Cleo Suero

Cleo Suero

On December 17, 2021, the American jewelry brand David Yurman filed a lawsuit in the Southern District of New York against its 8-year-old Canadian-based rival, Mejuri, asserting two counts of unregistered trade dress infringement and state law dilution.In the complaint, David Yurman Enterprises LLC, David Yurman IP LLC, and Yurman Retail North America LLC (collectively “Yurman” or “Plaintiffs”) allege that Mejuri, Inc. and Mejuri (US), Inc. (collectively “Mejuri” or “Defendants”) are infringing Yurman’s trade dress rights to several of the pieces Yurman has designed, advertised, and sold over the course of more than 40 years, particularly those with its signature twisted helix cable motif in its Pure Form® and Sculpted Cable collections. For example, Yurman claims its Pure Form® Cable Bracelet is strikingly similar to Mejuri’s Croissant Dôme Bracelet or Croissant Dôme Cuff Bracelet. Further, Yurman claims that Mejuri is using the same type of advertising images, the same models, and the same female empowerment messaging to attract its consumers.

goldbracelets

 

As a result, Yurman argues that consumers who see Mejuri’s “copycat” products “either at the point of purchase or thereafter, have been and will continue to be actually confused into thinking that the Mejuri product is related to Yurman.” Yurman adds that “ordinary consumers are likely to be confused as to the source, sponsorship, affiliation, or approval relating to the Mejuri products vis-à-vis [its own products]”, which in turn is damaging to its goodwill and reputation. Furthermore, Yurman asserts that Mejuri’s actions were designed to “blur” and “dilute Yurman’s extremely well-known trade dress, and to create confusion and mistake and to deceive consumers into the false belief that Mejuri’s products are associated with, affiliated with, sponsored by, endorsed by, or otherwise connected to Yurman and its products.” However, Yurman recognizes its product quality is still unmatched, stating: “Unfortunately for Mejuri’s customers, Mejuri is unable or unwilling to match Yurman’s product quality, selling products that quickly tarnish and are of lesser overall quality.”

For Mejuri’s alleged infringement and dilution of Yurman’s trade dress, Yurman is seeking a permanent injunction, damages (including actual, direct, indirect, consequential, special, and treble damages), attorneys’ fees and costs, and a court order requiring Mejuri “to melt down and recycle any remaining inventory of the infringing products and take down and destroy any and all advertising and promotional materials, displays, marketing materials, web pages, and all other data or things relating to the infringing products.”

The case is David Yurman Enterprises LLC, et al. v. Mejuri, Inc., et al., 1:21-cv-10821 (SDNY).

Since 2018, roughly 600 applications for registrations of trademarks for non-fungible token (“NFT”) goods and/or services have been filed with the United States Patent and Trademark Office (“USPTO”). This year, however, has seen a tremendous rise in NFT-specific applications, signaling an even stronger push towards the digital asset that can be used to prove ownership of digital files such as photos, videos, and audio files.

For example, this past June, the 17-year-old beauty brand e.l.f. Cosmetics, Inc. filed an intent-to-use application for registration of “CRYPTO COSMETICS” in International Classes 9 and 42 in connection with NFTs used with blockchain technology “to represent a collectible item and featuring collectible images, audio, videos, and digital art”. Similarly, Saks.com LLC, the e-commerce-focused entity for the department store Saks Fifth Avenue, filed an intent-to-use application for registration of “SAKS” in International Class 9 in connection with NFTs used with blockchain technology “to represent a collectible item; non-fungible tokens featuring collectible images and videos; non-fungible tokens featuring digital art; digital tokens used with blockchain technology”, as well as “digital tokens used with blockchain technology to represent a collectible item”.

Accordingly, consumers can expect to engage with more virtual projects in the new year, particularly within the beauty and fashion industries.

Recently, a non-fungible token (NFT) collection named Dead Trademark Agglomeration launched on OpenSea, the NFT marketplace valued at $1.5 billion. This collection claims to be the "first and only NFT collection dedicated to collecting and preserving unique dead trademarks. Each NFT is based on actual historical U.S. trademark records from a past trademark registration." This collection gives owners the "chance to stake a claim to a unique part of history", but ownership "does not confer or assign any trademarks rights." Accordingly, purchasers of these NFTs would simply own a screenshot of a dead trademark on the Principal Register, presumably taken from the USPTO platform, as a digital image file.

To date, the Dead Trademark Agglomeration collection consists of 135 NFTs owned by 112 users. The current floor price stands at 0.01 ETH, which roughly amounts to $43.00. Some of the dead trademarks for sale include FLEXY PUZZLE, RIB TICKLERS, POURMASTER, and TOWN CRIER. There is also a higher priced, limited "Meta Collection" comprising of ten dead trademarks incorporating the word META.

On September 30, 2021, the Second Circuit made a significant ruling regarding authors’ termination rights under the Copyright Act of 1976. The ruling was in the case Horror Inc. v. Miller[1], whereby the Second Circuit had to decide whether Victor Miller created the screenplay for the horror flick Friday the 13th as an employee or independent contractor of the production company, Manny Company, to which he assigned his rights to the screenplay for just $9,000 in 1979. Miller’s employment status was key to determining whether he was entitled to terminate his grant of rights decades later.

Under the Copyright Act, copyright ownership typically “vests initially in the author or authors of the work”, i.e. the person who actually creates the work.[2] However, there is an exception for a work “made for hire”—in this instance, "the employer or other person for whom the work was prepared is considered the author.”[3] Consequently, unlike an author, a creator of a work-for-hire is unable to terminate prior transfers of ownership of any or all of the exclusive rights in a copyright under Section 203 of the Act.

Horror Inc., which subsequently acquired the rights to the screenplay, sought a declaration that Miller was just an employee at the time and the screenplay he wrote was only a work-for-hire. Ultimately, however, the Second Circuit affirmed the District Court’s ruling that Miller wrote the screenplay as an independent contractor under copyright law and as such it was not a work-for-hire. Therefore, Miller, as the author, had the right to terminate his transfer of, and reclaim ownership to, the copyright to the scary screenplay.



Horror Inc. v. Miller, No. 18-3123-cv, 2021 WL 4468980 (2d Cir. Sept. 30, 2021).

17 U.S.C. § 201(a).

17 U.S.C. § 201(b).

Recently, British artist Stuart Semple made headlines when he created a 150 ml tube of “super flat matte high-grade shade” acrylic paint called “TIFF” and sold it for $28 on his e-commerce site.[1] The buzz around this pre-order project centers on the fact that the tube oozes a particular robin’s egg blue hue, No. 1837 in Pantone’s Color Matching System, which is synonymous with the jewelry brand, Tiffany & Co. In doing so, Semple endeavors to “liberate” the signature shade and make “this once unattainable color” available to “all artists to use in their creations.”[2] However, through this project, Semple also highlights the bounds of protection that colors have as trademarks under U.S. trademark law.

In the seminal case Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995), the Supreme Court held that the Lanham Act permits the registration of a trademark that consists, purely and simply, of a color. Though, not just any color can be trademarked, nor can any trademarked color enjoy widespread protection. As explained in the Qualitex decision, a color mark consist of one or two colors that are used on a particular object and act as a symbol with which consumers identify a particular brand. Examples of popular color marks include Post-Its’ canary yellow adhesive stationary notes or Christian Louboutin’s bright red contrasting outsoles. Likewise, Tiffany & Co. maintains multi-class trademark registration for its blue shade, but only for its use on its boxes, drawstring jewelry pouches, shopping bags, retail services, jewelry featuring the color, and the like. As such, Tiffany &Co.’s trademark registration is specifically and narrowly tailored to the actual and consistent uses the brand makes of the color. Tiffany & Co. does not, in turn, have a monopoly on the color, which would otherwise hinder artists’ ability to use it. Accordingly, if artists incorporate Tiffany & Co.’s blue in their works, it is not necessarily “ILLEGAL” as Semple claims.[3] While it is true that Tiffany & Co. and other brands that have registered color marks do enjoy protections, these protects are limited to specific good and/or services.