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Magazine > Vogue and Trend > News Content

Tacori prevails in suit over copyrighted rings

1/26/2009 5:01:37 PM

Cleveland--A U.S. District Court judge has entered a $650,000 judgment against an Ohio jewelry manufacturer accused of selling rings it purchased from overseas companies that infringe upon the copyrighted designs of Glendale, Calif.-based Tacori Enterprises.

In an order filed last week in U.S. District Court for the Northern District of Ohio, Eastern Division in Cleveland, Judge Kathleen O'Malley said that Rego Manufacturing "non-willfully" infringed on three copyrighted designs, including that of Tacori's signature "crescent silhouette" design and the "Tacori Trade Dress," which refers to the rings and other jewelry Tacori introduced after its crescent silhouette that all "incorporate the same distinctive design elements" featured in the former.

Rego did not manufacture the designs itself, but purchased the infringing rings from Beverlly Jewellery Company Ltd. of Hong Kong and Legend Jewelry Co. Ltd. (Macao Commercial Offshore), according to court documents.

According to court papers, the "Tacori Trade Dress" refers to "two essentially concentric rings, with one ring having a larger diameter than the other. Embedded between the concentric rings are at least two semi-circles or arcs which appear contiguous to each other. Contained within each semi-circle or arc is a stone. A space is created between the contiguous semi-circles or arcs."

The ruling states that Tacori's ring designs have been a hit with consumers.

"Tacori has made and continues to make a substantial investment of time, effort and expense in the design, manufacturing and marketing of its jewelry featuring the Tacori Trade Dress," the document signed by the judge says. "Tacori's jewelry featuring the Tacori Trade Dress has had outstanding commercial success. As a result, jewelers and the public recognize the Tacori Trade Dress as designating an exclusive source, thereby creating a goodwill, which inures to Tacori's benefit."

The judge ordered Rego to pay $650,000 to reimburse Tacori's attorney fees and as a "disgorgement" of Rego's profits for selling the infringing rings, court papers said. The court also ordered that Rego be permanently enjoined from distributing any more products protected by the Tacori copyright and trade dress. Included in the order was a long list of barred style numbers that are referred to as Rego, Legend and Beverlly ring styles, court documents state.

In addition, the judge ordered that "Rego shall effectuate the destruction" of any and all infringing rings in its possession, including 11 specific Rego styles and "any rings substantially similar to those ring styles," court documents state.

Rego also was ordered to provide photographic evidence and an affidavit validating the rings' destruction to Tacori within 30 days of the court order.

The settlement follows a summary judgment issued by O'Malley against Rego.

Rego President Ken Kincaid had no comment on the judge's decision in the case, except to say that his company was importing the designs without knowledge that they were copyrighted.

Tacori's designs are carried in more than 500 retail partner stores across North America and, according to the company's press release, its aggressive manner of protecting the brand's signature designs also protects Tacori's retail partners.

"Tacori is committed to supporting our authorized Tacori retailers who legitimately carry Tacori designs, and we want to protect their investment in Tacori," Tacori Director of Marketing Paul Tacorian said in a press release. "The only people who should benefit from the Tacori name and our unique and original designs are my retailers and Tacori."

This is the second time in recent years that Tacori has won a copyright case. In a similar case last year, a U.S. District Court Judge in California approved a settlement after Tacori accused a different company of infringing upon its copyright and trade dress rights, the company says.

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