If you’ve created a unique jewelry design, offered it for sale on the Internet, and several months later see someone is selling jewelry that is an exact duplicate of your design, what does the law say about this situation and what are your rights?
In early February, I wrote a post entitled Fascinating World of Copyright Law and Fine Art. That post dealt with copyright law as it pertained to:
Section 102(a) Subject matter of copyright: In general
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works
A piece of jewelry doesn’t fall under any of these eight categories because what you need to protect is not the piece of jewelry itself, but the creativity and uniqueness of the design. This leads us to Chapter 13, Protection of Original Designs, of Title 17, Copyright Law of the United States (available in its entirety at: http://www.copyright.gov/title17/).
The law says that useful articles made “attractive or distinctive” to buyers by the original design are protected and an original design is a non-trivial, distinguishable creative endeavor not copied from someone else:
Section 1301 Designs protected
(a) Designs Protected.—
(1) In general.—The designer or other owner of an original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public may secure the protection provided by this chapter upon complying with and subject to this chapter.
(b) Definitions.—For the purpose of this chapter, the following terms have the following meanings:
(1) A design is “original” if it is the result of the designer’s creative endeavor that provides a distinguishable variation over prior work pertaining to similar articles which is more than merely trivial and has not been copied from another source.
Conversely, the law tells us what is not protected: designs that aren’t originals, designs that are commonplace, or designs that vary only slightly or apply commonly use variants.
Section 1302 Designs not subject to protection
Protection under this chapter shall not be available for a design that is—
(1) not original;
(2) staple or commonplace, such as a standard geometric figure, a familiar
symbol, an emblem, or a motif, or another shape, pattern, or configuration
which has become standard, common, prevalent, or ordinary;
(3) different from a design excluded by paragraph (2) only in insignificant
details or in elements which are variants commonly used in the relevant
When does protection start? Simply making the design public, as in making it available for sale as a jewelry item to the general public on the Internet, is sufficient (although registration is better).
Section 1304 Commencement of protection
The protection provided for a design under this chapter shall commence upon the earlier of the date of publication of the registration under section 1313(a) [Determination of Registrability of Design; Registration.—Upon the filing of an application for registration in proper form under section 1310, and upon payment of the fee prescribed under section 1316, the Administrator shall determine whether or not the application relates to a design which on its face appears to be subject to protection under this chapter, and, if so, the Register shall register the design.] or the date the design is first made public as defined by section 1310(b) [When Design Is Made Public.—A design is made public when an existing useful article embodying the design is anywhere publicly exhibited, publicly distributed, or offered for sale or sold to the public by the owner of the design or with the owner’s consent.].
How do you know if a design is protected by law? The designer must mark it legibly, much like copyrighted material is marked with ©, only in the following manner:
Section 1306 Design notice
(a) Contents of Design Notice.—
(1) Whenever any design for which protection is sought under this chapter is made public under section 1310(b), the owner of the design shall, subject to the provisions of section 1307, mark it or have it marked legibly with a design notice consisting of—
(A) the words “Protected Design”, the abbreviation “Prot’d Des.”, or the letter “D” within a circle, ∂, or the symbol “*D*”;
(B) the year of the date on which protection for the design commenced; and
(C) the name of the owner, an abbreviation by which the name can be recognized, or a generally accepted alternative designation of the owner. Any distinctive identification of the owner may be used for purposes of subparagraph (C) if it has been recorded by the Administrator before the design marked with such identification is registered.
Oh, no! You didn’t know you needed to mark your design. Are you out of luck? No, but you won’t be able to seek damages or financial recovery from anybody who used your protected design before you serve them notice that they are using your protected design.
Section 1307 Effect of omission of notice
(a) Actions with Notice.—Except as provided in subsection (b), the omission of the notice prescribed in section 1306 shall not cause loss of the protection under this chapter or prevent recovery for infringement under this chapter against any person who, after receiving written notice of the design protection, begins an undertaking leading to infringement under this chapter.
(b) Actions without Notice.—The omission of the notice prescribed in section 1306 shall prevent any recovery under section 1323 against a person who began an undertaking leading to infringement under this chapter before receiving written notice of the design protection. No injunction shall be issued under this chapter with respect to such undertaking unless the owner of the design reimburses that person for any reasonable expenditure or contractual obligation in connection with such undertaking that was incurred before receiving written notice of the design protection, as the court in its discretion directs. The burden of providing written notice of design protection shall be on the owner of the design.
If my design wasn’t marked, how do I prove my design deserves protection and theirs doesn’t? You will have the burden of proving your design was in existence earlier in time than was theirs.
Section 1309 Infringement
(e) Infringing Article Defined.—As used in this section, an “infringing article” is any article the design of which has been copied from a design protected under this chapter, without the consent of the owner of the protected design. An infringing article is not an illustration or picture of a protected design in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture, or similar medium. A design shall not be deemed to have been copied from a protected design if it is original and not substantially similar in appearance to a
(f) Establishing Originality.—The party to any action or proceeding under this chapter who alleges rights under this chapter in a design shall have the burden of establishing the design’s originality whenever the opposing party introduces an earlier work which is identical to such design, or so similar as to make prima facie showing that such design was copied from such work.