PJM Magazine, November 2001
Managing/Legal Issues
Appeals Court Reverses Yurman Trade Dress Win, Upholds Copyright
Finding The designer couldn’t articulate the distinctive elements
that would give the jewelry wide protection, the court says The Second
Circuit Court of Appeals effectively voided a 1999 federal jury
finding that was significant because it said jewelry designer David
Yurman’s line was so distinctive it deserved overall protection from
copying. Such protection is called trade dress and is granted when a
body of work is sufficiently original and distinctive to indicate to
a consumer it comes from a single source. Yurman, of New York City,
secured his 1999 victory in a lawsuit against Prime Art & Jewel of
Dallas, TX (Professional Jeweler, January 2000, p. 129). However, in
its August 2001 opinion, the Appeals Court said Yurman could not
define his “look” and, therefore, did not deserve trade dress
protection. The court also reversed an unfair competition finding
against PAJ, but the company didn’t emerge without some damage. The
court reaffirmed a copyright infringement finding that requires PAJ
to pay $275,000 in statutory damages involving four specific pieces
of jewelry. PAJ also must stop manufacturing, distributing or selling
those pieces and must destroy all such pieces in its possession.
Trade Dress Details
In overturning the trade dress finding, the Appeals Court defined a
crucial requirement of trade dress law that 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.” Molly Buck Richard, an attorney 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 rather than
allow the jury to decide. The Appeals Court agreed, saying: “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 Appeals 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. The court said, “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.”
Protection Options
The ruling 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. For manufacturers and retailers, it makes clear
that copyright and trademark law remain serious issues in the jewelry
marketplace and that 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, this decision is not a death knell for federal
protection of jewelry design. Yurman has the option to seek a
rehearing before the Circuit Court of Appeals or request a review of
the decision by the U.S. Supreme Court.
William H. Donahue Jr.
William H. Donahue Jr. is an attorney practicing in New Jersey.