Related Practices
Duane Morris Designs Winning Defense for Tiffany & Co.
Working independently in a particular genre, individual artists sometimes arrive at remarkably similar creations. But when an independent jewelry designer accused one of America's renowned institutions of fine jewelry of copying his designs, art critics alone could not resolve the dispute. Tiffany & Co. needed legal artisans, and asked Duane Morris to defend it in a $45 million copyright infringement lawsuit.
Designer Paul Morelli claimed that Tiffany & Co. had stolen his design for a jewelry line with flush-set diamonds. For more than a century, Tiffany helped define American luxury and sophistication. Never before had Tiffany's creative integrity been so maligned. If the plaintiff prevailed, Tiffany would have to suspend sales of its Etoile collection, one of Tiffany's most successful collections with $30 million in annual sales. Further, Tiffany would face a second trial to determine punitive damages if the copyright infringement had been willful. The consequences of liability could have been devastating for the venerable jeweler.
Tiffany representatives believed the plaintiff's claims were completely unfounded. In anticipation of the lawsuit, Morelli attempted to register several pieces of his jewelry with the U.S. Copyright Office, which rejected them for a lack of distinguishing creativity that would warrant registration. However, the Copyright Office's findings alone did not doom Morelli's case. The plaintiff hoped to win a jury decision on the requisite creativity for copyrightability to render the Copyright Office's refusal to register his designs irrelevant.
In the trial, Duane Morris partner Scott Kramer, along with attorneys Dana Ash and Anthony Gallia, provided evidence that Tiffany & Co. had developed the designs for the Etoile collection without any external influence. The team produced a timeline that revealed Tiffany & Co. had similar designs in its archives and was even selling a ring, one which Morelli later claimed as his design, well before Tiffany representatives and Morelli came in contact with one another. One of the keys to the defense centered on Kramer's assertion that the basic forms and patterns used by both parties were part of the common vocabulary in jewelry design and could not be copyrighted. This argument was further bolstered when the Copyright Office was persuaded to intervene in the case. The Justice Department sent an attorney to court to reaffirm the Copyright Office's decision in refusing to register Morelli's pieces.
At the conclusion of the two week federal trial, the jury found that Tiffany & Co. had not infringed upon Morelli's designs, and that his designs were not copyrightable. Several months later, the plaintiff's motion for a retrial was also denied, providing a resounding and conclusive victory for Tiffany & Co. and Duane Morris.
The lawsuit itself helped clarify significant issues for individuals and businesses in the arts and other creative industries concerning how creativity and originality are defined under the copyright laws. But perhaps most important to our client, the successful defense kept Tiffany & Co.'s sparkling reputation untarnished.
"When our reputation for integrity in product design was questioned, we sought Duane Morris' assistance." - Patrick B. Dorsey, Senior Vice President, Secretary & General Counsel, Tiffany & Co.