When art and function meet, sparks fly - especially in the world of jewellery design. The product of history, culture, function and form, jewellery may be protected by a layer of rights to treasure. Jewellery designers Pyrrha Design Inc. were depending on this protection when they took action against retailer 623735 Saskatchewan Ltd.1 for selling jewellery designs identical to their own. The Statement of Claim alleged infringement of a number of jewellery designs, including a square ridged ring, rectangle ridged ring, low eight drop pendant, low 12 round ring, triple round pendant, square ridged pendant, rectangle ridged pendant, round drop earring, three square pendant and triple square pendant. Pyrrha Design Inc. argued that their designs were protected by the Copyright Act and the defendants had infringed upon those rights.
The advantage of asserting copyright is that no registration is required. However, as the defendants attested, under section 64 of the Copyright Act, protection does not extend to cover mass reproduction of a design applied to a useful article. Since the subject designs were applied to a useful article and produced in a quantity of more than fifty, the motions judge agreed that they did not qualify for protection under the Copyright Act but under the Industrial Design Act, and granted summary judgment dismissing the claim for copyright infringement.
Unlike with copyright protection, in order for a design to be protected under the Industrial Design Act, it must be registered. Pyrrha Design Inc. had not registered their designs under the Industrial Design Act, and the motions judge ruled that the jewellery could not qualify as copyrighted works because the artistic features were a part of a mass-produced useful article, and functioned as such, rather than as a separate entity.
However, the story doesn’t end with the Federal Court. Unsatisfied with the summary judgment ruling, Pyrrha Design Inc. brought their case to the Federal Court of Appeal on the basis that jewellery should not be considered useful articles, and that their designs should qualify for copyright protection. They submitted that, unlike functional clothing, jewellery did not provide warmth - it is worn for its appearance only. The appeal was allowed, and the matter sent back to the court of first instance to proceed to trial on the merits.2
Of interest, the Federal Court of Appeal found that jewellery designers are not precluded from protecting their designs under both copyright (for handcrafted, aesthetic yet functional pieces) and industrial design legislation (provided that registration is secured within one year of publication), as well as registration under the Trade-marks Act and the Patent Act. The Pyrrha decisions raise some significant issues for jewellery designers in Canada in regards to protection of their creations.
Design is a creative endeavour but, as in this case, if a design has a function other than aesthetics, or if it is mass produced, it may be considered an industrial design. However, a search of the Canadian copyrights database yields a number of protected jewellery designs. So which form of intellectual property can jewellery designers rely upon to protect their creations?
It depends on the design. New designs can be protected and registered under copyright law (where registration is optional), while three-dimensional shapes or patterns can be registered under the Trade-marks Act as trade-marks or distinguishing guises. Visual features can also qualify, if novel, for registration as Industrial Designs, and inventions can be registered under the Patent Act, if novel. When form meets function in the hands of the artisan, the opportunities for intellectual property protection are there for safekeeping.
Watches are a prime example of jewellery marrying artistry with function, and are among more than 11,000 industrial designs registered for jewellery. Rolex owns Industrial Design Registration 120451 for the visual features of the watch face below.
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Cartier International owns a number of trade-marks, including Registration No. TMA342063 for use with collar pins, cuff links, rings, earrings, bracelets, and choker necklaces, and Registration No. TMA468022, a distinguishing guise for a watch, that was registered along with an industrial design registration (No. 78957) for a similar design.
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Swatch registered a number of patents in Canada, including a watch with an embedded GPS Device (2283866), a watch with an embedded computer mouse (2316104), and a watch with two different types of digital displays (2348715). The company also registered a number of industrial designs, including watch cases (126072 & 113328) and watch faces (94477).
The World Intellectual Property Organization is currently working on a fifth category of intellectual property protection, termed Traditional Cultural Expressions (TCEs). This category will help protect cultural traditions of indigenous peoples and cultures from being copied or used without their permission. Fascinatingly, jewellery can fall into this category as well, being that many styles of jewellery are culture based designs.
Those in the jewellery business should take advantage of the range of intellectual property protection available for the many different features of a unique piece. The laws are in place to help, and legal protection ensures that one-of-a-kind designs remain that way.