MajorsOct 29, 2020
LVMH Snags Tiffany at Lower PriceMajorsMar 24, 2021
The Tiffany v. Costco Battle Wages On
Now returned to a lower court, the jeweler and the big-box retailer are locking horns over damages and Tiffany’s right to a jury trial.
Tiffany and Costco’s fight over the term “Tiffany Setting” continues, with the two battling it out over punitive damages and a jury trial. (Photo ® Tiffany & Co.)
New York—The battle wages on between Tiffany and Costco in what is a formative case for the jewelry industry regarding the use of the term “Tiffany setting.”
Tiffany & Co. first took Costco Wholesale Corp. to court in 2013, suing the big-box retailer in New York federal court for trademark infringement, counterfeiting and unfair business practices for selling rings in its stores labeled as “Tiffany” that were not made by Tiffany.
Costco filed a countersuit, claiming the term “Tiffany setting” had become genericized and could be used by any company to describe a ring with multiple, slender prongs holding a single stone. It asked the court to invalidate any federal trademark registrations that would prevent other retailers from using the term “Tiffany setting.”
A federal judge ruled in Tiffany’s favor in 2015, granting the jeweler’s motion for summary judgment (a judgment entered by the court without a full trial) in the case.
A jury decided on damages, ordering Costco to pay Tiffany $5.5 million for unlawful profits ($3.7 million in direct profits and $1.8 million for additional benefits derived from the ring sales) and $8.25 million in punitive damages.
The judge trebled the $3.7 million to $11 million, bringing the total amount Costco was to pay Tiffany to $21 million.
Last August, however, the Second Circuit Court of Appeals vacated the summary judgment on appeal from Costco.
The judges ruled unanimously that if a jury had heard the case, “reasonable” jurors could find Costco’s use of the word “Tiffany” wasn’t likely to confuse customers or make them think Tiffany had produced or endorsed the rings.
The appeals court sent the case back to the district court, where Tiffany and Costco are now at odds over punitive damages and the issue of a jury.
Related stories will be right here …
Tiffany & Co. first took Costco Wholesale Corp. to court in 2013, suing the big-box retailer in New York federal court for trademark infringement, counterfeiting and unfair business practices for selling rings in its stores labeled as “Tiffany” that were not made by Tiffany.
Costco filed a countersuit, claiming the term “Tiffany setting” had become genericized and could be used by any company to describe a ring with multiple, slender prongs holding a single stone. It asked the court to invalidate any federal trademark registrations that would prevent other retailers from using the term “Tiffany setting.”
A federal judge ruled in Tiffany’s favor in 2015, granting the jeweler’s motion for summary judgment (a judgment entered by the court without a full trial) in the case.
A jury decided on damages, ordering Costco to pay Tiffany $5.5 million for unlawful profits ($3.7 million in direct profits and $1.8 million for additional benefits derived from the ring sales) and $8.25 million in punitive damages.
The judge trebled the $3.7 million to $11 million, bringing the total amount Costco was to pay Tiffany to $21 million.
Last August, however, the Second Circuit Court of Appeals vacated the summary judgment on appeal from Costco.
The judges ruled unanimously that if a jury had heard the case, “reasonable” jurors could find Costco’s use of the word “Tiffany” wasn’t likely to confuse customers or make them think Tiffany had produced or endorsed the rings.
The appeals court sent the case back to the district court, where Tiffany and Costco are now at odds over punitive damages and the issue of a jury.
On Feb. 12, Costco filed a motion in limine seeking to prevent a jury trial in the case and blocking Tiffany from seeking punitive damages on grounds the jeweler needs to prove lost profits (which it is not seeking in the case) before it can ask for punitive damages.
Tiffany fired back earlier this month, arguing the district court has ruled multiple times—a total of six before this, in fact—that punitive damages are available to it under New York law and that “nothing material” has changed about the case since those prior rulings.
The court also previously determined that Tiffany is entitled to a jury and, the jeweler argued in its March 12 memo opposing the motion, one is needed to determine damages in the case.
The now LVMH-owned jeweler also pointed out Costco itself asked for the case to be presented to a jury when it filed its appeal.
Tiffany fired back earlier this month, arguing the district court has ruled multiple times—a total of six before this, in fact—that punitive damages are available to it under New York law and that “nothing material” has changed about the case since those prior rulings.
The court also previously determined that Tiffany is entitled to a jury and, the jeweler argued in its March 12 memo opposing the motion, one is needed to determine damages in the case.
The now LVMH-owned jeweler also pointed out Costco itself asked for the case to be presented to a jury when it filed its appeal.
When, or if, another trial might take place remains unclear.
According to a joint status report filed March 12, Tiffany will not consent to a virtual trial, but said it could be ready for an in-person trial by July, if one can be held safely by then.
Court papers also indicate a settlement is not out of the question.
The two parties had a settlement discussion prior to the case going to trial in 2016 and have had additional discussions since the ruling on the appeal. Those discussions are continuing.
Tiffany v. Costco is filed in U.S. District Court for the Southern District of New York.
According to a joint status report filed March 12, Tiffany will not consent to a virtual trial, but said it could be ready for an in-person trial by July, if one can be held safely by then.
Court papers also indicate a settlement is not out of the question.
The two parties had a settlement discussion prior to the case going to trial in 2016 and have had additional discussions since the ruling on the appeal. Those discussions are continuing.
Tiffany v. Costco is filed in U.S. District Court for the Southern District of New York.
More on Majors
The Latest
ColumnistsJan 21, 2025
Peter Smith: Sales Training’s Dirty Little SecretPeter Smith pulls back the curtain on the often misinterpreted, and sometimes maligned, world of sales training.
TrendsJan 21, 2025
Amanda’s Style File: Decadent Mocha MoussePantone’s 2025 Color of the Year takes the form of jewelry through gemstones and enamel that look just as delicious as mocha mousse.
Policies & IssuesJan 21, 2025
These Designers and Retailers Are Raising Money for LA Wildfire Relief From raffles to auctions to donations, the industry is working to aid charities in Los Angeles amid the raging wildfires.
Brought to you by
3 New Year’s Resolutions for Jewelry Lovers The new year feels like a clean slate, inspiring reflection, hope, and the motivation to become better versions of ourselves.
SourcingJan 21, 2025
Diamonds Do Good Adds 2 Board MembersJulia Hackman Chafé and Monica Elias have joined the organization’s board of directors.
Weekly QuizJan 16, 2025
This Week’s QuizTest your jewelry news knowledge by answering these questions.
FinancialsJan 17, 2025
Richemont’s Jewelry Sales Rise 14% in Holiday QuarterThe company, which owns Cartier and Van Cleef & Arpels, had a record Q3, with sales topping $6 billion.
CollectionsJan 17, 2025
Piece of the Week: Picchiotti’s Transformable ‘Classic Blue and Green’ NecklaceThe necklace features a sapphire drop weighing more than 9 carats that detaches to transform into a ring.
Brought to you by
A Diamond Is Forever Celebrates "Forever Present" Holiday CampaignA Diamond is Forever hosted a holiday celebration in honor of their new marketing campaign, ‘Forever Present.’
IndependentsJan 16, 2025
Lux Bond & Green to Open Sixth LocationThe 127-year-old jeweler is planning to open a new store in Mystic, Connecticut.
WatchesJan 16, 2025
Timex Launches Collection of National Park WatchesThe watches’ dials feature artwork celebrating the vibrant energy and unique landscapes of six of America’s national parks.
AuctionsJan 16, 2025
Elizabeth Taylor’s Diamond Line Bracelet Going up for Auction Offered by U.K. auction house Woolley & Wallis, the yellow diamond bracelet was a gift from Taylor’s good friend Michael Jackson.
Events & AwardsJan 16, 2025
JCK Las Vegas 2025 Open for RegistrationThe jewelry trade show returns to The Venetian Expo and The Venetian Resort in Las Vegas from June 6 to 9.
EditorsJan 15, 2025
The Jewelry I’d Bid On in Christie’s Iris Apfel AuctionAssociate Editor Natalie Francisco highlights her favorite fashion jewelry pieces from the upcoming “Unapologetically Iris” auction.
Policies & IssuesJan 15, 2025
JVC Debuts Guide to Americans with Disabilities Act ComplianceThe online guide is available for free and written with the jewelry industry in mind.
Events & AwardsJan 15, 2025
Jose Hess Design Awards Open for SubmissionsThe awards honor the late Jose Hess, a founding member of AJDC and an award-winning jewelry designer.
GradingJan 14, 2025
GIA CEO, President Susan Jacques to Retire at the End of 2025The grading lab said the search for her successor is underway.
ColumnistsJan 14, 2025
Jules Kim: Building Bridges Between Creators and IndustryIn this special op-ed, designer Jules Kim calls on big brands to collaborate with independent creators instead of copying their designs.
GradingJan 14, 2025
Former SSEF Director Henry A. Hänni DiesA pioneering figure in gemology, he is remembered for his spirit of generosity, curiosity, and joy.
FinancialsJan 14, 2025
Signet Jewelers Lowers Q4 Guidance After Holiday Sales Fall ShortThe peak selling days leading up to Christmas did not meet the jewelry retailer’s expectations.
MajorsJan 14, 2025
Edouard Schneider Joins Messika as Chief Brand OfficerSchneider brings over 20 years of luxury and fashion industry experience to his role as a key member of the brand’s global leadership team.
SourcingJan 13, 2025
Zambia Reinstates 15% Export Duty on Precious Gemstones, Shocking GemfieldsGemfields said the Zambian government revoked the 2019 suspension of the tax with no warning.
TechnologyJan 13, 2025
Ultrahuman Unveils Luxury Smart RingWith versions in 18-karat gold and platinum, the wearables company is blending health technology and fine jewelry.
Policies & IssuesJan 13, 2025
Brandee Dallow Elected President of Ethical MetalsmithsThe executive brings more than two decades of industry experience to the role.
IndependentsJan 13, 2025
The Seven Pops Up in Palm BeachThe New York City-based retailer is bringing its curation of jewels to a pop-up shop at Love Binetti in Palm Beach, Florida.
Policies & IssuesJan 10, 2025
Jewelers Relief Fund Reopened to Aid Victims of LA Fires Created by JA and DCA, the fund is collecting money for jewelry businesses damaged by the wildfires in Los Angeles County.
TrendsJan 10, 2025
Piece of the Week: Elsa Jin’s ‘Mozi’ BroochAdrien Brody received his first Golden Globe while wearing the “Mozi” brooch, which depicts a spill of traditional Chinese calligraphy ink.
SourcingJan 10, 2025
De Beers, GJEPC Partner to Promote Natural DiamondsThe pair will work together to support independent retailers in India with marketing assets, training materials, and other tools.
