Copyright Law and “Post-Purchase Confusion”

As if trademarks, and copyright, and patents weren’t confusing enough (we tried to shed a little light on this subject in a recent post, “Can Jewelry Designs be Copyrighted?”), entering into the legal fray is a new suit filed this year in New York by Van Cleef and Arpels against Nice Ice Fine Jewelers.

In the suit, Van Cleef & Arpels are alleging that Nice Ice Fine Jewelers has infringed upon their trademark ‘Alhambra’ jewelry design, by selling jewelry that imitates the Alhambra trade dress. The Alhambra trade dress is described as

“a three-dimensional configuration of a jewelry element comprising repeated and equally spaced quatrefoil pieces each of the same size connected by chain links. Each quatrefoil piece has an outer edge that is beaded with an inner portion that is flat. Each quatrefoil piece also has four larger beads positioned at central points within it. The inner portion of the quatrefoil piece is in the color gray for shading purposes only. The chain links shown in broken lines are intended solely to indicate the positioning of the mark and are not part of the mark.

The complaint against Nice Ice Fine Jewelers was made under the Lanham Act and alleges trade dress infringement and unfair competition.

What makes the Van Cleef and Arpels v. Nice Ice Jewelers lawsuit interesting?

What’s interesting about this particular complaint is that Van Cleef and Arpels are not suing Nice Ice for trying to sell its jewelry as if it were genuine Van Cleef and Arpels jewelry. In fact, the company clearly advertises their pieces as look-a-like jewelry, not as originals. This means that people purchasing their jewelry are not mislead into thinking they have purchased genuine Van Cleef and Arpels brand jewelry.

Rather, the lawsuit asserts that the confusion and misrepresentation arise in the marketplace post-purchase, as other people who see the purchased jewelry piece on its owner will believe that the jewelry is actually a genuine Van Cleef and Arpels’ article. Most circuit courts have held that post-purchase confusion does meet the “likelihood of confusion” requirement stipulated under the federal Lanham Act, which prohibits the use of a trademark in a way that could deceive or cause confusion about the origin of the product.

Van Cleef and Arpels are seeking a permanent injunction against Nice Ice Fine Jewelers that would make them stop using the Alhambra trade dress. Van Cleef and Arpels also want Nice Ice to recall and turn over any materials that violate the Alhambra trade dress and they want the company to pay damages for the alleged infringement as well attorney fees accrued by Van Cleef and Arpel as a result of the case.

A similar case…

Another recent example of one company bringing suit against another under the trademark infringement theory of post-sale confusion is the trademark suit by the Levi Strauss company against Paris luxury house, Kenzo. The product design in question is a pocket tab that Kenzo used in a new line of jeans it introduced. Levi Strauss claims that they own trademark rights in pocket-tab design and that by selling jeans with a similar pocket tab, Kenzo was infringing on those rights. Under the theory of “post-sale confusion”, Levi Strauss is attempting to show that people will be confused when they see their trademark pocket-tab on Kenzo apparel.

We will do our best to update whenever there are new developments regarding copyright and jewelry design.




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