Protecting Jewelry Design by Copyright or Patent?

Constitutional Right Offering Protections

The Article I, Section 8 of the U.S. Constitution, known as the Patent and Copyright Clause, provides that “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The “Writings” is now protected under the copyright law, and the “Discoveries” is covered under the patent law, enacted by the Congress.

Patents and copyrights are all enacted to provide protections over intellectual properties, including jewelry design, but from different aspects and on different parts of the intellectual property. The protections offered by these laws are not mutually exclusive. More often than not, their protections may be overlaid. Therefore, it is possible to adopt patent and copyright together to maximize the protections over the jewelry design. Below, a discussion of the patent law and copyright law is intended to give you a broad view and knowledge about these laws. You shall always consult an intellectual property attorney, not only specialized in patent application, but familiar with all aspects of the intellectual property law to give you a comprehensive plan and strategy suitable for your situation. 

Patent Law

Let’s discuss the patent law first, since most of people think of getting a patent first. US patent has at two kinds: utility patent and design patent.  Design patent protects the ornamental appearance of an article, including shape, configuration or surface ornamentation. Utility patent protects the utility or functionality of the article, such as the process, the structures, and the chemical compositions. A jewelry design is, if not always, more suitable for design patent other than utility patent for the apparent reason of ornamental purpose.

For design patent, the owner needs to file a design patent application and pass through the examination process, which for design patent is about one year. The requirements to pass examination are two: the design shall be nonobvious and not anticipated by other prior jewelry design. Also there is a one-year disclosure bar that the right to seek patent will be lapsed if the jewelry design has been disclosed to the public by sell, offer to sell, or publication to the public. The quirk of the design patent application is that the majority of the content and the examination of the application focus on drawings. The requirements for the drawings are very stringent: black-white line drawings, line thickness, font size, details, and different views to show all appearance of the design. Color photos or drawings are not allowed unless a petition is filed with or before the filing of the design patent application. The cost to prepare a design patent is also high. Normally a full-blown design patent cost about $3,000 to $5,000. Note that those $999 patent filings do not include the responses to the patent examiner’s questions, which, if not responded properly, the original application will be abandoned and needs to start over from the beginning.

Copyright Law

As stated in the Copyright Law of the U.S., “copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression.”  Copyright protects only the expression of an idea, not the idea itself since idea itself is not on a tangible medium of expression. The Copyright Law specifically spells out the items not covered under it:  “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 

A jewelry design, if sufficiently original, once it is made (not only in the design drawing), the copyright is attached. To register a copyright work, one needs to file an application with copied of the work to the US Copyright Office. The registration is simple and cost not much for attorney to file a copyright registration. A jewelry design is usually registered as a visual art. One big difference between patent and copyright in the aspect of application is that unlike patent’s one-year disclosure bar, copyright can be retrospectively registered but just some loss of some rights (attorney fee and statutory damage).

Anyone reproduces, adapts, distributes, or displays the unauthorized copyrighted work, will commit copyright infringement. To sue someone copyright infringement, the subject must be copyright registered in the US Copyright Office. The damages of infringement is normally the profit from the infringement (likely by the pieces sold but could be by other ways to gain profits). Therefore, it needs to prove how much profit was received by the infringer. However, there is a statutory damages, for which copyright owner needs not to prove the profit but only how many infringement articles are found. Therefore, the statutory damage is very powerful and effective. The copyright law also allows attorney fees awarded to the prevailing party. However, to receive statutory damages and attorney fee, the copyright registration needs to be made within three months of the publication of the article.

To prove someone infringement, it is essential to show (1) protectability under copyright; (2) the accused infringer’s access to learn the copyrighted work; and (3) substantial similarity.  A protectable jewelry design must be original and creative. A copyrighted jewelry design will enjoy an assumption that the jewelry is copyrightable. Therefore, registration of copyright is beneficiary to prove the protectability. The access to learn the copyrighted work needs to be proven by the copyright owner. However, the proof can be established as the fame or wide dissemination of the jewelry.  The substantial similarity is normally left to the court to decide; however, if the design is only a rearrangement of elements commonly found in the public domain, it is hard to prove the originality.

Enforcement of the Rights

Regardless copyrights or patent rights, it needs to patrol the market, find the infringer, warn the infringer, and sue the infringer if warning does not stop the infringement. Patrolling the market needs the right owner’s due diligence to check those market places breeding the infringements, such as eBay, Amazon, NewEgg, and Alibaba. Warning the infringer, effectively, needs an attorney’s cease and desist letter sent to the infringer. However, the cease and desist letter needs a lawyering skill that can alert the infringer enough but not too much to enable the infringer to sue for declaratory judgement. A declaratory judgement is a lawsuit, normally by the infringer, asking the court to determine whether there is an infringement. It is bad for the right owner because the right owner cannot control the location of the lawsuit being filed, and there is less time to react to such lawsuit. Normally, the right owner’s attorney will file a complaint in court before sending out the cease and desist letter to advance the lawsuit so that the owner can have much control.

Distinctions between Copyright and Patent in Litigation

The differences between patent and copyright infringement has two points: the co-existence of ownership and the knowledge of the ownership. In the patent infringement, it can be only one inventor of the patented jewelry design, who registered first and received the patent. But, the copyright is different, which allows more people owning copyrights on same or similar jewelry design as long as they created the design independently without copying others.  Therefore, design patent infringement is easier to be established when there is an unauthorized jewelry design found. In contrast, copyright infringement needs to show there is an access to the copyrighted work.

Having made the distinctions between the copyright and patent protections, it does not mean that a jewelry design cannot take benefit from both protections. The law does not make both rights mutually exclusive. Instead, in many cases, a design subject can be protected by copyright as a cheap, quick underlining protection and then adding design patent to strengthen the weakness of copyright in litigation that needs proof of access and allows multiple ownerships.

A summary of copyright and patent are in the table below:

Attorney Changi Wu

Graduating from the Rutgers School of Law-Newark with the honor of the American Bar Association-Bloomberg BNA Excellence Award-Intellectual Property, Changi Wu has been licensed as a patent agent since 2012 and later as an attorney in 2014 to practice in NJ, USPTO, and US Federal District Court in NJ. Changi Wu has assisted clients in various intellectual property mattes regarding patent, copyright, trademark, and trade secret. He also has experience in patent licensing, infringement litigation, and settlement negotiation.  He assisted many startups and individual inventors in legal matters by a reasonable and affordable rate. His customer review can be found in www.usiplaw.us . He can be reached at cwu@usiplaw.us or 848-219-0909.