Is “Designer-Inspired” Jewelry Legal?

In 2008, we published an article on “designer” jewelry and “inspired-by” jewelry. As an update on the article, we decided to review a few high-profile legal suits regarding intellectual property infringement and jewelry.

Case #1 Tiffany, Inc. v. eBay Inc. (2010)

In 2003, jeweler Tiffany & Co sent several complaints to online auction website eBay regarding the sale of counterfeit Tiffany products. In 2004 and 2005, Tiffany conducted a survey to determine what percentage of Tiffany products sold on eBay were counterfeit. Tiffany purchased a random sample of “Tiffany sterling” products and then inspected the items to determine authenticity. Of the 136 pieces purchased in 2004, 73.1% were counterfeit. Of the 139 pieces purchased in 2005, 75.5% were counterfeit, though the trial court later found this survey to be ““methodologically flawed and of questionable value.”

Counterfeit Tiffany Bracelet, Image Courtesy of Hunter Ridge Jewelry

Authentic Tiffany Bracelet, Image Courtesy of Tiffany & Co

Tiffany made five demands to eBay in June 2004: “(i) ban any eBay seller from listing five (5) or more `Tiffany’ jewelry items at any given time; (ii) ban the sale of silver `Tiffany’ jewelry, the vast majority of which our analysis has shown to be counterfeit; (iii) ban the sale of any `Tiffany’ item that is advertised as being counterfeit (as some currently are) or as being `inspired by Tiffany'” (as is often the case now); (iv) not advertise the sale of “`Tiffany’ merchandise and (v) remove sponsored links to `Tiffany’ on any search engine.”

eBay refused to comply with the demands, and its refusal led Tiffany to file suit in 2004.

In 2008, the trial court ruled against Tiffany, and the jeweler appealed. In 2010, the appeals court agreed with the lower court. eBay was not held liable for either direct or contributory trademark infringement, effectively placing the burden on trademark owners rather than online retailers to police for counterfeit items.

Case #2 Tiffany and Co et al v. Costco Wholesale Corp (2013)

In February 2013, jeweler Tiffany & Co filed another suit against retailer Costco for trademark infringement after Costco sold diamond rings, which were advertised with display case signage that bore the “Tiffany” name. Per the suit, Tiffany alleged “there are now hundreds if not thousands of people who mistakenly believe they purchased and own a Tiffany engagement ring from Costco.”

 

The Costco Rings

Image Courtesy of Youtube

 

Costco argued that it was not selling counterfeit Tiffany rings, as it used “Tiffany” generically to describe the diamond’s setting. It further argued that the rings were not branded with the Tiffany name, nor were they sold in Tiffany blue boxes. Costco claimed that Tiffany was attempting to prevent others from using “Tiffany” to generically describe a ring’s setting.

In 2015, the court ruled against Costco and granted summary judgment in favor of Tiffany, finding Costco liable for trademark infringement and counterfeiting.

Most recently, on August 14, 2017, a federal judge awarded $19.4 million in damages to Tiffany: $11.1 million, plus interest, for Costco’s trademark infringement, plus $8.25 million in punitive damages awarded by a jury in October 2016. Costco was also barred from selling anything that was not made by Tiffany as “Tiffany” products.

Costco has said that it plans to appeal the decision.

Case #3 Love et al v. Nasty Gal (2016)

Pamela Love is a well-known jewelry designer whose products are sold in major high-end retailers and have been featured in numerous fashion publications. In July 2016, Love filed suit against fashion brand Nasty Gal for copyright infringement of three of Love’s designs: the “Five Spike earring,” “Dagger Rosary,” and “Talon Cuff.”

Images Courtesy of Love Complaint

 

According to the suit, Love’s counsel reached out to Nasty Gal in 2014 in regards to the infringing designs. Nasty Gal’s counsel responded that it would remove the designs from the online store. However, it continued to sell the jewelry until February 2016 and did not remove the online listings until the suit was filled. Furthermore, the suit alleges a Nasty Gal employee “purposefully sought out” and purchased the original designs and that Nasty Gal was aware of the alleged infringement prior to Love’s counsel informing Nasty Gal.

The case is currently pending in U.S. District Court for the Southern District of New York.

Case #4 Verragio, Ltd. v. GM Casting House, Inc. (2017)

On January 30 2017, New York-based engagement ring designer Verragio filed suit against Chicago-based custom jeweler GM casting house for copyright infringement.

Verragio alleges that GM Casting House deliberately duplicated three of Verragio’s copyrighted ring designs.

The Copyrighted Verragio Designs

Images Courtesy of Verragio, Ltd.

 

The case was terminated on May 5, 2017 pursuant to a settlement agreement

Case #5 Brighton Collectibles, LLC v. Macys Inc., a Delaware corporation (2017)

On June 19, 2017, jewelry company Brighton Collectibles filed suit against retailer Macy’s for copyright infringement. Per the suit, Brighton alleges that Macy’s infringed upon its copyrighted Reno heart bracelet and necklace.

Brighton Reno Heart Necklace

Image Courtesy of Brighton Collectibles

 Macy’s Heart Pendant Necklace

Image Courtesy of Macy’s

A Brighton designer created the Reno heart design in 2006, and Brighton copyrighted the design in 2014. Brighton claims that Macy’s knowingly infringed upon the design.

The case is currently pending in U.S. District Court for the Central District of California.

Saper Law provides copyright, trademark, and other intellectual property related services, and our attorneys are well versed in copyright and trademark law. Click here to learn more about our copyright law services and here to learn more about our trademark law services. If you have specific questions about your jewelry business, please contact us or book a consultation.

 

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