## Facts

- Yurman Design, Inc., a New York jewelry company, sold jewelry associated with a “twisted cable” aesthetic under the DAVID YURMAN brand.
- PAJ, Inc., a Dallas-based jewelry company, entered the cable-jewelry market in 1998 and sold multiple pieces that Yurman claimed copied Yurman’s designs.
- Yurman sent PAJ a cease-and-desist letter concerning PAJ’s use of twisted, multi-strand cable with gemstones and related design elements; Yurman sued after PAJ did not respond by the stated deadline.
- Yurman asserted copyright infringement based on five registered jewelry designs (bracelets/earrings), alleging PAJ’s corresponding pieces were substantially similar.
- Yurman also asserted a Lanham Act § 43(a) trade dress claim, alleging a single protectable trade dress for an entire “cable” product line derived from 18 Yurman pieces, and alleging that 21 PAJ pieces infringed it.
- Yurman brought a New York unfair-competition claim based on the same alleged trade dress and alleged bad-faith copying and actual confusion.
- After a jury trial, Yurman prevailed on copyright, trade dress, and unfair competition; the district court denied PAJ’s JMOL motion, entered injunctive and monetary relief, denied Lanham Act attorneys’ fees, and vacated punitive damages.
- PAJ appealed the liability findings and relief; Yurman cross-appealed the denial of fees and the vacatur of punitive damages.

## Issues

1. Whether the evidence supported copyright liability by showing copying of protectable expression in Yurman’s registered jewelry designs, rather than only unprotectable ideas, concepts, or functional elements.
2. Whether Yurman proved a protectable product-design trade dress for its “cable” line by adequately defining discrete, nonfunctional features and showing distinctiveness, and whether the jury was properly instructed on those requirements.
3. Whether Yurman could recover for New York unfair competition where the theory was coextensive with the asserted trade dress.
4. Whether attorneys’ fees under the Lanham Act or punitive damages under state law were available if trade dress and unfair competition liability did not stand.

## Decision

- The Second Circuit affirmed the judgment for Yurman on copyright infringement.
- The court reversed the judgment for Yurman on the Lanham Act trade dress claim.
- The court reversed the judgment for Yurman on the New York unfair-competition claim.
- Yurman’s cross-appeal seeking Lanham Act attorneys’ fees and reinstatement of punitive damages was dismissed as moot.
- Disposition: affirmed in part, reversed in part, and cross-appeal dismissed as moot.

## Legal Principles

- Copyright protects an author’s particular expression, not ideas, concepts, or functional features; unprotectable elements may still be protected when combined in an original expressive arrangement.
- Substantial similarity may be found where the accused work appropriates the protected overall expressive look of a specific copyrighted design, even if it employs common design components.
- Product-design trade dress under Lanham Act § 43(a) requires: (1) nonfunctionality, (2) distinctiveness (generally through secondary meaning for product design), and (3) a clearly articulated, concrete set of design elements.
- A plaintiff must define the claimed product-design trade dress with specificity; an abstract “overall look,” an unbounded list of features, or a claim framed at a high level of generality is insufficient.
- Trade dress law cannot be used to secure patent-like control over a generalized style or design concept; protecting a broad “type of appearance” risks monopolizing competitive design territory.
- When a state unfair-competition claim is based on the same unprotectable trade dress theory, it fails with the Lanham Act claim absent an independent basis for liability.

## Conclusion

The court sustained liability for copying protectable expressive aspects of specific jewelry designs under copyright law, but rejected efforts to treat a loosely described “cable jewelry” aesthetic across a product line as protectable trade dress, reversing both the Lanham Act and parallel state unfair-competition judgments and rendering the cross-appeal for fees and punitive damages moot.


Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001)