Stop, Thief!
A look at how jewelers can prevent intellectual property theft
By Sara E. Yood, Esq.
Imagine, for a moment, that you finally nailed it—the perfect jewelry design, the one that both identifies your brand and speaks directly to your consumer. Years of work went into this design; hundreds of different iterations left on the literal drawing board led you to this moment. The design is unique, and serves not only as a work of art, but is the personification of your brand. You know it’s viable because your customers have already begun to clamor for variations and different colors.
This is the moment you have been waiting for as a designer. Sales take off. Your work gets picked up by some trade magazines, shared on Instagram with its own hashtag, and then, even consumer press features it in an article. The design is resonating with your target consumer, and you are seeing the net profit you’ve been working so hard for all these years.
One day, at the peak of your newfound success, you start to receive some texts and calls from friends and customers congratulating you for having your design selected for an A-list celebrity’s best-of list. “Amazing!” you think, wondering how this happened since you’d never heard from them or their publicist. But when you get a copy of the top-10 list yourself, you realize that the design selected, while in fact very close to yours, was actually created by another designer—one who has been copying your designs for years.
Intellectual property theft and infringement is not a new plague, but the internet has certainly made it much more of a public problem. While it used to take months or even years for trends to make their way across regions, now new designs and ideas are available at your fingertips or with the click of a button. While this certainly means that designers can keep up with new trends faster than ever, it also means that intellectual property infringement has skyrocketed.
The Types of Intellectual Property Protection
In order to understand intellectual property theft, it’s important to be able to distinguish between the types of intellectual property protection available, and what they can actually protect.
• A copyright is an intellectual property right granted by the U.S. government that grants the creator of an original work exclusive rights to its use and distribution, for a limited time, with the intention of enabling the creator to receive compensation for their intellectual effort. Copyright protects the original work of authors, such as literary works, motion pictures, choreography, musical compositions, sound recordings, paintings, drawings, sculpture, photographs, computer software, radio and television broadcasts, and industrial designs.
• Trademark protects the brand identity of a business. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of goods/services.
• A patent is an intellectual property right granted to inventors to exclusively make, use, offer for sale, or sell their invention throughout the U.S. for a limited time. The inventor must make public disclosure of the invention when the patent is granted. There are three types of patents, but only two are pertinent to the jewelry industry.
Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement of one of those things.
Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Patents can be challenging to obtain for jewelry designs, as many of them are not considered “new and original,” so patent protection, while strong, is often out of reach for jewelry designs.
Knowing and understanding which type of intellectual property applies to your creative output is awfully important, especially when determining how to protect your work from theft. In jewelry, the most common applications are copyright for protecting new and original jewelry designs, trademark for protecting your brand name and logo, and patent for protecting new inventions (such as a new type of clasp or a new machine.)
Ultimately, in many cases, avenues for legal enforcement are only available to you if you have properly registered your intellectual property with the correct federal agency. For copyrights, that is the U.S. Copyright Office, and for trademarks and patents, the U.S. Patent & Trademark Office (USPTO). Registration is a legal formality that officially recognizes your ownership of intellectual property you created. This helps establish facts that are useful to have for (and sometimes even required to pursue) a lawsuit.
Going back to the kickoff story of the jewelry designer whose piece ended up on the celebrity best-of list, you should know that it’s not an entirely hypothetical story! It is a hybrid of tales of woe I’ve heard over the almost decade that I’ve been in the jewelry industry. These tales are heartbreaking no matter how many times I hear them, and there are many things I’ve wished designers would know in advance.
Let’s run down what options might have been available to our designer for protection against theft, and how she can choose to react now to protect her future output.
Registration
Of course, as outlined earlier, the designer should have applied to register for protection of her jewelry designs (copyright). The cost to register a copyright with single ownership is $45, but you can also apply to register a group of up to 10 works in certain circumstances for $65. This is often the most efficient way to apply, especially when releasing a new line of jewelry. Obtaining copyright protection generally takes seven months with an online application.
The designer should also apply for registration of her trademarks, including any brand names and logos that serve to identify the source of her goods. Trademark registration is slightly more technical, and therefore many attorneys do this work for a reasonable flat fee. If the jewelry designer had done this in advance, she would have documented legal proof of ownership. Obtaining trademark registration generally takes 12 to 18 months.
If the designer had invented something new with her design, she could have also applied for patent protection. Gaining patent registration is a complicated process that requires an experienced attorney and involves significant costs. Also, obtaining patent protection generally takes about 25 months, so for those reasons, it is often an impractical choice for designers.
For all these types of intellectual property protection, an application is not a guarantee that you will be awarded protection. Your designs must be original to obtain copyright protection, and the Copyright Office will not grant registration for something as basic as a halo diamond ring, for example.
With trademarks, the USPTO will search its records to ensure that your brand name and logo are not too similar to those previously registered in the jewelry category of trademarks.
And with patents, the application must be for something new and original. It is always helpful to consult an attorney in advance to ensure that an application would not be a waste of time and money.
If you’ve ever wondered why so many widely known jewelry brands sell jewelry items with their logo emblazoned on it (other than the free publicity), it is because selling those items with the registered trademark prominently featured give the owner double intellectual property protection; the design of the product may be eligible for copyright protection, and the logo itself may be eligible for trademark protection. Many brands attempt to create multiple logos that can serve as trademarks specifically for this purpose.
There’s a myth that’s been floating around for years that if someone changes enough elements in someone else’s registered copyrighted work, that’s enough to avoid copyright infringement. This is not true! A case of copyright infringement can be based on an allegation that someone took another’s copyrighted work and changed just a few elements to make it something new. In reality, they have created what is called a “derivative work,” and copyright protection extends the exclusive right to create derivative works to owners.
However, it’s also important to note that copyright protection won’t be granted to all creative work; there must be some originality involved in a jewelry design in order to gain registration.
Prioritization
A jewelry designer may create hundreds or even thousands of designs in her career. Applying for copyright protection for each design may not be practical or even achievable in each case. A designer should determine which designs are the most commercially viable and ensure that she applies for protection for those designs as a first priority.
It is also possible to apply for protection for a group of works when they have not previously been published. This is an efficient way to register up to 10 designs as a whole “line” of jewelry when you are releasing a new line and should be applied for before publication of your designs. Copyright applications start at $45, so this is an inexpensive way to protect your creative output.
Additionally, it is strongly recommended that designers apply for trademark protection for their brand names and logos as quickly as possible upon starting their business. The USPTO considers the date of first use in commerce in determining ownership of trademarks, and proactive filing can be an asset in protecting your brand identity.
If our jewelry designer had prioritized registering for protection for her piece and brand in advance of its popularity, it would have afforded her legal rights that she won’t have otherwise.
Aggressive Defense
Once you have registration in place for your designs and brand identity, it is your duty as the owner of intellectual property to defend your ownership claims. For copyright and trademark, sometimes this can include putting a notice on your work—using the © symbol to indicate that you are claiming copyright protection or using the ™ symbol for a brand or logo for which you are claiming trademark protection. Once your trademark is registered, switch to the ® symbol to indicate that you have a registered trademark.
Although it may seem simple, these symbols have real heft and meaning ascribed to them and can show potential infringers that you are educated and aware of your intellectual property rights and responsibilities.
When you find that potential infringement has occurred, you will naturally have to weigh the potential costs of litigation against your likelihood of success. Sometimes, simply having a lawyer send a cease-and-desist letter can have the desired effect of stopping infringement, but it can also cause the infringer to react poorly and counter.
Consulting with an experienced intellectual property attorney is always a good choice before contacting any potential infringers. Intellectual property lawsuits can be long and expensive, as they are typically conducted in federal court, and often, pieces that you think infringe your work may not actually do so from a legal perspective. Attorneys can provide evaluations of the situation and recommendations on how to move forward.
In our designer’s case, she could decide to send a cease and desist, as well as contact the outlet that published the celebrity’s best-of list and ask them to take down the infringing work. She could then further decide to commence a lawsuit against one or both parties, depending on the advice of her lawyer.
Extralegal Norms
In the last few years, there has been a creation of extralegal space in order to call out infringement in the fashion world. These areas of intellectual property enforcement outside of the traditional court system are called norms, and they’ve emerged in areas where intellectual property laws are insufficient to protect creative work, such as in comedy clubs and in recipe writing.
Fashion design has less potential protection than jewelry design, as some fashion is considered a “useful article” and thus ineligible for copyright protection. In the fashion industry, the @dietprada Instagram account has spent years pointing out possible instances of infringement (along with significant occurrences of racism in fashion). Of course, they have also shown examples of intellectual property theft in jewelry, and the public “naming and shaming” of certain infringers can certainly have a chilling effect on continuing that behavior. However, there are some things to be aware of before going that route.
First, the commentary usually seen on these types of posts can be exacting and critical; submitting photos of work that supposedly infringes yours can result in a lot of comments and criticism of the originality of your own work. Second, signaling your hand in advance of a potential lawsuit may weaken your position and give the infringer too much notice of your position. Additionally, you should be wary of potential retaliation by the accused infringer. There have been cases where some who were publicly “named and shamed” have sued for defamation.
While extralegal norms are a valid choice, they should be very carefully considered in advance. Our designer could send in the work that she thinks infringes hers to one of these types of norms-enforcing communities should she be certain that her arguments will hold up in the court of public opinion but risks potential action against her should the tide turn.
Your intellectual property can be very valuable for your business. Intellectual property creates legal assets, can promote your brand, and can create new business opportunities. At the same time, registering your intellectual property creates obligations to maintain, monitor, and protect. It is important to understand all these obligations and make sure you have a full understanding of the intellectual property protection you pursue. Doing so can help in complicated situations of theft.
For our jewelry designer, she’ll have to weigh the cost of pursuing formal registration and litigation with the potential risks of being turned down for registration or potentially losing an expensive and time-consuming lawsuit. Protecting your work with legal formalities in advance of any potential theft is still the best first step you can take.
Sara E. Yood, Esq., deputy general counsel at the Jewelers Vigilance Committee, is an attorney admitted in the state of New York with extensive experience in intellectual property law.