What kind of lawyer does my wife need?

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Mbira

Well-known member
Joined
Jun 4, 2004
Messages
2,422
Location
Austin, TX
Here's the short story.  My wife is a fairly well known and respected jewelry designer.  She has her pieces here in Austin and around the US.  She recently discovered that one of the high-end stores here was having another local artist make pieces very similar to hers and selling them for less money.  This was discovered and my wife has pulled her inventory out of their store.  She also contacted the other local designer who knew that she had f*&ked up by doing this and she has appologised and promised not to continue makeing the jewelry now that my wife has left.  THe owner of the store has now said that many people make that style, and that she'll just have someone else do it. 

So my question is who can we talk to to find out whether she can trademark(?) her design?  What type of lawyer do we need to talk to?  Does this need to get done before the owner finds another person to do this work, or is my wife protected in the meantime?

Thanks!
Joel
 
I should say that the way we initially discovered this is because clients who bought pieces at the store contacted my wife about repairing pieces that she hadn't done.  It seem that they were led to believe that the pieces they owned were designed by my wife.
 
Get an attorney specializing in copyright law.

You can wait indefinitely to copyright something before hauling the infringers into court, from what I understand.  Copyrights are otherwise the weakest form of protection however.

If the designs are distinctive enough she could file design (as opposed to utility) patents on them, provided they haven't been offered for sale for more than a year.

All of the above is from my layman's understanding and should not be represented as legal advice of course.
 
> fairly well known and respected jewelry designer.

Sez you.

> clients ...were led to believe that the pieces they owned were designed by my wife.

Semi-confirmation.

> many people make that style

Unless it was eye-blindingly obviously UNIQUE, even to a blind judge, refuting this leg is unlikely. Yes, SHE can see her own creative soul; maybe others do. But objectively, it is a rock and some silver, or whatever. Even if it were a polished moose-turd, it isn't absolutely unique.

> just have someone else do it.

Irrefutable. You may be able to shame the local artisans. You can't shame Mexican or Chinese sweatshops.

Copyright is applicable. But fairly weak, and VERY fuzzy.

She's been back-stabbed. That's not illegal. I don't see what a lawyer could do except extend the bleeding. Unless jewelry law is much tougher than I think, you can't stop clones. And "led to believe" is a lot weaker than "fraud".

I think what's past is past.

IF she is known and respected, print up labels:

"Joelina's Jewelry"
"None genuine without this tag"

Then spread the word among customers that there are a lot of fake Joelinas, and no good person should buy or own such junk. Be careful not to slander the store. Even if you never again do business there, other stores are leery about a supplier who bad-mouths the channel. But when you find a clone, and the owner "was led to believe", it may be appropriate to suggest returning it.

Simple Name Brand has been good enough for many mega-products. To the point that, I say, in audio, $10 per knob and $1 to $1,000 for the badge. Some Name Brands command loyalty, price-point, and sales.
 
Hi PRR,
Let's put it this way, people DO buy her jewelry specifically because it is her brand.  She actually does have a "brand reputation" I guess you'd say.  I'm not just trying to stand up for my wife here, but it seems like there must be something that can be done when another designer was specifically asked to copy her jewelry (we know this because we spoke to the other jeweler yesterday and DID actually shame her into at least saying she will stop).  Also, when my wife went in today to remove her jewelry from the store, there were pieces in her display that we not made by her.

But I think you're right that the best course may be to begin making it known that there are "cheap imitations" out there.  All of the jewelry is already labeled, but that extra info may be a good idea as well.

BTW my wife has no desire to mess with legal stuff being much more of the disposition to just let karma take care of things...a piece of irony in this that she just hired a sales girl who used to work for the store that did this.  This girl thought that my wife had already known this had happened and she brought up how wrong it was...
 
What living sounds said. My guess is that you'll be told that suing will be very expensive and the results won't be guaranteed, particularly if there isn't a design patent or a copyright registration.

Design patents and trademarks, unfortunately, aren't cheap. Copyrights are -- relatively -- but I think it likely that your wife's best defense is to make the best jewelry she can, label it clearly with her name, and make her case n the marketplace on "accept-no-substitutes" reputation.

Peace,
Paul
 
In Europe, we have what's known as a 'registered design' to protect people blatantly copying the look of an item. In the US, the equivalent is a registered copyright (as has been said). US firms have chosen to litigate in Europe, Mackie being one. However, in the case of Mackie, when they sued in the UK, their case against Beh was unsuccessful because they didn't apply for a US copyright!

I've nothing but contempt for the UK IP system, yet Mackie felt it valued IP more than the US system, hence they sued in the UK. At least the judge awards costs to the successful party in the UK... From what I understand, in the US, unless a case is totally frivolous, costs are not awarded. This means that even if you win, your legal fees could outweigh the damages.

Anyway, I've had my experiences with IP lawyers on both sides of the pond, and to be honest, they're not that different. The chances are that they'll be highly non-committal in terms of giving you an estimate as to how successful your challenge will be. But one thing's for certain: there will be nothing uncommittal about the regularity with which you'll receive an invoice from said lawyer - they even charge for emails and telephone calls.

If IP law anywhere in the world, let alone the US, were that strong, how come Beh continue to rip off the designs of various firms? One could list tens of firms who've been ripped off by Beh, even to the point where Beh name the product with a spoof of the product it skanks - as if to make a mockery of the IP protection system.

I truly wish your wife all the best. If there were any justice in the world, she'd get compensated. However, 'justice' in the real world is a different reality to its ideal. Also bear in mind that, if the firm being litigated has capital, they will do their best to drag the legal challenge out, picking up on any procedural clauses they can.

Best of luck to you!

Justin 

edit - I don't know if they have a US equivalent, but - fed up with the efficacy of registered designs - this organisation was set up to lobby for the rights of designers: http://acid.eu.com/

If they have a US division, it could be worthwhile for your wife to join.
 
First of all I must say that one day I will sue PRR for causing me to splatter tea all over my pc everytime I read his posts. The threads should have warning something like " Caution-contains posts from PRR".

A shit-hot intellectual rights lawyer who specialises in litigation is needed.

Your wife does not have a case for having her designs copied "very similar". Forget it. 

However, if your wife has a proof of that conversation with that local artist and that she apologised for copying your wife's design, then your wife has a case to sue her for loss of business. And there is a great possibility that she will come to an agreement with your wife in one way or another. Once this stage is over your wife will have a greater chance of suing the store.

The issue is how big is your wife's wallet, naturally yours too.  I give this example all the time. A company used to use my trademark, I contacted them through my attorney in US, they said sorry, cost me around 5,000 bucks. Worst, I could not even claim that from that company as my attorney said "in US everybody comes with his/her own baggage". So before you get to court allocate a budget of at least three times that figure. After that it is a matter of who can stand the heat.

My humble advice would be that your wife should forget about this and spend that money and effort on expanding her business.
 
You can immediately assert a common law copyright. To do this, place a notice on the tag (and if possible, engrave on the piece) the copyright notice. Don't make the mistake of using the copyright symbol until you actually apply for and are granted the copyright. The only legal common law form is something like the following: "Copyright 2009 - Jane Rightsholder, All rights reserved." Then immediately apply for a copyright on each design. This requires depositing copies of an image of the piece in the Library of Congress along with the necessary documents to the patent office. The first common law form costs practically nothing unless you have to defend it. The second costs more because you have to register each unique piece.

After you have contacted a patent, trademark and copyright attorney, the next step could be to apply for a design patent. This allows you to "class" a design type if it is truly a unique design. Don't try to apply for the design of a ring with a diamond mounted on it. This will be a waste of money. The design will have to be proven to be unique by searching the design patent archive. This is where it can start to get very spendy. Most industrial design firms use this method of protection.
 
As far as I know you can only patent a design which is based on a method and/or a process that have not been done before. In other words the patent rights only apply to an invention.

The design of a jewelery is a cosmetic issue to which the patent rights do not apply. You only register the design rights. 
 
Firstly forget about lawers!
In these situation these are the only guys making money!

I had somewhat the same situation happened to me.
What I learned from it?

Forget about copyright, instead be clever  ;)
If your wife does produce jewelry with a UNIQUE touch, then have jewelry boxes made to her name, with logo and trademark, and make it known that a piece sold without that box is of no value!
Serialize your production on the box.
These boxes can be had for quite cheap....

Set a web page showing her stuff, past and present collection, with lots of pictures and description, by the way a web page content has pretty much no value in court... The added bonus to the web page is that if it is well made it will bring her even more business!

The basic idea is to flood the market with your product, by the time competion catch up, you are already ahead with something else... The competion will fight for the remaining crumbs and you made your money ob that line!

It did work for my daughter, but it was quite a bit of work. That was in the late 90's, it paid for her degree!!

Luc
 
sahib said:
As far as I know you can only patent a design which is based on a method and/or a process that have not been done before. In other words the patent rights only apply to an invention.

The design of a jewelery is a cosmetic issue to which the patent rights do not apply. You only register the design rights. 

No no no.  A design patent is all about "cosmetics".  Your remarks apply to a "utility" patent (as they are called in the US specifically).

See http://en.wikipedia.org/wiki/Design_patent .  For a general discussion see http://en.wikipedia.org/wiki/Patent
 
Luc makes some very important points. Litigation is for rich people.

The basic idea is to flood the market with your product, by the time competion catch up, you are already ahead with something else... The competion will fight for the remaining crumbs and you made your money ob that line!

For example, Colin Chapman (founder of Lotus cars - one of the most innovative automotive engineers the world's ever seen) didn't believe in patents. I believe his attitude would've mirrored the above quote.


Justin
 
> As far as I know you can only patent a design which is based on a method and/or a process that have not been done before. In other words the patent rights only apply to an invention.

US patent law has Invention patent and Design patent.

Harley-Davidson had a Design (or Utility?) patent on fork-and-blade connecting rod IN a V-2 motocycle engine. The F&B conn-rod is 100 years old. All H-Ds, and many WWI and WWII V-12 aircraft engines, were F&B. But it fell out of fashion; all post-war US V-8s were offset-rods. Even most V-4s, because any V-4 has worse problems than rod offset. But in a V-twin the F&B construction eliminates a significant shake. And H-D was smart enough to get their paper at a time when the asian "cruiser bike" makers were not doing F&B, but were about to steam-roll H-D's historic market. That Design patent seems to be why Honda made a "Sportster" clone that looked JUST like a V-twin engine, but walking round and round and counting fittings I determined it was a skinny-piston V-4.

But while that may make sense in a market for 10,000 $10,000++ bikes, the cost of perfecting patent papers (never mind defending them) probably exceeds a home artisan's gross income.

Also... the USPO site and Wikipedia say "ornamental design of a functional item". The Coke Bottle is an example.
180px-Coke_bottle_patent.JPG

Not sure how this reconciles with a rod hidden inside the engine. Perhaps H-D's Senators leaned on the USPO to be liberal. Or perhaps it was argued that H-Ds need so much repair that the internal rod is frequently visible, and the elaborate and unique F&B construction is then "ornamental".

Maybe I am mixed-up.

---
Copyright exists, free, in everything you create. Proving it, and crushing copycats, is not free. Media-moguls can use and abuse copyright. Mere people get no practical benefit.

Trademark, in the US, is a royal mess. The USPO has no clear mandate to deal with trademark; it wasn't an issue when the US was founded, so was left to States, who enacted ad-hoc laws which may conflict each other. The USPO does hold a Registry, which assists national trademark research; yet many strong local trademarks are not in the USPO registry. And being registered doesn't grant you any magic powers. This philosophy conflicts with modern Euro practice, so may change, though not in the current excitement.

 
I dunno much about the jewelry racket, but when I was young I was dragged to a lot of junkshops because my folks were buying old table-silver. It was selling at or even below the value of the silver, a glut on the market, as early 20th century brides died and their children dumped the junk. This was good timing, because prices shot way up within a decade. Some of that junk was beautifully made and superior to modern silverware; also price of silver rose (not even counting the Hunt Bros spike).

Anyway they looked for what they called "hallmarks", indicating famous maker. It turns out that "hallmark" is really an assay mark certifying purity; they knew "makers marks". Whatever. The maker had a punch which put a little triangle or bird or shield on the inside-back of the spoon, these marks were well-known, and anybody faking a mark would be drummed out of the Guild.

indexban2.JPG


You can badge a refrigerator or car, but not an earing. Tags and boxes are good trademark carriers at point of sale, but not when the jewelry is being worn. And in this case, a little peer-pressure may be a good enforcement tool.

"Lovely ring! Is it a Joelina?" Checks it out. "Ah, there's no J-mark inside the band. I hope you didn't pay a lot for it, darling." Or later to others: "She dresses well, but she doesn't know good jewelry."

Now they use lasers, but in the old days just a steel punch.

Copyright and Design patent does have one strong point. The Customs Office can stop imports of items with infringing trademark or design. That will not stop your local copy-crafters but could be invoked to block shipments from Mexico or China. Of course this would probably happen after-the-fact: you and the Customs office won't be expecting the first crate, and a crate of rings could flood the market for years. It is illegal to sell such infingements, but that's no-priority for your local police; Nike and handbag designers tend to hire private operators to find and seize counterfeits (one of Larry's Scudder stories has a passage about this work).
 
In general as the world moves a little faster IP is a changing game. Jewelry may be somewhat resistant to that trend but is likewise prime for offshore production due to being labor intensive and perhaps dealing with toxic fumes, and materials (just guessing). In an if you can't beat them join them, get some of your best designs built offshore and sell them yourself.. Of course this exposes you to your offshore maker selling them out of their back door, and they will.

Another tack is to look for some affinity marketing connection. Double the price and partner with some charity to raise funds for a good cause. You may open up a new market for feel good customers, and there should be lots of peer pressure against buying a cheap knock off that steals from charity...

Jewelry is an old business, so there are many angles to play.

JR 
 
Carso and PRR,

Thank you for correcting me. I kind of thought this would be harmonised but things can be different in US. But still I should have known better as I did so many novelty electronics stuff that involved Coke bottle  :)

I also agree with PRR that the copyright-patent issue is really a mess not only in US. You spend truck loads of cash yet you are still not portected as the law itself is not black and white.

 
Securing a patent is only a license to sue. In the end game it usually comes down to the golden rule (he with the gold rules).  There are some notable cases when individual inventors persevered against large corporations, but it was typically done with the help of other investors which diluted their ownership.

I paid for a (utility) patent with this understanding. I see it as a bargaining chip when negotiating with the big dogs not a comprehensive defense.

JR
 

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