Last month, Florida jewelry designer Coralia Leets filed a Federal trademark infringement and unfair competition lawsuit in the Southern District of Florida alleging that defendant Gab-Cos, Inc. stole her design for pendants and earrings that featured a teardrop look surrounded by a ring of hammered gold. Leets also alleged that others sold imitations of her pieces but stated they were “Coralia Leets Jewelry” on e-Bay. The second claim should be easy to decide. It is trademark infringement to claim something comes from a company that it does not. That is the essence of trademark law and the whole purpose of a trademark is to designate whose product it is. So they either falsely claimed it came from Leets or they did not.
The first claim, that they are selling jewelry that copies and infringes on her “trademarked” designs may be a tougher thing to prove. As I wrote in a previous post dealing with a claim of jewelry design infringement against Urban Outfitters, jewelry designs can be protected intellectual property. In order to become protectable, however, the designs have to be unique and/or have become so associated with a particular jeweler that the design has acquired a secondary meaning; Tiffany, David Yurman and others have successfully prosecuted jewelry design infringement claims using these arguments. Leets claims that her pieces are protectable for both reasons. Her carefully crafted complaint painstakingly explains how Leets travels to Turkey with hand drawn designs to have a factory there create the pieces. She adds a gemstone acquired from India which she herself has hand-selected and approved, it states. The defendants’ versions it is alleged are cheap knockoffs that use plastic or resin as opposed to gemstones. Leets’ complaint recites how she started her business in 2000 and came up with the teardrop and double teardrop designs in 2007. It boasts that she has since sold over 40,000 pieces of the teardrop pendants. Sounds like it might be a strong trademark.
Until you read the answer to the complaint filed by the defendants. They raise some very strong arguments against the designs. The answer claims that Leets just used an ancient Turkish design that can be found in any street bazaar in Istanbul. They even attach a photo of such a bazaar displaying what appears to be pendants with similar teardrop designs. They also attach a photo of actress Leighton Meester wearing a similar pendant manufactured by well-known jewelry designer Ippolita on Gossip Girl in 1999, years before Leets claims to have originated it. But the most difficult allegation in the answer for Leets to address is that the defendants claim that Leets gets her jewelry from a Turkish jewelry manufacturer and wholesaler called Serfan Tufecki and that Tufecki sells identical pieces under his own line of jewelry, called “Serena.” The answer contains a counterclaim asking the court to declare that Leets’ designs are neither original nor unique and are therefore not protectable. While that would not mean that companies could use Leets’ name in selling their jewelry, it would mean that anyone could use a similar design.
I feel that in the discovery stage of the litigation, there will be alot of e-discovery between the parties as each will try to get emails from the other as to when and how they each came up with the design. Since Leets is based in the US and her manufacturer is in Turkey, there must be a steady stream of electronic communication that may prove/disprove her claims. Similarly, the defendants may have sent off images to their manufacturer to us as templates in making their lines. Where did those images come from? Were they taken from Leets’ website?
If the allegations in the answer are true, it would seem that Leets’ lawyers did not thoroughly research the design or its origins. This lawsuit could end up backfiring on Leets unless she is able to establish that there is something about her design of the teardrop pendant that makes it her own. In jewelry that is not so easy to do as people have been designing jewelry for thousands of years and there are limits to what one can do with silver and gold. I’ll be interested to see how this suit plays out.