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New York, NY—Recently a designer client sent the following email: A major retailer stole his design, item name, and advertising copy.  What can he do?

Enforcing clients’ design rights depends on having proper evidence.  As to a specific design allegedly copied, the client should first send his original design and the copy to an attorney.  Our inspection of these will help us evaluate several issues:

            (a) Is the design copyrightable in the first place?  Common shapes and symbols—such as circles, squares and hearts—are not.  Also, modern geometric shapes are often considered ordinary shapes and therefore not copyrightable. 

            (b) If the design is copyrightable, is the copy substantially similar? 

            (c) Has the design already been registered at the Copyright Office? 

If (a), (b) and (c) are answered "yes," then the client has the advantage that the design has been registered before being copied, and a court can award special damages up to $150,000, plus legal fees, if the party knocking off did it intentionally.

            (d) Was the client’s jewelry item sold with copyright notice?  If yes, this helps to prove intentional copying.  If not, a client’s copyright rights are not lost for failure to include such a stamped notice, but it does help to prove intentionality.

When a client claims an item’s name is stolen, that relates to trademarks. As an attorney, I need to know: What public use has the client made of the item name or trademark in association with jewelry?  So the client should first send documents or web data showing use of the item name with jewelry.  A trademark search should also be conducted to determine if anyone else owns the trademark.

As to the complaint that advertising copy has been copied, the client’s original copy and that of the accused must be reviewed.  If substantially most of an ad or web page has been copied, the client can put a stop to it.  The client must register the advertising copy or web page in the Copyright Office before being able to sue. Recently, courts in California and New Jersey have allowed a lawsuit to be filed even before the Copyright Office approves an application, but an application must be filed before a lawsuit can be started.

Sometimes copiers do not identically copy advertising copy but paraphrase.  Such paraphrasing may be legal. 

Designers may supply designs to a potential customer, such as a manufacturer, soliciting a business deal.  If such solicitations are made without an agreement that the items shown are confidential, then the recipient can copy the designs subject to copyright law.  In most cases, manufacturers will not sign confidential agreements, and the parties submitting such designs should make sure the designs are copyrightable and perhaps register the designs before sending them out.

Another basis for a lawsuit is unfair competition.  Unless there are registrations for copyrights and trademarks, lawsuits for unfair competition are hard to win.

It has been our experience that some companies which copy may not be aware of the rights of a designer. The nature of the industry is such that buyers in large companies can often second source (taking one manufacturer’s item and sending it to another to be copied), and senior personnel may not be aware of such copying.  If unauthorized copying can be shown, many companies will back off.

Before contacting your lawyer, answer the above questions so he/she can better guide you.