The ABCs of Copyright Protection

Copyright protects original works of authorship, which means original designs. An original design is something one creates from his or her mind using whatever tools are available. For jewelry, tools include implements to carve waxes and create renderings as well as computers and software.

An original design eligible for copyright protection need not be the first. So long as a design is created from the mind and not copied from a preexisting piece, it is original. In court, when a design protected by copyright appears similar to prior designs, the defendant will often claim that the plaintiff did not create anything original but merely copied preexisting designs. The copyright holder claims the design was created solely from the mind. In my experience, it’s rare for two independently created designs to be identical, and copyists mostly copy successful designs. Generally, a judge will look at the copyrighted design, the alleged copy, and prior designs; if the copyrighted design and alleged copy are closer to each other than to prior designs, the copyright holder is likely to win.

To achieve copyright protection, you must complete a copyright application to register the design and then file it with the copyright office with the proper fee (currently $45) and identifying materials showing the design. In approximately four months, under the current timetable, you may receive a copyright registration, assuming the application is completed correctly.

The Copyright Office will work with the public. For example, if an application has some minor errors, the Copyright Office will generally call and ask permission for the copyright examiner to make certain changes to the application, and the copyright registration may be approved.

You must have a copyright registration in hand prior to suing anyone. A copyright registration can be enforced only in U.S. Federal Courts, which are reasonably efficient and staffed by well-trained and well-schooled legal personnel. U.S. District Court judges are generally of superior intellect and experience.

Not all original designs can be registered. The Copyright Office has evolved standards of what it considers “authorship,” that is, worthy of copyright protection. Designs must not be formed of common figures, such as hearts or ordinary geometrics. Whether or not a specific design will be approved is sometimes hard to predict, because the opinions of copyright examiners may differ. Courts rarely invalidate officially approved registrations.

You can obtain information from the Copyright Office and register applications by visiting its Web site at www.copyright.gov. Information is available to help people complete applications.

The Copyright Office will register a collection of designs under a single application if the works have not been sold or offered for sale yet, so a well-organized jewelry manufacturer can regularly register a large number of designs without going through the extra paperwork and expense of filling out a single application for each design. Although there’s no upper limit to the number of designs in a collection, it’s preferable to limit the number of works filed together so they’re manageable for both filing and later enforcement.

Anyone who files an application to register copyrights should keep duplicates of the deposit copies of the designs that depict the styles being reviewed by the copyright examiner. The deposit copies can be photographs or drawings. A photograph can have any number of individual jewelry designs on the same sheet, or one can include any number of drawings.

It’s critical that the applicant keep copies of the deposit materials, because when a copyright applicant seeks to enforce the copyright, the applicant is required to identify the design that was allegedly copied. If the applicant doesn’t have copies of the deposit copy, he or she must go to the Copyright Office and ask it to search its files to find those deposit copies. The deposit copies are not readily available to the public, and it can take a fair amount of time to locate the records. In most cases, the requesting party must be the applicant or someone accused of infringement. Therefore, if a copyright owner wants to assert copyright infringement, it is important that copies of what was sent to the Copyright Office be kept so that they can be produced for the accused or the court along with the copyright registration.

Although copyright registrations are not available for geometric designs, the U.S. Patent and Trademark Office issues design patents for geometric designs. Design patents are often sought for diamond cuts or for jewelry designs that have substantial value.

A patent attorney usually prepares and files a design patent application, because it’s more complicated and involves more legal concepts than a simple copyright application. Also, the Patent Office generally doesn’t deal with the public. A design patent application can often cost $1,000 or more to file, and perhaps that amount again to seek final approval.

The period of protection lasts 14 years, whereas copyright protection lasts 100 years. Obviously, it’s better to pay $45 and receive a 100-year protection period than spend thousands of dollars for only 14 years. In some cases, however, the only protection available is a design patent, and the jewelry manufacturer or diamond dealer may have no choice if it needs protection.

Utility or mechanical patents are also available for the jewelry industry. These patents are directed to inventions such as new clasps or earring and bracelet structures, new methods of setting jewelry, etc. Utility patents are far more complex to prepare than design patents, and they often cost $6,000–$10,000 to prepare and file and thousands of dollars to prosecute to seek approval. Obviously, mechanical patents are sought for products or methods with much broader application than specific designs.

Since the introduction of new technology in the industry, more utility patents are being sought and granted in areas such as laser cutting, computer control, and other technical innovations. As the industry becomes more technologically based, the importance of utility patents will only increase.

As a result of a change in the law, methods of doing business are now subject to patent protection. If you can devise a system for improving sales, for example, and the system is new and novel, you may be able to patent it.

The intersection of new business methods and computers has also increased patenting possibilities. Many patents are being obtained for financial systems, and that has led other businesses to seek patent protection where technology, retailing, and manufacturing intersect.

An important distinction between copyrights and patents is the ease with which enforcement is obtained. In the simplest sense, federal courts are familiar with copyright lawsuits involving designs, and a judge will normally look at the designs at an initial status conference and offer an opinion about whether or not the alleged copy is substantially similar to the original. While litigation involving copyright infringement can become expensive, the ultimate issue, often, is whether or not the two items are substantially similar. Defenses other than noninfringement can be raised in a copyright lawsuit, which can increase the cost of the suit, but the simplicity of the issues in copyright litigation contrasts with the complexity of issues in patent law.

Another area of interest is trade dress, which is directed to the look and feel of a product. A trade dress plaintiff must prove that its product has acquired secondary meaning—in other words, when the public sees the item, it immediately associates it with the company. Some jewelry designers seek to protect their designs using only trade dress rights. While those rights are hard to enforce, defending against such a lawsuit is generally costly. Trade dress rights are fact dependent, so a case involving such rights may require a trial. A company willing to spend money can make it expensive to defend against an accusation of trade dress infringement.

A common complaint in litigation by defendants who feel unfairly accused is that they have to pay to defend. In the United States generally, parties pay their own legal fees, and although in copyright cases legal fees may be awarded to a successful party, legal fees are generally not rewarded in patent, trademark, and trade dress litigation matters. Some defendants have been able to have their general liability coverage insurance policies cover some of the legal costs and damages.

The field of trademarks is well known to those in the jewelry industry, especially in view of the recent ascension of branding. Counterfeiting of famous brands is widespread. Trademark infringement, separate from counterfeiting, is not common in the jewelry industry.