The mental processes that prompt artists to paint masterpieces and inventors to produce life-changing innovations are the same ones that inspire the designers of original, beautiful and practical jewelry. It might be the glimpse of an ingenious machine or process the designer can translate into a wearable design or it may be the struggle to solve a problem customers have endured for years. Whatever the lightning bolt that blasts the idea into the enterprising designer’s mind, it is ideally the key to his or her professional recognition and commercial success.
In reality, as most designers will tell you, a new jewelry design can begin years of headaches, fighting copycats and trying to prove ownership of an idea to a trend-obsessed market. “When somebody designs something new and original, other people are inevitably going to do a little take on it. It’s the nature of the fashion industry,” says Nancy Klein of Antica Designs, New York, N.Y. It’s also the nature of progress for others to adapt and improve an original design or technique. However, most designers find themselves waging battle against the not-so-original entrepreneurs who often “borrow” an exact idea to mass-produce the dreaded and passionately despised knock-off.
Like artists and inventors, jewelry designers are able to protect themselves by United States intellectual property law – patents, copyrights and trademarks. Often misunderstood and frequently unrecognized, these three laws have been used to protect jewelry designs since the beginning of the country’s history. Intellectual property law is becoming increasingly important with the upsurge of the designer jewelry market. Many designers are now engaged in legal battles or have been in the recent past; the laws also are the subject of disputes that hit very close to home for retailers.
In this article, JCK examines patents, copyrights and trademarks as they relate to three jewelry products that have raised controversy in recent months: hinged-hoop earrings, cable jewelry and tension settings.
And because patents, copyrights and trademarks are so often confused, “A Retailer’s Guide to Intellectual Property Law” runs parallel to this story. We recommend that you consult the guide for a detailed explanation of the differences.
WHO’S AFRAID OF THE HINGED-LOOP EARRING?
They have taken the jewelry world by storm for the way they attractively and snugly encircle the earlobes without dangling. They soon may shake things up again, in a very different way.
Hinged-hoop earrings (commonly but often illegitimately called “huggies”) are hot, popping up in every conceivable style throughout jewelry shows and finding their way into retail stores in droves. The earring is made of two half-hoops interlocked and hinged at the bottom, with a pin at the top of one half that perforates the ear and locks into the other half. The hinged-hoop is based on a concept that, according to some estimates, dates back more than 70 years, but there is now some disagreement over who owns the rights to the idea.
In 1985, a Swiss jewelry manufacturer named Carl Eisener applied for a United States utility patent on an earring “comprising two ornamental components linked by a hinge.” The patented earring features a pin with a dent that fits into a socket with a bump, so the earring snaps firmly together. The design is also reversible because of the invisible fastening mechanism. The inventor said the earring was useful and novel because it was more aesthetically pleasing and durable than most hoop earrings. The U.S. Patent and Trademark Office agreed and granted the patent in 1987.
Eisener’s operation was too small to take full advantage of the patent, however, and he sold the exclusive license to Friedrich Zettl GmbH, a jewelry manufacturer in Birkenfeld, Germany. Since 1987, Zettl has claimed all rights to manufacture, market and distribute the patented hoops in the U.S. It distributes the earrings through several wholesalers in the U.S. Worldwide, Zettl makes some 10 million hoops a year and distributes them in 60 countries.
As the look caught on, Zettl suddenly found itself having to defend its patent. “We started getting calls from department stores with complaints that our earrings were breaking,” says Wayne St. James, sales director for Zettl’s North American office. “The products they were selling were cheaply made knock-offs. Wholesalers were telling the department stores that we had licensed them to make the earrings.”
St. James and his partner, sales director Nancy Nagamatsu, now estimate that thousands of defective hinged-hoop earrings are coming back to stores, and that many are inexpensive counterfeits made in Asia and Italy. “They’re virtually destroying a good category of earring,” says St. James.
Realizing the popularity of the earrings, Zettl began trying to convince companies that made the earrings to buy a non-exclusive license to manufacture and sell them so it could keep an eye on quality. Breuning, based in Pforzheim, Germany, bought the first license and began advertising the patent number in its U.S. ads in mid-1996. St. James says Zettl is now licensing the first U.S. manufacturer.
Zettl then sent letters to everyone it could find selling hinged-hoop earrings, advising them of the patent and asking them to cease making the product.
“They said they were going to sue the retailers who were selling the earrings,” says Mel Draftz, the U.S. sales representative for Guthmann & Wittenauer, another Pforzheim company. “But people have been making [hinged-hoops] for years. I don’t know how they could patent them.”
Scope of patent
The controversy that has ensued is over the scope of the patent: does it protect the right to make hinged-hoop earrings in general or does it cover only the specific design as described in the patent? Many companies that are carving their own niche in the hinged-hoop market say a patent couldn’t possibly encompass the broad and long-standing concept that applies to the earrings.
“The patent is very narrow,” says Peter Berger of New York, N.Y., the attorney for two companies that have been targeted as possible infringers. “It seems to be directed very specifically to the way the pin fits into the socket.” The companies contacted by JCK who received letters from Zettl say their designs are significantly different from the patented ones. They sent letters and samples to Zettl to show how their designs differed. At press time, they had not been contacted again by Zettl.
While Zettl and its attorneys will not say whether the patent covers all hinged-hoop earrings, they do say their patent was issued because of a unique and effective design. “The great value of a patent is that it makes an improvement on an old way of doing things,” says Warn Weitzel of Chicago, Ill., the patent attorney for Zettl. “Pencils have been around forever, but somebody might patent a new type of glue to hold the pencil together. If there are people who aren’t using the glue, then they may not be producing the product’s maximum efficiency.” But if they continue to make pencils without the special glue, they are not violating the patent. In the same way, companies that make hinged-hoops differently than the patented design argue they are rightfully allowed to continue.
Meanwhile, Zettl is preparing to file a lawsuit against an unidentified major retailer, its wholesaler and the manufacturer that supplies the company with hinged-hoop earrings, and says there will be no ambiguity about the scope of the patent in the case. “The people we are suing are in direct violation of the patent,” says St. James.
As for the other cases, it may take a court to decide where the line is drawn. “If it’s not clear by reading the patent, nobody probably knows what the scope of the patent is,” says Lisa Zigorski of the U.S. Patent and Trademark Office. In the meantime, she says, a company that receives a letter from Zettl should contact its attorney immediately to determine whether it is in direct violation.
Name of the game
In the meantime, another company has added a twist to the hinged-hoop case. Jordan Meryl Inc. of Baldwin Harbor, N.Y., was granted a registered trademark in February on the name Huggy®, a term salespeople frequently use to describe how the hinged-hoop earring “hugs” the ear.
“We were the first to use the name two or three years ago,” says Harvey Segal, president of Jordan Meryl, which manufactures high-end hinged-hoop earrings covered with diamonds and colored stones. The name stuck and is now used by so many companies that Segal decided to protect it. The trademark gives his company exclusive right to use the name and any variation of it. Jordan Meryl has issued press releases about the trademark, and Segal says his attorneys will send cease-and-desist letters to violators.
“Retailers and manufacturers should start seeing they can’t use the name,” he says. Although the word Huggy has been heard floating across countertops and occasionally seen on signs at this year’s trade shows, most people seem to have stopped using the name in advertising, Segal says.
Segal didn’t receive a letter from Zettl about his design, but he says based on his knowledge of the Zettl patent, his design does not violate the patent. Meanwhile, Segal has set out to claim his own piece of the pie – er, hoop.
cable jewelry in a twist
Another popular jewelry item is already in line for its day in court, caught in the middle of a hot debate over the legitimacy of a trademark.
Twisted strands of stainless steel cable are used to make the popular cable jewelry that imitates a style dating back as early as 250 B.C. Popular in bracelets, watch bands and necklaces, the cable look is also re-created in cast gold and silver jewelry.
But in 1990, high-end jewelry company Fred S.A. of Paris, France, harnessed the use of the ubiquitous jewelry. In a hotly debated decision, the U.S. Patent and Trademark Office granted a trademark to Fred and its subsidiary, Fred Joallier of Beverly Hills, Cal., for the use of a “metallic nautical rope design” as an integral feature of its jewelry.
Translation? “Fred S.A. has an incontestable trademark for the use of stainless steel cable in jewelry. If any company uses cable in its designs, it is committing trade dress infringement against Fred,” says Marc Allaria, one of the attorneys for Fred. The company has teamed up with companies Philippe Charriol and Al-Or as plaintiffs in a lawsuit expected to come to trial in U.S. District Court of the Central District of California by the end of 1997.
The jewelry in question is made by twisting many strands of thin cable together, then further twisting the twisted strands. In addition, any jewelry that looks like the stainless steel cable jewelry made by plaintiffs, even if the jewelry is made from white or yellow gold or silver, is violating the trademark, says the plaintiffs’ other attorney, Jeffrey Gersh. “Trademarks don’t just protect the identical duplication of an item; they protect items that look substantially similar,” says Gersh. “All defendants in the case make or sell jewelry that is very similar to Fred’s and Philippe Charriol’s.”
These companies started their relationship as opponents in a similar court case over the jewelry. In 1993, Fred tested the weight of the trademark for the first time by sending a cease-and-desist letter to Philippe Charriol International of Geneva, Switzerland, and its U.S. distributor, Al-Or International of Los Angeles, Cal. Philippe Charriol was long known for its cable jewelry and had been advertising the Philippe Charriol Cable Watch with the ™ symbol since 1983. The company retaliated by filing a lawsuit against Fred to abolish the trademark. After a year of litigation, the companies settled. Fred granted Philippe Charriol a license to use the trademark in exchange for royalties and the promise to police the U.S. market for other trademark infringers.
Doing just that, Philippe Charriol and Al-Or joined forces with Fred in 1995 to file a lawsuit against 20 named companies and 100 unnamed “potential” defendants that were allegedly selling jewelry that infringed on the trademark. The lawsuit charges that defendants committed trademark infringement and engaged in unfair competition under federal and California law by selling jewelry that was “confusingly similar” to that of the plaintiffs, who allegedly suffered substantial damages as a result. Allaria says about half the defendants have settled and agreed to stop making the jewelry.
Challenging the trademark
The defendants who have refused to settle are ready to fight. “The chances are good that we will win on the basis that the trademark is invalid,” says David Makous, attorney for defendant L.A. Remak’s International Inc. in Los Angeles, Cal. Makous says some of the named defendants have never been served with papers because they’re long-standing and reputable cable jewelry manufacturers.
Hershey Chitrik of Da Costa, a wholesaler of Italian jewelry in New York, N.Y., is one of several defendants who buys from a single manufacturer, a company that is unnamed in the suit but is providing legal defense for its clients. “You can’t [trademark] rope chain because it’s been around forever,” says Chitrik. “They’re doing this as a publicity stunt.”
The defendants hope to prove a registered trademark on stainless steel cable jewelry is invalid because it doesn’t classify a look distinctive to the plaintiffs and their products. They say cable jewelry has been used for centuries, so nobody can prove original use. If the court decides the trademark is invalid, a court order may be sent to the U.S. Patent and Trademark Office cancelling it.
Jeffrey Gersh feels there is little chance of this happening because the trademark is “incontestable,” according to the PTO. After the fifth or sixth year of any registered trademark, an affidavit for renewal must be filed proving the owner has continuously used the trademark during its life, he says. At this time, the trademark can apply for incontestability. The PTO decides a trademark is incontestable if there has been no decision made against the owner’s right to the trademark and if there are no proceedings against the trademark before the PTO.
The PTO decided Fred’s trademark was incontestable, meaning there are a limited number of ways that opposing parties can contest it, Gersh says. “No argument I’ve heard from the plaintiffs so far seems to be enough to oppose the trademark,” he says.
Gersh also says the “everybody’s- doing-it” defense is not enough. “The defendants say they have a right to use the cable because people have been doing it for hundreds of years,” he says. “That’s not the test. Just because other people have used cable in jewelry, that does not preclude Fred from having a trademark on the cable.”
Until judgment is passed on the case, defendants are permitted to continue selling the jewelry. But the plaintiffs have the right to request restraining orders against any companies that are allegedly infringing on the trademark. They did just that in May 1996 at the JCK International Jewelry Show in Las Vegas, Nev. Federal marshals confiscated cable jewelry from nine exhibitors, of whom only one was a named defendant in the lawsuit. Could there be a similar scene at this year’s show? “[Fred] intends to enforce its rights as set forth in the registered trademark,” says Gersh. “We strongly believe the trademark is valid.”
TENSION MOUNTS OVER SETTING
“Wow. How do they do that?” is a common response when people see jewelry designed with the tension setting, a precarious-looking mounting that actually quite securely balances a stone between the two sides of a gap in a metal ring.
Several designers and companies in the United States and Germany make a version of this so-called “tension setting.” The metal is hardened so it acts like a powerful spring, adding enough pressure to the mounting (about 12,000 pounds) to crush any stone but a diamond or corundum. The stones that do survive the weight in properly made settings are set for life, barring unusual circumstances or attempted adjustments by jewelers. Trying not to step into any legal minefields, most companies that make the tension settings use different alloys and hardening techniques, though there are allegedly a few anonymous “copycats.” Occasionally, questions arise even among the legitimate companies over who has rights to the tension setting concept.
Many reference books and industry experts in the U.S. and Germany credit Friedrich Becker, a German professor known for his “kinetic” jewelry with movable parts, as the first to use pressure to hold stones between a spring-hardened ring shank. Becker used pressure to clip semiprecious stones between ring shanks as early as the 1950s. Other designers adopted the concept in the 1970s.
Niessing GmbH, a 124-year-old wedding ring company near Düsseldorf, Germany, was the first to heavily market the tension setting – in the early 1980s – after a coproduction with goldsmith Walter Wittek. The company applied for a German utility patent in 1981 for the process used to prepare the metal and hold the stone in place; the patent was awarded in 1989.
Niessing described it as a spannung ring, which translates to “tension” ring in English. The term caught on, much to the dismay of Niessing Managing Director Jochen Exner. “In English, the word ‘tension’ has more of a negative meaning,” he says. “If we had known the ring would become so famous, we would have thought of a more individualistic name.” Niessing reluctantly uses the term in its sales to the U.S. market, but it has not trademarked the name here nor obtained a U.S. patent.
Niessing pounds its metal (usually platinum and 14k and 18k gold) with machinery and hand tools to compress the grains and “work-harden” the shank. The process creates optimal tension. “If there’s not enough strength, the stone can fall out; if there’s too much, the stone can break,” says Exner.
A few years after Niessing’s setting hit the market, Steven Kretchmer was hired by another jewelry designer to experiment with spring techniques while he worked toward his master’s degree in fine arts. Kretchmer, now based in Palenville, N.Y., took the metallurgical approach to tension setting, discovering a mix of alloys that, with carefully controlled heat treatments, would hold on to a stone for dear life.
“It’s like the difference between iron and steel,” he explains. “No matter how hard you pound iron, it will never have the strength of steel. My alloys have the perfect hardness and elasticity to hold a gemstone.” He received two process patents for “metal compression-spring gemstone mountings,” the first in 1991 and a continuation in 1993. The two patents cover the makeup of alloys and the process by which the alloys are heat-treated to create spring compression. He also has filed copyrights with the U.S. Copyright Office for his helical and v-ring designs, which he calls “opposition and 90º attacks” to tension setting a stone.
There has long been a stir in the industry about a rivalry between the Kretchmer and Niessing companies, but Kretchmer and Exner insist their competition is friendly. The men sat down together last year and agreed to never infringe on each other’s designs. “If there’s a design of his that I object to, he will either alter it or pay me royalties,” Kretchmer says. “Likewise, when somebody looks at a style of mine and says ‘That looks like Niessing’s design,’ I eliminate it immediately.”
Exner agrees. “We inform each other of who’s doing what. Steven Kretchmer does not want to copy Niessing. He is an honest goldsmith who produces original designs.”
Building the fences
The groundbreaking setting has inspired quite a few imitations, some of them poorly made. Kretchmer says some of the rings have come to his attention because stones have popped out, and angry customers have approached him mistakenly as the designer of the defective jewelry. Often these rings are sold without trademarks, making them hard to track.
Others openly make and market their own versions of the tension setting, but not without controversy. The German company Bunz made tension settings with its own work-hardening method in the 1980s and obtained a European patent on the setting in 1989. Niessing fought the company’s entrance into the tension setting market, saying it copied Niessing designs.
The conflict became the subject of a 10-year court battle in Germany. In 1991, the German Supreme Court ruled Bunz could no longer produce the rings allegedly infringing on Niessing’s copyrights. The court did decide, however, that Bunz could continue to make its own version of the tension setting because no one company owned the rights to the idea.
A similar situation emerged in the U.S. about five years ago. Gelin & Abaci Inc., Los Angeles, Cal., began making tension settings. Sam Abaci, one of the owners, says the company uses its own special alloys, heated at certain temperatures, and does not infringe on Kretchmer’s U.S. patent. “Each one of [the tension setting manufacturers] has a different process,” Abaci says.
Kretchmer tested samples of GAI’s rings and agrees the composition of the test samples does not infringe. The tests also showed Kretchmer’s metal was stronger than GAI’s sample. He says he is worried about his competitors’ inferior-quality goods. He is equally concerned that his copyrights are in danger.
In February 1995, he filed six federal counts of copyright infringement, trade dress infringement and unfair competition against GAI. GAI creates many original designs, but Kretchmer says it also makes and sells settings that are “confusingly similar” to his, allegedly infringing on his trade dress rights. The lawsuit also names Los Angeles retailer Blackhild Jewelry as a defendant, alleging it featured Kretchmer’s rings in its displays but sold GAI rings to fill orders for Kretchmer rings.
Kretchmer did not serve the defendants with the lawsuit, however, and the case never went to trial. “It cost me a fortune just to file, and my attorneys told me it was going to be a lot of money to go through with the lawsuit,” he says. “The other company was more financially fit than I was at the time. My lawyers recommended that I drop the lawsuit and use my creativity to leave my competition in the dust.”
Abaci says his rings are different in style and equal in quality to Kretchmer’s, and that he commissioned tests similar to the ones done for Kretchmer that showed his rings to be of equal strength. Abaci says his company wants to concentrate on producing superior-quality products rather than compete with Kretchmer. “We don’t want to get involved in that kind of negative marketing,” he says.
A retailer’s guide to intellectual property law
Intellectual property law recognizes three classifications that can be used to protect jewelry designs as well as many other original creations. They are: patents, trademarks and copyrights. Here’s how each works, plus some advice for retailers on how to stay within the law.
[Note: All information in the following section has been confirmed by an intellectual property attorney, but does not replace the advice of your own attorney. Contact your attorney if you have questions about patent, trademark or copyright law.]
PATENTS
“A patent is a paradox,” says jewelry designer Steven Kretchmer, a patent-holder on two designs, referring to the American Heritage Dictionary’s definition of the word. As a noun, a patent is a “grant by a government to an inventor, assuring him the sole right to make, use and sell his invention for a certain period of time.” As an adjective, the word means “open to general inspection.” The paradox lies in the fact that an inventor reveals a secret in the interest of protecting it. Once a patent has been issued, anybody can obtain a copy.
Indeed, creators of original designs or manufacturing processes obtain patents to exclude others from making, using or selling the invention. Utility patents protect a new manufacturing process (a technique integral to the design of the product) or a new structure or mechanism (how a product is put together) for 20 years after the date of issue. Design patents protect an original appearance or ornamental design for 14 years.
The U.S. Patent and Trademark Office in Washington, D.C., issues patents based on novelty, usefulness and non-obviousness. Occasionally, a patent will be issued for a brand-new invention – the airplane or atomic energy, for example. These pioneer patents account for only a small percentage of those issued. Most patents are granted for inventions that make an improvement or put a new spin on an old product.
There are plenty of good ideas in the world, but not nearly as many patents simply because they are so hard to obtain. An inventor usually must work with a patent attorney because the process is so complicated. It costs an average of $4,000 just for PTO filing fees and anywhere from one to several times that for attorney fees. Obtaining a patent takes an average of 20 months. Inventors send applications, including drawings of the invention and a detailed description, to one of about 1,500 examiners at the PTO. The examiners then seek to confirm a product has not been used or sold in its proposed form before the applicant invented it, and that the innovation is exceptional beyond what is obvious to the ordinary person. Attorneys research prior U.S. and foreign patents and other literature to determine whether the invention is indeed unique. Most applicants must interact with the PTO to respond to any questions and doubts. If they are still refused, applicants may appeal to the Board of Patent Appeals and Interferences, which may take several more months to reach a decision.
Once a patent is granted, it’s no wonder that it’s so precious to its owner. “When you own a patent, it’s like owning a piece of land,” says Kretchmer. “You can rent it out or choose to live on it and farm it.” Because inventors are often the “little guys,” they sometimes choose to sell exclusive or non-exclusive licenses allowing companies to manufacture and sell the invention. Whatever they decide to do with it, it’s the responsibility of the inventor, not the PTO, to police the patent, as with all forms of intellectual property.
TRADEMARKS
The amount of advertising in the United States has led to an almost instinctive recognition of symbols and words to indicate products. We see a blue and red yin and yang and think automatically of cola. We call out for a Band-Aid® instead of an adhesive bandage. We dig for Kleenex® in our pockets rather than a tissue. These are trademarks: words, phrases, symbols or designs that identify the source of a product or service.
In the jewelry industry, the trademark can be used in two ways. Companies can use words, pictures, symbols or a combination to create a trademark that signifies a company or product logo. They also can register the overall distinctive look of the product, called trade dress. “A bottle is a bottle, but people recognize Coca-Cola® by the silhouette of its bottle,” says Conrad Wong, an examining trademark attorney for the PTO. Similarly, jewelry manufacturers or designers with a “look” can register the design that consumers associate with the company’s name.
Companies can obtain a registered trademark (noted by the symbol ®) by proving the word, phrase, symbol or design has become identified in the market with the company and its products, or if it expresses intention to use the mark in relation to products and services. Like patents, it is up to one of the PTO’s examiners to disprove the mark’s legitimacy.
The examiners search for the word or phrase among thousands of registered trademarks. If the mark is similar to an existing mark, the examiner must determine if the marks are confusingly similar. Dove Soap and Dove Ice Cream Bars are located in separate sections of the grocery store, so the manufacturers of both products were allowed to register the Dove name, Wong explains. But if a company wanted to call its product Koka-Kola, it might not be granted a trademark.
Trademarks also cannot be a generic description of a product. A jewelry manufacturer that wanted to register the phrase Shiny Gold for its product probably couldn’t because that description wouldn’t be unique to the company’s product.
While the PTO considers whether a company was the first to use a mark or trade dress for a product, a company does not have to prove beyond a shadow of a doubt that it was first. “We tend to recognize people who come through the door with an application first,” says Wong. “If another jewelry manufacturer comes in separately and can prove that it was the first to use the name, then that would be a reason to reject the trademark application.” Unlike the patent process, which is extremely secretive, the trademark application process is highly publicized. News of an application for a mark is published in the PTO Gazette, which is distributed to U.S. Patent and Trademark Depository Libraries around the country. Many large companies also receive copies of the Gazette and may oppose registration during the 30-day opposition period that follows an application. Once a trademark has been registered, opposing parties can file for cancellation with the Trademark Trial and Appeal Board.
The trademark process takes slightly more than a year without major problems and costs at least $245 to file each application. Again, attorney costs can be one to several times the filing fees. The PTO strongly advises inventors to use attorneys for trademark applications, because one error can cost the applicant his or her rights.
Once a trademark is registered, no other company may use the mark or any variation of it without infringing on the trademark. However, the Lanham Act of 1946, which governs trademark law, gives as many rights to unregistered trademarks (often noted with ™) as to registered trademarks. While not recognized by the PTO, marks followed by the ™ may still be legitimate claims of ownership.
COPYRIGHTS
The easiest to obtain and perhaps the easiest to understand, copyrights protect original works of authorship, including artistic works. Just like you can’t plagiarize a book or sell unauthorized reproductions of a Picasso painting, you cannot make replicas of another company’s jewelry. The copyright gives the artist or designer (called an “author” in copyright lingo) exclusive right to reproduce and sell the work.
Like design patents, copyrights protect the exact design and appearance of a piece of jewelry. The difference, says intellectual property attorney Peter Berger of New York, N.Y., is that examiners in the U.S. Patent and Trademark office do thorough research to make sure a design is brand new before assigning a patent. If a design is submitted just for copyright registration, the U.S. Copyright Office does not check to see whether the design duplicates another. The only way a copyright registration can be thrown out is if another party shows the applicant lied about the originality of the work, Berger says.
Filing with the U.S. Copyright Office is not necessary to protect the work, however. A copyright is automatically applicable when the work is completed. For visual works of art like jewelry, the author may use the symbol © and the artist’s name or alternate designation (some companies use their trademark symbol) to communicate copyright protection. To make the copyright more official, the author can register with the U.S. Copyright Office within three months of the work’s introduction to the market. The simple application form and $20 fee for copyright registration make filing a lawsuit against an infringer easier and more worthwhile, but registering a copyright is only a formality.
Because there are so few guidelines, copyrights are the easiest to infringe upon. Again, it is the responsibility of the author to police the copyright, and often it is difficult to determine who is simply adding a new twist to a general “look” and who is blatantly copying a design. Knock-offs quite often occur innocently.
“Other people’s designs often get into lines by model makers selling their models on the street,” says Berger. “The company that buys the model may think it’s an original design, but many times it’s a copy of another design.” When a group of models is sold inexpensively or by weight, he says, the designs are probably knock-offs. Berger advises his clients to buy models only with a written statement of originality.
Others acknowledge that two designers may be inspired by different things yet come up with similar designs. Whatever the case, copyright lawsuits are expensive and time-consuming. Because of these factors, Berger says most intellectual property owners try to find alternatives.
RETAILER’S DEFENSE
It’s hard to keep track of who owns which design in the jewelry industry, and sometimes retailers end up with merchandise that is in dispute. Sometimes the “innocent infringer” defense will apply: if you can prove you didn’t know the merchandise was in violation, you will simply be asked to stop selling it. However, attorney Peter Berger warns that retailers shouldn’t take their responsibility so lightly.
“In copyright cases, retailers are liable for the entire profit on every level of sale of the infringing merchandise,” he says. Copyright owners will usually sue retailers faster than wholesalers and manufacturers, and often will file lawsuits more readily than patent and trademark owners.
“Copyright lawsuits are much easier and more financially worthwhile for the plaintiffs,” Berger says. Companies that own patents and trademarks may be more selective when seeking legal reprisal because of the time, money and stress involved, but they should never be underestimated.
If you know for certain you are violating a patent, trademark or copyright, stop selling the merchandise immediately to prevent legal action. If you are uncertain, do some research:
• For $3 each, you can receive a copy of patents and trademarks by contacting Patent and Trademark Copy Sales, Box Nine, Washington, DC 20231; (703) 305-8716, fax (703) 305-8759,
e-mail ptcs@uspto.gov or http://www.uspto.gov/web/uspto/patsales/patsales.html. You must provide the patent or trademark registration number.
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The International Trademark Association in New York, N.Y., runs a Trademark Hotline, available 2-5 p.m. Monday-Friday. You can check a name or product to see if it’s a registered trademark by calling (212) 768-9886 or faxing your request to (212) 768-7796.
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U.S. Patent and Trademark Depository Libraries have computer databases of patents and trademarks. For a list of libraries, contact the PTO General Information Services Division at (800) 786-9199 or (703) 308-4357, fax (703) 305-7786. Patent and trademark attorneys will do a search for a fee.
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For information about registered copyrights, contact the Register of Copyrights, Library of Congress, Washington, DC 20559; (202) 707-2600. Copyright searches can be done on the computer database LOCIS (Library of Congress Information Service), which is available at some libraries, and can be accessed via Telnet (a service of the Internet that allows you to dial into another server). See the Copyright Office’s home page at http://lcweb. loc.gov/copyright for help doing this. Not all copyrights are registered, so a copyright may be legitimate even if you don’t find it in the search.
More hints
In the meantime, try to prevent becoming the subject of a company’s legal wrath:
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Keep track of where your merchandise comes from. “I’ve never seen an industry where people don’t know what they’re selling like the jewelry industry,” says a patent attorney who represents a patent-owning jewelry manufacturer. Some retailers have been unable to confirm where merchandise originated, he says, and thus may be named as primary violators in a lawsuit. Companies may be less likely to pick on you if they can stop the production at the source, so try to keep records of the manufacturer, importer and wholesaler for each product. If a wholesaler claims to have a license to sell patented or trademarked products, check with the patent or trademark owner to verify the claim.
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Trademarks and copyrights are more cut-and-dried than patents. If you are informed of a trademark on a name or “look,” it’s best to stop using the trademark in any form, even if it is only an implication of the name or look. (See the portion of this article on hinged-hoop earrings for the example of Jordan Meryl of Baldwin Harbor, N.Y., which owns the trademark on the name Huggy®, a popular term used to describe the earrings. No manufacturer of these earrings may use Huggy® or any form of the name – Huggies, Huggables, Hugs, etc. One company’s ad featuring the backsides of diapered babies is even in question.) Be especially careful not to use the questionable name or phrase in ads.
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If you recognize a piece or line of jewelry as an exact knock-off of a well-known designer’s or company’s jewelry, pull the piece or discontinue the line. If the jewelry looks somewhat similar to another company’s but not exactly the same, find out if the company is enforcing trade dress rights.
The time to worry is when you receive a cease-and-desist letter from a company. This means you have been selected as a possible infringer, and this is the company’s first step in notifying you that it will watch you like a hawk. Depending on the case, the letter doesn’t necessarily mean you are in direct violation; it may mean only that you are a suspect, especially in the case of patents. “Most companies that have a patent will use the weight of their patent to keep the competitors away, even if they’re not directly infringing on the patent,” says Lisa Zigorski of the U.S. Patent and Trademark Office. “They want to enforce their exclusivity, and they tend to overenforce rather than underenforce.”
Nevertheless, you should still take a cease-and-desist letter very seriously. Consult your attorney, who may refer you to an intellectual property attorney. The attorney will consider the merchandise and tell you whether he or she thinks you are in violation of the company’s patent, trademark or copyright, and will advise you in the decision to continue or stop selling the jewelry or using the mark in question. Most of the time the attorney will draft a letter to the other company, saying either you have stopped selling the jewelry or explaining how the jewelry you sell differs from the jewelry covered under the patent, trademark or copyright.
Even if you disagree with the legitimacy of a patent, trademark or copyright, it is still enforceable until contested; even a ruling in a lawsuit won’t necessarily overturn it. All requests for cancellation must be directed to the U.S. Patent and Trademark Office or the U.S. Copyright Office. Ignoring the complaints of a patent, trademark or copyright owner could result in a costly lawsuit.