Yurman has a "Trade Dress" copyright.
Actually “trade dress” is NOT part of copyright law but of TRADEMARK
law.
national advertising campaign and by securing copyright
registrations for many of his distinctive designs.
You haven’t quoted the whole letter and any response MUST take into
account ALL the details. For example it looks. from the parts you
supplied, like a “fishing expedition” (or perhaps a “harassment”
letter) and not a bona fide “cease and desist” letter. Yes, you
should consult a lawyer but I think your reply needs to go not to the
inquiring firm but to their BAR ASSOCIATION (with a nice CC to them,
of course) that makes a formal complaint against their behavior and
asks for any other such complaints already lodged against them or
associated with the name “Yurman”. (Please note an attorney will most
likely be reluctant to complain to the bar association because they
have a vested interest in bar associations NOT enforcing the ethics
pledges all attorneys take but seldom obey.) Also request a statement
of their ethics policy and any swear-in oath that they might have.
In that letter politely note that this looks like an harassment
letter in the form of a fishing expedition and fails to identify
specifically what “secured copyright registrations” are actually
being infringed and specifically tied to exactly which of your
designs. Also note that as far as you know there is no such beast as
a “secured copyright registration,” copyright is a mere
“registration” system with no “approval” process at all that might be
considered to “secure” a party’s rights.
The Copyright Office simply ACCEPTS the statement of the author ( or
some appropriate designee) that: “I, the undersigned, hereby certify
that I am the author of the work identified in this application and
that the statements made by me in this application are correct to the
best of my knowledge.”
But even swearing to that is not necessary to “claim” copyright (and
you can own a copyright without claiming it at all too). And their
swearing also means they ACCEPT the limitations that 'Copyright in a
work of the visual arts protects those pictorial, graphic, or
sculptural elements that, either alone or in combination, represent
an “original work of authorship.” The statute declares: “In no case
does copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it
is described, explained, illustrated, or embodied in such work.”
Given that the attorney has written you they MUST have prepared a
WRITTEN evaluation of precisely what “elements, alone, or in
combination” are Yurman’s versus each of your works. Ask the bar
association to secure a copy of that and forward it to you.
Also note that you have catalogs, images, price lists, etc. (IF YOU
DO OF COURSE???–or accurately whatever you do have) for your
entire 20 years in business, and some sources for the “inspiration”
of some pieces, and you will be delighted to provide same when you
have been specifically demanded to provide same in response to a
specific, documented, legal request to do so, not based on a mere
“fishing expedition.”
I strongly suspect you will NEVER HEAR A WORD more from either the
bar association or Yurman’s (so called) attorney (who may have
sufficient ethics violations in “burning hours” on a client with
money but little oversight, to get them a wink from the bar
association).
Good luck but try not to lose too much sleep. Do, however, institute
a policy where your designer MUST document with dates what they do
and any “inspiration” sources with a copy to you and one they must
keep forever.
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
