their name, very fast!..gross infringement
of their World-Wide name logo!

Point to clarify search out ANY name before hanging out your
name-shingle lest you become financially involved with the
lawyers…Gerry Lewy!


#7

“bespoke” is more accurately made to order rather than “one of a
kind”


#8

Bespoke means custom-made to order.

One of the commonest uses of the word is in the phrase ‘bespoke
tailoring’ which refers to having a suit made to your own personal
measurements by a tailor, the whole process including the customer
choosing the cloth, colour of lining, shape of lapels, number of
buttons etc.

Pat