Skip to main content

Diamonds are forever, and so are the court cases about them

Diamonds are Forever, and so are the court cases about them


As the Tiffany & Co v Costco trademark/counterfeit case enters its 8th year of litigation, one thing is becoming obvious, that it isn’t going to stop any time soon. 

On one side, a 183-year old company arguing that its branding has not fallen into common usage, a death knell in terms of copyright protection and on the other a warehouse company arguably most famous for the fantastic and affordable food court.


But what is this all about?


Sometime in 2013, Costco begun selling diamond rings, with a setting (how the gem is held on the ring) labelled ‘Tiffany’, a reference to the very famous way that Tiffany & Co had been setting their diamond rings. In response, Tiffany & Co commenced counterfeit proceedings against Costco on Valentine’s Day that year. Costco immediately pulled the diamond rings, crushing the dreams of those who wished to buy an engagement ring, three toasters and a 10-pack of shampoo all in the same store

What are the arguments?


Costco is arguing that Tiffany” has become a generic term and, citing a century of documents, was widely understood to describe a type of pronged diamond setting.

Tiffany & Co is arguing that it is not a generic term and that there was a chance that people may assume that the ring they were buying at Costco was, in fact, a Tiffany & Co ring and that Costco was, therefore ‘passing off’ the rings as Tiffany & Co goods. An estimated 3,349 customers bought Tiffany-set rings at Costco during the relevant period, court papers show.

What happens when a brand name becomes generic?


Generic usage is when a brand name for a business becomes so synonymous with the product itself that the general public refers to that product as the brand instead. Think about last time you asked someone to pass you a ‘facial tissue’ or used a ‘hook-and-loop fastener’ on a jacket or thrown empty facial tissue boxes and broken jackets into a movable waste container, more than likely you would have used terms such as ‘Kleenex’, ‘Velcro’ or ‘Dumpster’ instead. This is where the problem is, all of these are brands are trademarked however if you become so successful that people refer to your product as your brand, then this allows others to use that brand in their advertising to ensure that people know what they are selling. 

To prevent this from happening there is a movement in brands to use their name as an adjective, if you see a box of ‘Kleenex’ the words ‘brand tissues’ will appear next to their logo, if you make a copy at a Xerox machine, you will see the words Xerox Copier in bold writing. Interestingly enough, the brand Rollerblade is also running a similar campaign, just in case the 1980s have another rebirth, and we all need to defeat the school bully in a rollerblading race around ‘Devil’s Backbone’ (Airborne reference for those interested). 


So, what happened in the Tiffany & Co v Costco case?


The Judge determined that merely using the word Tiffany wasn’t enough to constitute counterfeit passing off as consumer have a reasonable level of intelligence when buying products, and they would be aware that it was not, in fact, an actual Tiffany & Co ring.
 
The Court also took into consideration the significant amount of evidence that Costco had supplied regarding the common usage of the term ‘Tiffany’ when referencing the setting of stones in rings. The Court determined that a reasonable jury would find that Costco did not act in bad faith in this case and was merely communicating with its consumers the most easily identifiable terminology to describe the product
By doing so, the Court overturned the previous $21 million damages order against Costco as it found that a reasonable jury would not find this way again. The Court then remanded the case for trial again.

Neither party has shown a willingness to lay down over this case, and it seems it will continue in perpetuity.

Comments

Popular posts from this blog

Green Eggs and Hamm

Green Eggs and Hamm

How a crotch shot of John Hamm and Dr Seuss have sparked the most intense debate on fair use dealing in copyright in the last ten years. 
In 2013, John Hamm was in full swing, sipping cocktails and filming the wildly successful Mad Men however in years to come he may be remembered for something much more different. One uneventful day, John Hamm was photographed going commando and, thus changed how we see intellectual property rights on the internet forever. 
Like all paparazzi photos, it was promptly uploaded to the internet and licenced for use. Unbeknownst to the photographer, the image was then used in an article by the Huffington Post, titled "25 Things You Wish You Hadn't Learned In 2013 And Must Forget In 2014." The writer of the piece turned the photo into a humourous GIF with the intention of mocking people who would want to see the picture and satirising the idea that it was news at all. 
The photographer later registered the photo's copyrig…

Woman Wins Copyright Case Against Adult Film Studio Who Recorded Videos In Her House.

A recent case in the United States District Court of Massachusetts has seen a woman whose house was used as a film set for adult videos without her knowledge be awarded damages… but not for what you think.
In Bassett v Jensen, Ms Bassett, the owner of the property, signed an agreement with a renter to lease her Martha's Vineyard property for seven months for the sole use of Mr Spafford and his family. Spafford had moved to Martha's Vineyard to work as a photographer and cameraman for an adult film director. Throughout the lease, Ms Bassett claims that 21 different videos were filmed at her property. Following the end of the Lease, Ms Bassett had to stop renting out the property as there was significant damage caused to the building and later due to the publicity that the property was used in filming the videos.
Ms Bassett then argued that not only did the video showcase her property but they had infringed her copyright on numerous of her self-made artworks which were hanging in…

NEVER Read the Comments!

The Federal Court this week delivered their judgement on Australian Competition and Consumer Commission v Service Seeking Pty Ltd [2020] FCA 1040 going all out by handing out whopping fines, legal costs orders and ordering Service Seeking Pty Ltd to establish a, undoubtedly expensive, compliance system to be monitored by the Australian Competition and Consumer Commission (ACCC). 
What did they do that was so bad? According to the Federal Court of Australia, they created a system in which businesses could write their own customer reviews. With a rating system less defined than what constitutes a 5-star rating in an Uber trip, businesses could write a review, assign a star rating and send it off to their customer for approval. If the customer didn’t respond or even open the email containing the review, then the review was automatically published online after a set period. By estimates of the Court, approximately 80% of the reviews published on the website for the period that this scheme …