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Jasmine Yu is an IPilogue Writer and a 1L JD Candidate at the University of Toronto Faculty of Law.

All that glitters is not gold, but trade secrets in the sparkling world of luxury jewellery might just be worth the gold and diamonds they sell. On February 28, French luxury jeweller Cartier its competitor, Tiffany & Co. (“Tiffany”), for stealing trade secrets related to its from a former Cartier employee, Megan Marino.

Cartier’s Claims

Tiffany’s high jewelry unit was in the midst of a restructuring following several resignations. Cartier claims that their competitor’s management used “quick money and title advancement” to lure Marino away in December 2021. Further, Cartier also asserts that immediately upon hiring her, Tiffany’s President for the Americas met with Marino for the express purpose of obtaining information about Cartier. This act disregarded Marino’s confidentiality and non-solicitation contractual obligations to Cartier.

Marino, ��a named co-defendant, started working at Cartier in August 2013, and most recently served as Assistant Manager for Merchandising, Jewelry. Cartier claims that upon her hiring at Tiffany in December 2021, Marino forwarded files containing “sensitive and valuable information” related to Cartier’s high jewelry business to her personal email. These files could purportedly “allow a sophisticated competitor to replicate key strategies” and to “reverse engineer how Cartier allocates, merchandises, and prices its High Jewelry stock.” Cartier claims that this was a breach of her employment agreement, as she was to return “any and all documents” containing “Confidential Information and Trade Secrets” that she obtained in connection with her employment.

The Lawsuit

In the wake of Cartier’s repeated written notices, Tiffany fired Marino for “failing to disclose her misconduct” in February 2022. The corporation did not take any action against upper-level management, who, according to Cartier, “repeatedly and knowingly solicited and received trade secrets” from Marino and tacitly approved of Marino’s breaches of her legal obligations to Cartier.

As Tiffany continues its use of Cartier’s confidential information, such as through using such information in its internal business presentations, Cartier brings this suit. Cartier is seeking injunctive relief and damages for Tiffany’s “deliberate scheming to misappropriate and convert Cartier’s highly confidential business information to unfairly compete with Cartier.”

The Trade Secret Claim

To succeed in its trade secret claim, Cartier will need to :

• The information is in fact, secret — that it is not generally known or readily ascertainable to competitors, and confers to Cartier a competitive advantage,
• Cartier has undertaken reasonable efforts to maintain its secrecy, and
• Tiffany & Co “misappropriated” the information

Cartier gains a strong position in this case from the evidence of emails and text messages between Tiffany’s management and Marino, as well as their outreach to current Cartier employees for information. Nevertheless, Tiffany may have some strong arguments as well. For instance, to the third requirement, Tiffany may argue that Cartier did not make reasonable efforts to maintain its secrecy. What is “reasonable” is typically a cost-benefit analysis. Marino, a lower-level employee who was not directly involved in Cartier High Jewelry, could access allegedly valuable, sensitive, and restricted information.

If they acquired the trade secret by improper means or a breach of confidence, Tiffany can be considered to have committed “misappropriation”. Tiffany may be in an even stronger position if they can establish that they somehow obtained the trade secrets lawfully — through means such as independent discovery or reverse engineering.

We should look forward to seeing the Court’s take on what constitutes “reasonable efforts” to maintain the secrecy of electronic documents in the age of Zoom.

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Ariel Goldberg is a third-year undergraduate student at 91��ɫ.

For most, Tiffany’s robin’s-egg blue box immediately represents luxury jewelry. However, British artist Stuart Semple considers Tiffany Blue as being held captive through trademark law. To , Semple created 150 ml tubes of matte acrylic paint named which replicates Tiffany & Co’s signature hue.

Semple has been , with previous paints replicating trademarked colours including , , and . His is to increase the possibilities within art by making accessible what he claims are unattainable colours. Semple has pushed his commentary further by preventing individuals who hold registered colour trademarks from purchasing specific paints on his e-commerce website. Now, Semple’s most recent paint, Tiff, targets Tiffany & Co by sharing the brand’s iconic blue with all artists.

was created in 1873 by Charles Tiffany and John Young and has been registered as a colour trademark in the U.S since 1998. colours were outside the scope of trademark protection. The Lanham Act—the federal trademark statute in the U.S—does not include colour in the statutory definition of trademarks. In the 1995 decision, the U.S Supreme Court held that a colour could be registered as a trademark but required that the colour’s use be non-functional and that it has a In other words, consumers must associate the colour with a single source.

While Tiff paint has sparked conversation about monopolizing colours, Semple’s strong language on his e-commerce website and social media posts overstates the Tiffany & Co’s trademark rights. Semple wrote in an Instagram caption that Tiffany Blue is “trademarked in every category” and that However, colour trademarks are not synonymous with ownership of the colour. Trademarks are generally registered in connection to specific goods and services, which are divided by industry under the global system. Tiffany & Co has a multi-class registration for Tiffany Blue, but these are all narrowly defined. Tiffany Blue is registered for its use on “jewelry pouches with drawstrings” in Class 14. The trademark covers uses of the colour that would reasonably confuse the public to believe Tiffany & Co was the source.

Essentially, trademarks operate as a source indicator. Colour trademarks protect brands if the use of the colour in connection to specific services or goods would confuse customers. Christian Louboutin holds trademark rights for the use of Pantone 18-1663TP on shoe soles and Hermès maintains trademark rights for the use of a specific orange on packaging. Again, trademark protection is granted over the use of the colour in relation to specifically defined goods and services. It is not protection for the use of the colour on anything and everything.

In addition, colour trademarks are not effortlessly granted; it is difficult to gain monopoly over a colour. It can take time to develop the required secondary meaning. In the case of , The New 91��ɫ Sun reported the iconic nature of Tiffany & Co’s blue boxes in 1906, which is a significant time frame to be using the colour in relation to packaging and jewelry. Essentially, the colour’s use was so well known it was functioning as a source indicator before protection was granted. Even if secondary meaning is established, the colour which means that the colour cannot be essential to or a characteristic of the good or service. The functionality doctrine protects competitors against a disadvantage. Ultimately, there are safeguards to granting a colour trademark which prevents widespread and overly broad monopoly of colours. Further, rights are limited to the consistent use of the colour.

Tiffany has yet to respond to Semple’s paint. Regardless, Semple plans to continue “liberating” Tiffany Blue. He , “I see the art materials as more of a cultural critique, a piece of critical art [rather] than a business.” While Semple’s cultural critique exaggerates the protection granted through colour trademarks, Semple has started a conversation. He has also shown the importance in recognizing the limitations and safeguards in colour trademarks.

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