Gem designer Arthur Lee Anderson has copyrighted his work. Scalloped Iris in citrine, 12.20 cts., and his Webbed Halo Cut in madeira citrine, 11.80 cts. Both these variations were done in 1997. Photo: Robert Weldon.

Original ideas in gem art are tempting not only to buyers and jewelry designers, but to copycat cutters as well - but the law is on the side of the artists.

BY SUZANNE WADE

Today's gem carvers have taken steps to legally protect themselves from imitators. Glenn Lehrer took out a utility patent on his Torus Ring Gemstones™, shown above. Ring with oval cut, 10.78p-ct. rubellite tourmaline set with .25 ct diamond in 18K yellow gold © Lee-Carraher.

From a rough crystal comes a work of art, thanks to the intervention of a gem cutter who may have spent years developing the techniques and design elements that brought the stone's inner beauty to light.

Now that his or her creativity has taken tangible form, though, the cutter faces the danger that others will not be content with simply admiring his work - they may attempt to copy it. When such copying is limited to an enthusiastic hobbyist attempting to figure out how the artist achieved such beauty, the damage is minimal - some artists even consider such efforts flattering. But when someone adopts the same style and technique in order to sell their gemstones, copying is both artistically devastating and a threat to the original cutter's ability to make a living.

“I know that I've lost well over $100,000 worth of business to one person who has knocked off [my designs] for years,” comments Fredericksburg, Virginia, gem artist Arthur Anderson. “One time I walked into a [trade] show and in the lobby they had a poster of one of my cuts - except I hadn't done it. It is the most violating feeling I can describe. Emotionally, it cuts deep when someone steals your work.”

Traditionally, gem cutters have relied on trade secrets to keep others from copying - in other words, they didn't tell anyone how they accomplished those works of art. Increasingly, though, gem artists are turning to other, more concrete sources of legal protection as knock-off artists become more and more successful at reverse-engineering new gem designs.

“I've seen things masterfully created in the United States, only to see [knock-offs] coming from offshore,” says cutter Glenn Lehrer, of Larkspur, California. “It takes time to perfect [a design] and get it into production - up to five years of research and development. So the question is; how do you protect yourself?”

Fortunately, there are several ways to protect gem art: U.S. copyright and patent law provides the same protection for new and creative gem cuts and carvings as it does for jewelry designs. Like jewelry designers, gem artists can copyright a design, apply for a design or utility patent, or seek trademark or trade dress protection. So . . . what exactly are these forms of protection, and which one is most appropriate?

COPYRIGHT. Copyright actually exists from the moment the work takes physical form - in the case of gem art, that means from the moment the gem is cut. This protection applies even if the work is not labeled as copyrighted, with a “©” and the year. “One important thing to recognize is that copyrights exist as soon as [the design] is put in a tangible form of expression,” says Susan Olive, a partner in the intellectual property firm of Olive & Olive in Durham, North Carolina. “No one is entitled to copy someone else's work.”

Copyright protection for the gem design also remains valid even if the piece is incorporated into another copyrighted work, such as a jewelry design, or if it is replicated in a different gem material. “If a design is protected, it's protected, even if it's in different materials,” says Leonard DuBoff, the author of several books on law for artists and a partner with the Portland, Oregon, intellectual property law firm of DuBoff, Dorband, Cushing & King. “[Changing the color] doesn't change [the copyrighted design] significantly enough to avoid copyright protection.”

Although gem art is legally protected from the instant of creation, most intellectual property attorneys recommend that the copyright be formally registered with the U.S. Copyright Office to ensure that the artist has access to all the remedies provided by law if the day comes when the copyright must be defended. This includes court awards covering attorneys' fees and access to statutory damages ranging from $500 to $20,000, rather than being limited to provable financial damage.

Fortunately, registering a copyright with the copyright office is fairly simple and inexpensive. Filing fees are just $30 per design, and the two-page form is simple enough that it can easily be filled out without the help of an attorney. The forms themselves are just a click away on the copyright office Web site at www.loc.gov/copyright, or by calling the office's 24-hour hotline at (202) 707-9100.

According to lawyers and artists, the copyright office usually recognizes gem art as a legitimate artistic endeavor quite readily, although many recommend describing the work in a way a bureaucrat can understand, such as “gemstone sculpture” or “gem design.”

“[The Copyright Office] is usually very cooperative and very user friendly, so they usually ask for clarification [if they don't understand what's on the application]. They won't reject it out of hand unless it's patently obvious it doesn't qualify for copyright,” says DuBoff. “[What you call something] depends on whether you like interacting with bureaucrats. If you put down 'gem art,' you're likely to interact with a bureaucrat. If you prefer a quieter day, put down 'stone sculpture' [or something similar].”

Southfield, Michigan, gem cutter Sherris Cottier Shank says she has had no problem having her work recognized by the copyright office. She normally describes her carved gem designs as “lapidary art,” although she adds the word “jewelry” in parentheses for good measure, since “most people have no idea what lapidary is, including the copyright office,” she says.

But although the copyright office seems to have little trouble recognizing gem sculpture as a copyrightable artistic endeavor, the reality is that not all gem designs are copyrightable. A simple geometric shape or a new facet arrangement, for example, may be not be thought to demonstrate the requisite creativity and originality to qualify for copyright protection.

In addition, copyright protects only decorative items, not functional ones. “Copyrighted [designs] cannot have anything functional. It must be aesthetic [only],” says DuBoff. As an example, he cites a lapidary artist who made stone knife handles, whose copyright application was rejected. “It was [considered] a functional piece, not a creative work of art, at least in the eyes of the court,” says DuBoff.

Copyrights can also be the most difficult form of legal protection to enforce, says Olive. “Even if they're registered, you have to prove that the person imitated yours,” she observes. “If they didn't see yours and happened to come up with the same design on their own,” she explains, they did not violate your copyright.

Glenn Lehrer's 15.24-ct. round tanzanite © Lee-Carraher.

PATENTS. Although copyright is the legal protection most commonly sought by gem artists, it's not the only option. If a gem doesn't qualify for copyright protection, it may still be eligible for patent protection, either through design patents or utility patents.

A design patent protects the overall aesthetic appearance of the piece. These patents were created to protect the ornamental qualities of a functional piece, but since jewelry's sole function is to be decorative, there are significant overlaps between design patents and copyrights in the jewelry field, says Olive. “Gems and jewelry are useful in the sense that people use them to enhance their personal appearance, so the courts have had trouble deciding what is functional and what is non-functional in a piece of jewelry,” she observes. “I don't think they've come up with a complete consensus on how to determine function in objects whose whole purpose is to look beautiful.”

As a result, the same design might be both patentable and copyrightable - and both protections can be applied for. For most artists, however, one type of protection is adequate, and when applicable, copyright - with its lower cost and simpler application - will likely be the first choice.

Design patents are most commonly used when a design doesn't qualify for copyright protection. Because design patent protection requires only that the design be different from prior designs, even a gem design that was not deemed artistic or creative enough for copyright protection may qualify for a design patent.

An example of a patentable, but not copyrightable, design, is one based on a simple geometric shape. “[For example], if no one had ever submitted a marquise-shaped gem before, it would probably not be considered creative enough to qualify for copyright protection,” explains Jeffrey Kaden, a partner with the New York intellectual property law firm Gottlieb, Rackman & Reisman, P.C. If that shape had never before been done in a gemstone, however, it might qualify for a design patent.

Glenn Lehrer's 5.86-ct round eclipse cut sky blue sapphire, set with .65-ct. padparadscha sapphire and platinum. © Lee-Carraher.

Although this protection can be useful for gem artists whose designs do not qualify for copyright protection, the process is significantly more complex and more expensive than registering a copyright. Filing fees range from $155 to $310, and the more complex requirements for patent applications mean you will likely need both an attorney and a patent draftsman to assist you.

“I work with someone and all he does is patent drawings, because there are very specific requirements on how you prepare and present those drawings,” observes Kaden. “For a design patent, it's very important they're done well, because that's the critical part [of the application].” As a result, applying for a design patent will set you back $1,000 to $1,500 in attorneys' fees and other filing costs, he says.

Another type of patent occasionally used to protect gem designs is a utility patent. This type of patent protects the actual techniques used to produce the gem - not the gem's appearance - and is awarded only when the technique itself is both innovative and non-obvious.

“If you come up with a new technique for cutting, you should evaluate patent protection, [especially] if you think you might want to allow others to use the technique, or if you could command a substantially enhanced price for your own work,” says Olive. “If you're only making a single piece and you're only going to use the technique on that one piece, a patent [isn't worth it].”

Glenn Lehrer sought a utility patent on his method for creating Torus Ring Cut gemstones (see “Circle of Light,” May 2000), arguing that his combination of cutting techniques represented a new and unique approach to gemstone cutting. The patent office agreed, awarding him Patent No. 5,722,261.

Lehrer's patent is a rare example of a gem-cutting technique receiving a utility patent, however. Of the more than five million patents on file with the U.S. Patent and Trademark Office, only a couple dozen relate to gem cutting.

The reason for the scarcity of gem cut utility patents is a combination of the high standard of “innovative and non-obvious” and the high cost of obtaining a patent. Basic filing fees start at $345, and the complex regulations that govern patent applications mean you will almost certainly need a lawyer to assist you. As a result, it's not uncommon to run up bills of $5,000 to $10,000 when applying for a patent, says Lehrer, depending on how much of the preliminary work you can do yourself.

Glenn Lehrer's 1.60-ct. marquise-cut golden yellow sapphire. Photo: © Lee-Carraher.

In his case, though, Lehrer felt a utility patent would best protect the time and money he'd invested. “I think this [cutting technique] is retro-designable, and I know the cutting can be computer numerically controlled for automatic production - I had designed the cut for this purpose,” says Lehrer. “I was in negotiations with a large manufacturer/distributor and if [production] turned into 10,000 units per year, a patent was absolutely necessary because a patent would give me the right to claim a percentage on this production.”

 

FURTHER READING: For more information regarding copyrights, trademarks, and patents, try the following Patent It Yourself, by David Pressman, published by Nolo Press. Even if you plan to hire a patent attorney to assist you, this book will help you understand the process better, and can even help you tackle some parts of the process yourself to reduce your legal fees. Buy Patent It Yourself from Barnes & Noble. www.loc.gov/copyright, the U.S. Copyright Office Web site, includes downloadable copyright application forms, as well as instructions for filing for copyright registration and answers to frequently asked questions. www.uspto.gov, the U.S. Patent and Trademark Office Web site, includes searchable databases, downloadable application forms, fee information, and a wealth of general information on patents and trademarks. What's a Copyright/Trademark/Patent?, from New York Intellectual property law firm of Gottlieb, Rackman & Reisman, P.C. Available free by faxing the law firm at (212) 684-3999. Patents, Copyrights, Trademarks, and Trade Secrets: A Primer for Business Executives, Entrepreneurs, and Research Administrators, from Durham, North Carolina intellectual property law firm of Olive & Olive. This introductory pamphlet is available on the firm's Web site at www.oliveandolive.com. The Law (in Plain English) for Crafts, by Leonard DuBoff. In addition to step-by-step information on trademarks and copyrights, the book covers other areas of business law such as contracts and consignment. DuBoff's other books include The Desk Book of Art Law, The Art Business Encyclopedia, The Craft Business Encyclopedia, and Art Law in a Nutshell. Buy The Law (in Plain English) for Crafts at Barnes & Noble. “Design Right” by Annie Ross, Lapidary Journal, April 1997. Although this article primarily addressed jewelry design, most of the information regarding copyright protection also applies to gem art. Contact LapidaryJournal@primediasi.com or call 610-964-6300 about reprint information.

TRADEMARKS AND TRADE DRESS. Another form of protection that can be sought for gem designs is trademark and trade dress protection. A trademark is used to identify something as originating from a particular creator, while trade dress refers to a distinctive style recognized as belonging to a particular designer.

“If the style itself is identifiable and has a distinctive 'look and feel,' it's likely protectable as trade dress,” says DuBoff. “And trade dress is potentially good forever - you can continue to renew every 10 years.”

Trade dress can be established in two ways: either in the event of infringement by conducting surveys showing that the “look and feel” is associated with that particular artist in the minds of consumers, or in advance, by registering with the U.S. Patent and Trademark Office, just as you would a trademark. Although the first method has the advantage of requiring no action on the part of the artist until he or she decides to bring suit against an infringer, the research required by recent court decisions is extensive and could be prohibitively expensive. Pre-registration requires an up-front expenditure, but makes a court case easier to prove.

Artists may also want to consider trademarking the unique names and terms they use to describe their gemstones. For example, Cottier Shank has sought trademark protection for the name she gave her line of gem carvings, GemScapes. “When I started, everyone told me what a great name it was, so I decided to register it as a trademark,” she says. “I wanted to prevent other people from using it. So I hired a trademark attorney, and she did the paperwork. It cost some money, but it really wasn't difficult.” She has successfully defended her trademark on several occasions.

ENFORCEMENT. Unfortunately, although there are many types of legal protection available for gem art, asserting your rights can be much more difficult than establishing them in the first place. “The sad reality of all this is that the cost of enforcing a copyright is thousands of dollars,” says Anderson. “I've had incidences where people outright violated my copyright, and I've showed it to lawyers. They've assured me I would win the case, but they won't take it on spec, so unless you're being knocked off by a large manufacturer or someone who has wherewithal, it's not feasible to go after individual violations. Even if you win, then you have to collect.”

“I've talked to so many people - personal attorneys and business attorneys and others on the international scene - and they all say the same thing: once you put it out there in public and publish it, it's just like music - anyone else can grab it,” says Michael Dyber. “I don't think there are many of us in the lapidary field that have the financial wherewithal to go after someone in this country, and certainly not someone in a foreign land.” As a result, many gem artists choose not to pursue copyright registration or other legal protection for their work. “To be honest, the best way I've found to stay ahead of the copyists is to just stay more innovative than the next guy,” says Dyber. “It just isn't worth the effort [to defend my copyrights]. The only one who is going to win on [my] type of small production of one-of-a-kind pieces is the attorney.”

Cottier Shank has registered copyrights on her limited-production gem designs, while leaving one-of-a-kind gem designs unregistered. “I produce hundreds of one-of-a-kind designs a year, and for me to copyright every single design would be financially prohibitive and take a lot of time,” she says. “But the production lines are something that could possibly go overseas [to be copied cheaply], so I have to take whatever steps I can [to protect them].”

For other artists, seeking legal protection at least offers the hope of keeping the profits from their creative efforts from falling into someone else's pocket. “If I don't patent [my techniques], how can I protect myself?” asks Lehrer. “It's a major dilemma. Either you have to be very secretive, or you have to make a lot of noise.”

In the end, flawed though copyright and patent protection may be, it's also the only real way an artist has to protect his or her creative efforts. “When it comes right down to it, bigger companies have you outgunned in terms of finances and professional help,” observes Cottier Shank. “You can only take the steps you can take and hope for the best - but if you do the paperwork, at least then you can get the lawyers on your side.”

And at the very least, registering a copyright or trademark or seeking a patent puts copycats on notice that the gem design is your original work, and they must have your permission before replicating it. “People used to be under the impression that once [a gem design] was published and out there, it becomes public domain. That is not true,” says Anderson. “A person never loses the rights to their original designs even if it's published a thousand times, along with instructions on how to do it. The only way you can lose [your rights] is to give in writing direct permission to do your designs.”