The Great Jewelry Design Ripoff
/Jewelry design has become a popular entrepreneurial endeavor for artisans who have found a customer base hungry to display a love of creativity. Ironically, American law often seems to find many forms of jewelry design not particularly creative enough, as evidenced by a restrictive approach by the U.S. Copyright Office and U.S. Patent and Trademark Office, as well as federal courts. Less than 6 months ago, in a twelve hundred page tome called the Compendium of U.S. Copyright Office Practices, Third Edition (the last one published 30 years before!), the Copyright Office buried "tips" for jewelry designers who think they might actually succeed in claiming a copyright on their designs (Sections 908.2 and 908.3):
"The U.S. Copyright Office may register jewelry designs if they are sufficiently creative or expressive. The Office will not register pieces that, as a whole, do not satisfy this requirement, such as mere variations on a common or standardized design or familiar symbol, designs made up of only commonplace design elements arranged in a common or obvious manner, or any of the mechanical or utilitarian aspects of the jewelry. Common de minimis designs include solitaire rings, simple diamond stud earrings, plain bangle bracelets, simple hoop earrings, among other commonly used designs, settings, and gemstone cuts."
The Compendium goes on to give a couple of examples, and then:
"When preparing the identifying material for a jewelry design (which may consist of photographs or drawings) the applicant should include all of the copyrightable elements that the applicant intends to register. This is important because the registration specialist can examine only the designs that are actually depicted in the identifying material. If the applicant wants the registration to cover more than just the face of a jewelry design, the identifying material should depict the design from different angles. Additionally, if the applicant wants the registration to cover part of the design or details that are relatively small, the applicant should make sure that those portions are clearly visible in the identifying material. When evaluating a jewelry design for copyrightable authorship, the registration specialist will consider the design as a whole, rather than the component elements of the design. In making this determination, the specialist may consider the following aspects of a jewelry design:
- The shapes of the various elements (e.g., gemstones, beads, metal pieces, etc.).
- The use of color to create an artistic design (although color alone is generally insufficient).
- Decoration on the surface of the jewelry (e.g., engraved designs, variations of texture, etc.).
- The selection and arrangement of the various elements.
The following aspects of jewelry generally are not copyrightable and are not considered in analyzing copyrightability:
- Faceting of individual stones (i.e., gem-cutting).
- Purely functional elements, such as a clasp or fastener.
- Common or symmetrical arrangements.
As a general rule, if the shape or decoration of a particular element contains enough authorship to support a registration, the specialist will register the claim. If not, the specialist will consider other factors, such as the selection, coordination, and/or arrangement of elements, as well as the degree of symmetry. When evaluating the copyrightability of a jewelry design, the specialist may consider the number of elements in the design. More elements may weigh in favor of copyrightability, although a work containing multiple elements may be uncopyrightable if the elements are repeated in a standard geometric arrangement or a commonplace design. A work containing only a few elements may be copyrightable if the decoration, arrangement, use of color, shapes, or textures are sufficient to support a claim."
Copyright protection begins at the moment of creation for original creative works fixed in a tangible medium (but rights, such as to statutory damages, are greater when there has been registration with the U.S. Copyright Offices). Usually, the threshold for creativity is low when it is applied to other works. But case law is not particularly kind to jewelry designers who believe they have been ripped off. Designers really seem to have to work hard to demonstrate sufficient creativity! Jewelry with a flower on it, for instance, may be deemed to be a replication of a pictorial element found in nature, and therefore unprotectable. Or jewelry depicted as barbed wire may not be found to be suitably creative. And don't forget: copyright never protects an idea itself. To be frank, the success of a copyright lawsuit related to jewelry design seems beholden to the whims of the various jurisdictions.
Nor are federal trademark or trade dress necessarily safe harbors from the storm. Trademark follows different guidelines than copyright, does not arise naturally from the creation of a work in tangible fixed medium, and is put to a different test than copyright (though copyright does apply a "substantially similar" test to certain artistic works). But federal trademark law also applies a fame test to questions of trademark dilution. Is this designer famous for this particular design to the point where it has acquired the distinctiveness necessary to protect the design under trademark law? For all but the most successful jewelry designers, fame is fleeting, and their ability to register a trademark for a jewelry design collection itself will likely be quite limited. Even large renowned design companies such as Tiffany and David Yurman have found mixed success in the arena of federal trademark law.
Interestingly enough, New York has its own intellectual property laws, and fame is not necessary for a successful New York trademark dilution/blurring claim. The test New York applies examines six factors: (i) the similarity of the marks; (ii) the similarity of the products covered; (iii) the sophistication of the consumers; (iv) the existence of predatory intent; (v) the renown of the senior mark; and (vi) the renown of the junior mark.
So, what can a jewelry designer do to protect him/herself from getting ripped off? There is no sure way of preventing a ripoff, and litigation is expensive. Registration is smart, when possible. But protections really begin in written agreements: choices a designer makes when choosing employees and vendors, in the manufacture, packaging, advertising, and distribution of the work, and in the ability early on to articulate the unique qualities of this particular jewelry collection itself.