By: The Jacobson Firm, P.C.

It has long been the law that a copyright infringement claim involving jewelry designs requires the party alleging infringement to prove that its design is 1) protectable under copyright law; 2) that the alleged infringer had access to the copyrighted work; and 3) that the infringer’s design is “substantially similar” to the plaintiff’s copyrighted work.  Jewelry designs must be “original” in order to be eligible for copyright protection.  While many jewelry designs contain elements from the public domain, the combination of these elements in a design is “original” so long as their selection and arrangement “entails a minimal degree of creativity.” Without the required originality, either from new creative design elements or creative selection and arrangement of public domain elements, a jewelry design is not entitled to copyright protection and thus can never be infringed upon by another party.

The issue of originality has been litigated frequently in jewelry copyright infringement cases. Therefore, it is imperative to be aware of the importance of registering new jewelry designs with the Copyright Office.  A party that owns a valid copyright registration for a jewelry design, which is made before or within 5 years of publication of the work, benefits from a presumption that the design is copyrightable and original, on top of increasing the potential damage awards for infringement.  The presumption that a design is both copyrightable and original relieves the owner of the copyright registration from having to prove the design’s originality, and shifts the burden to the alleged infringer to disprove the originality of the design.  Thus, a valid copyright registration has actual benefits in litigation that can make an infringement case easier to prove, while also making the case less expensive and more profitable because the burden of producing evidence is shifted to the infringer.

According to Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471 (S.D.N.Y. 2008), jewelry collections are considered single work registrations, requiring only one application fee, as long as the pieces are “published” together. If jewelry is registered as part of a collection all of the pieces must share the copyrightable aspect.  Otherwise, each piece may require independent registration.  While collections are “usually” a set of pieces that are thematically related and released for sale concurrently, there is no requirement that the pieces share a theme to be considered a collection.  

Recently, courts have used one of two different approaches to test whether or not “substantial similarity” exists between two designs.  Courts have applied either 1) the “ordinary observer” test, which asks whether an ordinary observer would recognize the alleged copy as having been appropriated from the copyrighted work, or 2) the more stringent “discerning observer” test, which is applied when a work contains both protectable and unprotectable elements, such as those from the public domain, and asks whether the protectable elements in the two pieces are substantially similar to the unprotectable elements.

In Yurman Studio, Inc., the court applied the “discerning observer” test to the parties’ designs because the plaintiff alleged that defendant had copied its unique arrangement and selection of public domain elements.  In finding the defendant liable for infringement, the court noted in a related point that differences in the quality of craftsmanship and materials were insufficient to prove that the designs were not substantially similar.  Yet, in three recent cases, R.F.M.A.S., Inc. v. So, 619 F.Supp.2d 39 (S.D.N.Y. 2009); M. Lady, LLC v. AJI, Inc., 84 U.S.P.Q. 2D (S.D.N.Y. 2007), and Yurman Design Inc. v. Golden Treasure Imports, Inc., 275 F. Supp. 2d 506 (S.D.N.Y. 2003), the court applied the “ordinary observer” standard to test jewelry designs for substantial similarity.

The court in R.F.M.A.S., Inc. stated that courts should decide which test to use based on whether or not the jewelry designs are composed of both protected and unprotected elements.  In R.F.M.A.S., Inc., the court used the “ordinary observer” test because the plaintiffs’ jewelry designs were created from a combination of common elements. Their designs were protected in their entirety because the selection and arrangement of the elements was copyrightable.   Although similar to Yurman Studio, the court declined to apply the “discerning observer” test because it could not adequately separate the protectable and unprotectable elements of the design.

Regardless of which test is applied, R.F.M.A.S., Inc. emphasizes that courts must examine the “total concept and feel” of the work. That court stated that while copyright protection is very “thin” if the design is based only on a selection and arrangement of common elements from the public domain, that particular selection and arrangement is still copyrightable. Courts may vary on which test they use in any given situation, but the analysis invariably comes back to the “total concept and feel” of the works.

(c) 2011 The Jacobson Firm, P.C.

About the author

Justin M. Jacobson, Esq. - Vice-President, The Jacobson Firm, P.C. - Attorney Specializing in Entertainment, Sports, Esports, Fashion and Art Law. In particular, The Jacobson Firm, P.C. handles Trademarks, Copyrights, Contracts, Estate Planning, Music Business and Brand Development on behalf of creative talent and lifestyle brands.

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