Los Angeles Intellectual Property Trademark Attorney Blog
UPDATE 4-24-2013: District Court finds non-infringement of trade dress and copyrights on summary judgment.
A’lor International Ltd., dba Charriol USA, is suing sixteen defendants for manufacturing and selling numerous jewelry designs incorporating a nautical cable motif that allegedly infringe Charriol’s copyrights and trade dress. Charriol claims that it has been designing unique jewelry designs for decades, which have either been registered with the U.S. Copyright Office or are pending registration. To see pictures of Charriol’s entire list of asserted designs and allegedly infringing products, click here. Through many years of sales, advertising, and media coverage, Charriol alleges that the cable motif has become its trade dress, meaning that the jewelry’s visual appearance functions as a trademark and consumers associate the appearance with the source of the jewelry. Charriol also asserts a breach of implied contract against four defendants that received samples of the jewelry and agreed to only use the designs if they compensated Charriol.
Charriol’s cable jewelry designs are reminiscent of David Yurman’s twisted cable design. Indeed, Yurman has filed numerous lawsuits for infringement of his copyrights and trade dress in the twisted cable jewelry design. In Yurman Design, Inc. v. PAJ, Inc., the defendant appealed the jury’s verdict awarding Yurman damages for PAJ’s infringement of Yurman’s copyrights and trade dress. The Second Circuit affirmed the finding of copyright infringement despite the use of cable designs by others in the jewelry industry because “the originality in Yurman’s four designs inheres in the ways Yurman has recast and arranged those constituent [preexisting] elements. We have carefully reviewed the cable jewelry produced by third parties that PAJ submitted to the jury, and cannot conclude that any of Yurman’s four combinations are nonoriginal as a matter of law.” The appellate court, however, reversed Yurman’s trade dress victory because his definition of the trade dress as “the artistic combination of cable [jewelry] with other elements” was overbroad or generic:
Yurman’s inability to articulate its trade dress at a lower level of generality is not altogether surprising, given (1) that there are 18 different Yurman pieces in the product line it seeks to protect (eight rings, seven bracelets, and three pairs of earrings), four of which the jury found to be separately copyrightable; and (2) Yurman’s concession that the pieces are composed exclusively of elements commonly used in the jewelry industry. A unique combination of elements may make a dress distinctive, but “the fact that a trade dress is composed entirely of commonly used or functional elements might suggest that the dress should be regarded as unprotectible or ‘generic,’ to avoid tying up a product or marketing idea.”
Charriol defines its trade dress as “interwoven nautical cable threads; twisted stainless steel components; 1.0, 1.2, 1.5, 1.6, 5.5, 3.0, and 6.0 millimeter cable composition; electro-polished juxtaposed multi-strand cable threading; treated soft-textured components; poly/physical vapor deposition-treated design elements.” Assuming that it does not suffer Yurman’s overbroad or generic definition of its trade dress, it will be interesting to see how Charriol will argue that its cable jewelry design trade dress has been substantially exclusive in light of Yurman’s similar cable jewelry design.
The case is A’lor International, Ltd. v. Tappers Fine Jewelry, Inc., CV12-02215 RGK (C.D. Cal. 2012).