Miami--Merit Diamond Corp. has notched another legal victory protecting the intellectual property rights of its Sirena Collection.

In December, the Florida-based jewelry manufacturer filed a complaint against Sears, Roebuck & Co., Sears Holdings Management Corp., Sears Brands LLC, Kmart Operations LLC and Kmart Corp. in the U.S. District Court for the Southern District of Florida for “willful violation” of its copyright and trade dress rights related to the Sirena brand.

The company alleged that in November, one of its employees spotted a necklace similar to Merit’s Solitaire design, which was copyrighted in 2002, in a Sears store in Florida.

The same pendant also was later seen on both the Sears and Kmart websites, priced as low as $29.99, court papers state.

20161228 Merit necklaces copyThis picture supplied by Merit Diamond Corp. shows the pendant that a company employee purchased at a Sears store in between two “Solitaire” necklaces made by Merit. (Merit added the text to the photo.)  
Sears was once a Merit customer, selling the Sirena Collection and Solitaire design from 2003 until 2011.

Merit argued that the retailer knew about its copyright and trade dress but chose to copy the design anyway for financial gain, selling infringing necklaces at stores across the country.

On March 30, the defendants offered to allow entry of judgment to be taken against them in regards to the complaints, and Merit agreed.

The court issued a judgment in Merit’s favor April 13, ordering Sears to pay the company $90,000, which it already has done, and “further agree that any manufacture, distribution, and sale of the item claimed to be infringing by the plaintiff has stopped and will not be hereinafter recommenced,” court papers state.

After the judgement, Merit issued the following statement: “Merit Diamond Corporation has once again enforced its valuable intellectual property rights in its famous Sirena Collection in federal court in Miami, Florida. Merit successfully sued defendants Sears, Roebuck & Co., Sears Holdings Management Corporation, Sears Brands LLC, Kmart Operations LLC, Kmart Corporation, iStar Jewelry LLC, Yelnats Inc., and Stanley Creations Inc. for copyright and trade dress infringement due to their sale and manufacture of knockoff goods.”

Sears declined to comment on the judgment. 

This isn’t the first time Merit has gone to court with claims that a company was knocking off the designs in its Sirena collection--it sued Samuels Jewelers Inc. in 2009 over Sirena, as well as SK Diamonds Inc. in 2011 and Sterling Jewelers Inc. in 2012.

A judge awarded Merit $7,500 in damages in the case involving SK Diamonds and prohibited the latter from making pendants that closely resembled Sirena pieces.

The Samuels and Sterling Jewelers lawsuits also were settled, though details of those settlements weren’t released.

Editor’s Note: This story was updated May 19 to reflect a response from Sears Holdings.

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