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Valentine’s Day is the holiday of love, and many people decide to gift jewelry–or propose–on this special day. The accessories this holiday is built around are subject to copyright law just like any other work, but how does copyright protection work for jewelry and what can a jewelry designer do if she believes someone has copied her design?
Copyrightability of Jewelry Designs
According to chapter 908 of the Compendium of U.S. Copyright Office Practices, Third Edition, “[j]ewelry designs are typically protected under U.S. copyright law as sculptural works, although in rare cases they may be protected as pictorial works.” The Copyright Office views ornamental jewelry designs as works of artistic craftmanship.
When the Copyright Office examines a copyright registration application for a jewelry design to determine whether to issue a registration, the Office will attempt to separate out any mechanical or utilitarian aspects of the design as those aspects are not protectable by copyright. If the jewelry design is incorporated into a useful article, such as a garment, footwear, or other personal accessory, the Office will register the copyright in the design only if it is capable of being identified “separately from and existing independently of the utilitarian aspects of the useful article.”
For example, in May 2018, the Review Board of the United States Copyright Office (the “Board”), the body that reviews requests for registration reconsideration, reviewed claims in jewelry designs for a group of jewelry including rings, earrings, and a necklace (the “Endless Engagement” designs). In its review, the Board explained how, like with any other work, the jewelry designs must meet the minimum threshold of creative authorship in order to be registered.
During its review, the Board found that several of the Endless Engagement designs, as a whole, did meet this threshold by showing “a sufficient amount of original and creative two-dimension artwork authorship,” such as through eye-shaped designs with added convex shapes and diamond encrusting. These elements and details were viewed as being arranged in an uncommon and creative way.
The Board refused registration for other designs in the collection as they did not satisfy the requirement of creative authorship necessary to sustain claims to copyright. These designs featured “commonplace and expected arrangement of familiar symbols” or “standard, stock, or common” shapes. As a result, these designs’ registration refusals were affirmed.
Does a Jewelry Design Have to Be Registered with the Copyright Office Before Filing a Copyright Infringement Suit?
A copyright infringement lawsuit can be brought in federal court regardless of whether a copyright registration is issued or rejected by the Copyright Office. When the Office issues a registration, the plaintiff’s registration will enjoy a presumption of a validity (although courts may also consider a work’s copyrightability separate from the Copyright Office’s analysis in approving or denying a registration). When a copyright registration is rejected by the Office, a plaintiff can still bring a civil action for infringement so long as notice and a copy of the complaint are also served on the Register of Copyrights. (See 411(a))
While a court forms its own opinion on whether a design is copyrightable, jewelry creators, like all creators, are first required to seek and obtain the opinion of the Copyright Office as to the copyrightability of the design before filing an infringement lawsuit in federal court. In the 2019 case of Fourth Estate v. Wall-Street.com, the Supreme Court decided the meaning of “registration …has been made” under section 411 of the Copyright Act, where the Act states that “…no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”
The Court held that a copyright claimant may commence an infringement suit only after the Copyright Office approves or denies a copyright registration – not when a registration application and its component parts are merely filed with the Office. This decision resolved a circuit split on the issue but also confirmed that a copyright owner may have to wait months to file a suit due to Copyright Office examination and processing times.
For example, in Morelli v. Tiffany and Co., Inc., a jewelry designer sued the famous jewelry company alleging that it copied his “Sprinkled Diamond” jewelry design. Here, the court stated in its unpublished opinion that, to establish copyright infringement, a plaintiff must prove ownership of a valid copyright. But, a copyright registration is not the only way to prove ownership of a valid copyright. In fact, prior to the lawsuit, the Copyright Office rejected Morelli’s copyright applications. Yet these rejections did not prevent Morelli from suing Tiffany for copyright infringement.
Just like with all types of copyrightable work, a Copyright Office rejection is not the final say in determining whether something constitutes copyrightable subject matter. A plaintiff can bring an infringement action (subject to 411(a)) and the court, or jury, will determine de novo, or “from the beginning,” whether the plaintiff’s work is copyrightable. In Morelli, the court refused the defendant’s request to find, as a matter of law, that the Copyright Office’s refusal of registration was correct. Ultimately, the jury found that none of Morelli’s designs were copyrightable.
When is a Jewelry Design Infringed?
So how does this play out in court? In 1971, Herbert Rosenthal Jewelry Corp., a jewelry company, (Rosenthal) sued the Kalpakians, jewelry designers, for infringing its design of a bee-shaped jeweled pin. The court analyzed the two bee designs and found that the Kalpakians did not copy the Rosenthal bee design as they designed their pins after studying bees in nature and in published works.
Further, the court found that the Kalpakian bee design was not substantially similar to the Rosenthal bee design – they both simply looked like bees. The court stated how if Rosenthal was correct in its assertion, all other jewelry designers would be prevented from selling jeweled bee designs, which “confuses the balance Congress struck between protection and competition under the . . . Copyright Act.”
Based on this understanding of an idea versus an expression, the court found that a jeweled bee pin is an “idea” that the Kalpakians could copy as long as their piece did not infringe upon Rosenthal’s specific design, its expression.
Looking to learn more about the copyrightability of jewelry and fashion? Check out the Can I use copyright to protect my fashion designs? section of Q&As from the Headlines.