Bling It On: Copyright & The Rise of Jewelry Infringement Lawsuits

Copyright infringement cases involving jewelry designs have been springing up quite a lot recently: fast fashion retailers like H&M and Forever21 have been accused of knocking off designs, and famous jewelry designer Loree Rodkin has filed suit against Tres Glam (a jewelry company run by reality stars Lisa and Brittny Gastineau) over, among other things, Rodkin’s Pave Claw Bracelet design.

This raises some questions, then: what intellectual property protections, if any, exist for jewelry designs?  How does one go about bringing a successful lawsuit involving jewelry designs? And what are some potential issues with bringing a jewelry design lawsuit?  I know you’re already on the edge of your seat, so let’s get started…

First things first: we are dealing largely with copyright here (although patents could come in to play, but that is beyond the scope of this article).  Unlike what was the case in my article on fashion designs under the copyright regime, jewelry designs are largely capable of being protected by copyright.  This is because jewelry fairly easily satisfies the requirements for obtaining a copyright: originality and fixation.  Assuming that the design has not been copied from someone else (a requirement for copyright infringement), the creativity and independent creation elements that make up the originality prerequisite can usually be met.  (Although, as was the case in a lawsuit involving barbed wire jewelry, this element is not always capable of being satisfied.  Another instance where copyright would not be granted would be for a useful article (more on that here); however, costume jewelry has been found to not be considered a useful article.)  Fixation is an easy one as well, since once the jewelry is made in a tangible form, it is sufficiently fixed for the purposes of obtaining a copyright.

An issue that arises, however, is with knock-off/imitation jewelry or jewelry that is flat out copied and passed off as the artist’s own.  Since the original jewelry designer usually is able to obtain a copyright (with no registration to the Copyright Office necessary), they also are conferred the exclusive rights that come with having a copyright immediately upon creation of the work.  These exclusive rights include the right to reproduce, the right to make copies of, and the right to create derivative works from the original jewelry item.

As such, these “imitation” or “inspired” jewelry items that seem to plague sites like eBay would appear to be grounds for a copyright infringement claim.  Indeed, big name companies like Nasty Gal and Urban Outfitters are being slapped with lawsuits by jewelry designers who are crying foul over their work being mimicked without any credit and sold at fast fashion prices.

But just as there are pretty clear instances of jewelry designs being copied, there are also scenarios where there is either no copying as defined by case law or where the copying is not an actionable offense.  In these situations, we end up with the same jewelry design being offered by two or more people or companies, whereby factors such as publicity and the free market tend to determine which design is more successful.

Under copyright case law, to have a valid infringement action, it must be shown that there was sufficient copying of the original elements of the work.  Copying in this sense requires either direct evidence (an admission, etc.) or circumstantial evidence.  Circumstantial evidence of copying demands a showing of two things: (1) access by the alleged infringer to the copyrighted work and (2) similarity of the alleged infringing work to the original copyrighted work.  If there is no similarity between the works, then no amount of access will prove copying; in some jurisdictions (including the 2^nd Circuit) if there is no access proven, then striking similarity between the works may be used to make a showing of copying.  This access plus similarity test is also known as the “substantial similarity” test, and is used by courts to determine whether a copyright infringement action can proceed.  (For an example of how access and similarity appear in a complaint, check out this one involving Real Housewives of New Jersey “star” Kimberly De Paola.)

Once copying has been proven, it must then be determined which elements that were copied are also copyrightable, since the non-copyrightable elements cannot form the basis of a copyright infringement action. This process requires removing the ideas, scenes-a-faire (commonplace themes), facts, and public domain materials from the alleged infringing work. (Public domain elements are at the center of a recent lawsuit involving rapper, Drake, and jewelry company, Baden Baden, over the use of a hieroglyphic owl symbol necklace.)

Copying can also exist and yet not be grounds for an infringement action.  This can occur because under copyright, unlike patent, two people can create the exact same work and both will have a copyright in their respective works.  As such, the exclusive rights under copyright are conferred to both parties, allowing each to make copies and sell their works as they please.  In the context of jewelry design, for instance, if two people were inspired by the same thing (an item from nature, etc.) and they somehow crafted the same exact item of jewelry (let’s say a necklace), then both would be able to make and sell this nature-themed necklace without any recourse against the other (an injunction, damages, etc.).  This issue can arise more frequently in the age of the internet, where jewelry designers are constantly exposed to new trends and other sources of inspiration in crafting their designs.

Finally, that being said, consumers and jewelry designers should be aware of what exactly goes into a copyright infringement suit.  Should a designer choose to take legal action, they would need to register their work with the Copyright Office (but, as mentioned before, this registration is not necessary to first obtain a copyright in the work.  It is, however, a prerequisite to filing an infringement suit and is highly recommended upon first creation of the work by various intellectual property lawyers as it staves off problems should an infringement suit arise in the future.)  The plaintiff bears the burden in infringement suits, and would thus need to make the showing of access and similarity (the “substantial similarity” test) in order to have a successful claim.  If it is shown that the elements are in the public domain or that the defendant came up with the idea on their own, then there would be no cause of action.  Jewelry artists would be wise to do their research on the alleged infringer to confirm or deny copying before engaging in potentially costly litigation.

If you’re looking to learn more (knowledge is power!), check out these articles.  And be sure to let us know your thoughts below!

• http://www.thejacobsonfirmpc.com/pdf/Jewelry_JacobsonFirm_Article.pdf
• http://www.pattishall.com/pdf/UnderstandingSubstantailSim.pdf

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Featured Artist

Nervous System is a design studio that works at the intersection of science, art, and technology.  They create using a novel process that employs computer simulation to generate designs and digital fabrication to realize products.  Drawing inspiration from natural phenomena, they write computer programs mimicking processes and patterns found in nature and use those programs to create unique and affordable art, jewelry, and housewares.  Nervous System was founded in 2007 by Jessica Rosenkrantz and Jesse Louis-Rosenberg.  Jessica currently acts as Creative Director and Jesse as Chief Science Officer.  Together they lead a team of seven. Find out more and shop their jewelry at HERE.