Knock-offs and ‘copycat’ designs are nothing new to the fashion world. The rising demand for “fast fashion” and bargain hunting alike make knock-offs particularly attractive to the consumer’s insatiable appetite. This trend is no different in the jewelry industry where copying of popular designs is an all-too-familiar issue facing jewelry designers. As compared to the clothing industry, jewelry designers generally have more intellectual property (“IP”) options at their disposal to help address the issue of copyists. While not all jewelry designs are protectable through each of the various forms of IP, designers should be familiar with and explore the possible options to best protect their original designs against fast fashion copyists and other copycat jewelry suppliers.
Copyrights
Copyrights can be a particularly useful tool in protecting jewelry designs. Copyrights protect artistic expressions that are original to the creator and that are fixed in a tangible form (i.e., more than just an idea in your mind). A limitation on copyrightable subject matter is functionality; functional articles cannot be protected but conceptually separable portions of such functional articles can be copyrightable. In other words, if an object has a practical or useful function, copyright protection applies only to the original, creative elements “that can be identified separately from the utilitarian aspects of an object”, but does not extend to the underlying design of the functional object. Thus, unlike their clothing design counterparts, the structure of which is generally considered functional and not copyright protectable, jewelry designs can be protected under copyright.
One important benefit of a copyright is that a copyrightable work is granted copyright protection upon creation. In other words, registration with the U.S. Copyright Office is not mandatory to owning a copyright. There are significant advantages to copyright registration, however, and registration is a pre-requisite for filing an infringement lawsuit. Another benefit of copyright protection is that it has a relatively long duration, lasting for the life of the author of the work plus an additional 70 years. If the author is a company, the copyright lasts for 95 years from the date the work was published, or 120 years from the date the work was created, whichever ends first.
As the name implies, copyright ownership allows the owner to stop others from copying their jewelry designs. Thus, where a defendant can show that they did not copy the design (for example, where the defendant independently created the same or a similar design without knowledge of the copyrighted design), then there would be no infringement.
What designs are copyrightable?
The copyrightability of a jewelry design can be a highly fact-intensive inquiry dependent on multiple factors. Often times copyright cases pertaining to jewelry designs will hinge on whether a jewelry design has any original artistic element that qualifies for copyright protection.
For example, in 2008, following a challenge to the Van Cleef & Arpel’s copyrights in its well-known Vintage Alhambra necklace design, a court held that the jewelry design was copyrightable, even though the clover design on the jewelry piece was similar to a prior clover-shaped military insignia:
The court reasoned that even though the clover was a common shape, there was originality in the way Van Cleef “recast and arranged [the] constituent elements” into the final jewelry design. See Van Cleef & Arpels Logistics, S.A. v. Landau Jewelry, et. al., 547 F. Supp. 2d 356 (S.D.N.Y. 2008).
By contrast, in a 2005 court case, a jewelry designer’s copyright registrations in barbed wire jewelry did not pass muster under court scrutiny. There the court held that barbed wire jewelry was not copyrightable because there was not enough creativity or originality apart from traditional barbed wire to warrant copyright protection. In other words, the designer did not add anything protectable to traditional barbed wire to warrant copyright protection. See Todd v. Mont. Silversmiths, 379 F. Supp. 2d 1110 (D. Colo. 2005).
Design Patents
Like copyrights, design patents also protect creative expressions and can be useful tools in protecting jewelry designs. Design patents (which are different from the more-common utility patents[1]) protect new, original, and non-functional (i.e. ornamental) designs, including jewelry designs. Despite the overlapping subject matter between copyrights and design patents, there are key differences between these two types of IP.
Unlike copyrights, design patents do not automatically “subsist” upon creation of the design. In order to qualify for design patent protection, the designer must file an application to register the design with the U.S. Patent and Trademark Office within one year of disclosure of the design or offering the design for sale. Any resulting registration lasts for fifteen (15) years. Practically speaking, this means that jewelry designers generally have to make the decision to file for a design patent before they know whether the design will have marketplace success or shelf longevity. Also, design patents typically take longer to register, go through a more heightened review process before registration, and are more costly to register than copyrights.
Although the hurdles to registration of a design patent can be higher than for copyrights, design patents can also be valuable enforcement tools. Designs that may not qualify under the originality hurdle for copyright protection could still qualify for design patent protection. Also, design patents do not require “copying” for there to be an infringement. Even where a defendant independently creates a design that is substantially similar to a patented design, it can constitute design patent infringement. Most notably, the design patent statute provides favorable remedies to design patent holders against infringers, such as the ability to recover damages amounting to the infringer’s total profits.
Examples of jewelry designs protected under design patent
The following are examples of jewelry companies that have secured design patents for their designs:
Trademarks and Trade Dress
Trademark and trade dress are related categories of IP that protect the brands (trademarks) or the designs (trade dress) that function as “source identifiers.” Being a “source identifier” means that consumers recognize products bearing those words, logos or designs as coming from a singular source or company.
With respect to jewelry, trademarks will generally be the brand names (think: Rolex, Omega, Harry Winston, Swarovski), the logos (think: 
), or even the product-level names and collections (think: Cartier’s Love, Tiffany’s Atlas collection, or Van Cleef & Arpel’s Alhambra) that are branded on or in connection with the jewelry. By contrast, trade dress will generally refer to jewelry designs or packaging designs that become memorable in connection with one particular company.
Distinguishable from the prior types of IP discussed, trademarks and trade dress rights are created and built through use in the marketplace. Registration is not mandatory for building rights; however, there are significant benefits to securing a trademark or trade dress registration. One huge advantage of trademark and trade dress protection is that the rights do not expire, per se.[2] The rights are valid so long as the trademark/trade dress is being used and maintained in the marketplace, meaning that the rights can theoretically last forever. One important component to maintaining valid trademark rights is that a trademark owner should be diligent in monitoring its brand. It should prevent others from using infringing marks, maintain quality control over licensees, and ensure that its own use of its marks and trade dress is consistent to maintain the goodwill associated with the brand. So long as there are valid rights, trademark and trade dress rights allow the owner to stop third parties from using a confusingly similar trademark or trade dress.
Trade Dress Examples
Trade dress refers to product configurations, product designs, and product packaging that the consuming public has come to understand as source identifiers. Securing trade dress rights in jewelry designs will generally require a showing of “secondary meaning (i.e., that the public has come to recognize the design as being associated with one single source). This usually comes with a showing of longstanding exclusive use in the marketplace, substantial sales, and other evidence establishing that the public recognizes the trade dress as belonging to one company.
Trade dress can be established in jewelry designs, in product packaging, or in elements of a particular design. Below are examples of jewelry trade dress that have been successfully registered:
Product Packaging Examples
Tiffany owns registrations for its Tiffany-blue pouches, bags, and jewelry boxes that it uses to package its jewelry:
Cartier International A.G. owns a registration for its red and gold jewelry box:
Jewelry Design Examples
Kendra Scott owns trade dress registrations for various jewelry designs:
David Yurman owns trade dress registrations for its “twisted-cable” bracelet designs:
Other Jewelry Examples
William Goldberg Diamond Corp owns a trade dress registration for its particular cut of diamond:
Building Your IP Strategy
There are many different types of IP strategies that can be used to protect valuable jewelry designs. While the above list is not an exhaustive discussion of jewelry-related IP rights, designers can use it as a framework when considering how to protect their designs. When building an IP strategy, it is important to remember that these different types of protections are not mutually exclusive; a single design could be protected via a variety of different strategies. This requires planning and a bit of foresight. Nevertheless, having a robust IP portfolio in place with multiple enforcement options at one’s disposal would be the ultimate crown jewel.
Editor: Catherine Holland
[1] Utility patents may also be relevant to the jewelry industry, except that they would not be used for ornamental jewelry designs, but rather, to protect functional aspects of jewelry (such as clasps).
[2] Although the common law rights built through use of a trademark or trade dress do not technically expire (so long as there is continued use of the trademark/trade dress in commerce as a source identifier), the registrations can expire if they are not timely maintained and renewed.
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