Score One for the Little Guy

Sometimes, the little guy does win. Consider Ken Bishop, owner of Rona K. Inc., a seven-year-old Garden City, N.Y., jewelry firm with nine employees. He recently settled out of court for a sizable amount in the second of two cases against large firms – a retailer and a manufacturer – that were selling copies of his jewelry designs. More important, he secured permanent injunctions preventing them from selling any more copies.

“Large companies say, 'It’s just a tiny guy. He won’t come after us,’ ” says Bishop. “They think they can do what they want. But the law has provisions to protect the little guy as much as large firms – if he uses them.”

Bishop hasn’t stopped with his two recent wins. His ongoing campaign against firms allegedly knocking off and selling his designs has broadened, including use of the U.S. Treasury Department.

New idea. Bishop’s story began on a ski slope in Mount Stowe, Vt., in the early 1990s. His sister had just had a baby, and as he pondered what to make for her as a gift, he watched little children and their parents ski. Suddenly, he hit on the concept: jewelry charms in the simplified forms of a boy and a girl.

He subsequently entered them in design contests in 1992 and 1993 sponsored by a jewelry trade magazine and won second and third prizes, respectively. The awards led to the launch of Rona K.’s trademarked jewelry line, “The Kids.” One of the contest judges – leading New York retail jeweler Helene Fortunoff, principal of Fortunoff Fine Jewelry & Silverware – was so charmed by the jewelry that she became one of Rona K.’s first customers. The collection has since gained a number of other major retail clients, both mass merchants and retail jewelers. The charm pieces, which retail for $65 to $150, come in 14k white, yellow, and pink gold as well as platinum, and some 2,000 combinations can be produced from their various designs, claims Bishop.

Legal actions. By the mid-1990s, his work was being sold successfully around the United States, but it was also being knocked off. Customers and associates began telling Bishop they had seen copies of his work advertised or sold by unauthorized retailers, even under their names. It was, contends Bishop, virtually the same style design.

“Here I had created a marketplace in the jewelry industry for children’s charms” and now others were capitalizing on his work, he says. What was especially troublesome was that “all I make is 'The Kids’ jewelry, [and] it is what puts food on my own children’s plates,” he says. He estimates lost revenues since the mid-1990s at about $500,000.

Bishop gathered information on who was making and selling copies of his work, which he gave to his attorney. Armed with Bishop’s documentation, including the designs’ copyright registration, his lawyer began sending out “cease and desist” letters. (About a dozen have gone out in recent years.) Several firms, usually pleading ignorance, agreed to stop making or selling the copies. A couple, though, did not, and Bishop filed suit against them in the late 1990s.

In pretrial argument, they contended Bishop’s concept was one anyone could have thought of and had been used previously. But there was no evidence of anyone marketing or copyrighting the same design before Bishop did. In the end, though he had a strong case, Bishop agreed to settle out of court. For a small company, he says, that’s more feasible than “spending a couple years and thousands of dollars [in legal fees] in court. Who wants to do that? I want to get on with business.”

Terms of settlement in both cases prevent Bishop and his attorney from discussing the monetary settlements or even naming the defendants. But they were “large enough to make it worthwhile,” says Bishop. Just as important, he won permanent injunctions against both, preventing them from selling copies of his work.

Flea markets and Customs. Bishop is preparing to take legal action against two other firms allegedly selling copies of his work. He also has set his sights on other sources of infringement of his copyright.

Some are in flea markets. After purchasing copies of his jewelry sold in local markets in Long Island and West Chester, N.Y., Bishop made photocopies of them and the receipts and turned the documentation over to the Jewelers Vigilance Committee.

Then, assisted by JVC, he wrote the vendors, telling them they had sold unauthorized copies of his work and unless it was stopped, legal action would be taken. Most did stop, not wanting to face a long and costly court action. One who did not had the jewelry confiscated by the Nassau County Police Department’s “Crimes Against Property” squad.

Bishop is also defending his copyright against foreign violators. Based on information and photographic samples he gave the intellectual property branch of the U.S. Treasury, the Customs Service is prepared to seize copies of Rona K. jewelry made by a foreign firm named by Bishop.

What can other small designers learn from his experience? “I want the jewelry industry to know you can go up against [large firms] and win,” he says.

Rona K. Inc. made all the right moves in defending its designs, says Jewelers Vigilance Committee executive director Cecilia Gardner. They are steps any small designer or manufacturer can follow.

1. Owner Ken Bishop immediately registered his designs with the U.S. Copyright Office. Although copyright is implicit with creation of a design, the law says such work must be registered if the owner intends possible legal action against violators. More information about the U.S. Copyright Office is available on its Internet home page (http://lcweb.loc.gov/copyright/).
2. When Bishop learned of violations, he contacted his attorney, who notified violators with cease and desist letters.
3. He gathered data to support his claims of infringement, such as samples of the unauthorized copies, who made them, and where and when they were sold, as well as sales receipts.
4. He picked the most egregious violators – both retailer and supplier – as the prime targets for litigation.
5. To save himself court time and legal fees, he settled out of court with violators for sizable damages and permanent injunctions against future sales.
6. He sought other tools to defend his designs against unauthorized vendors. A good one, which he used, is the U.S. Customs Service, “an important element in protecting copyright and trademarks,” says Gardner. It will record a U.S. company’s copyrighted design or trademark and photographic samples for a $190 fee. Bulletins are issued, and data go into its computer network for use by Customs officials to check imports for trademark or copyright infringements. Products in violation are denied entry. JVC has information on this Customs program.
7. Like Bishop, small firms and designers should know their copyright or trademark rights. Call JVC at (212) 539-1919.