Ryan Lindig

Published January 2022

Editor’s Note: Due to length and space constraints, the author and Editorial Advisory Board have opted to split publication of this article into two installments. This portion is the first half with the remaining half scheduled to be published in the September 2022 issue.

In the hands of an expert, gemstones can be cut into brilliant works of art, taking in rays of light and producing the shimmer and color that makes them so alluring. But when a raw diamond is pulled from the earth, it is simply a pretty rock, not yet deserving of protection. Value has not been added to the stone. Traditionally, only once a gem cutter has cut and polished the stone into something of value does it warrant protection under United States intellectual property law.

A diamond in its cut and polished form is graded based on the 4 C’s: color, clarity, cut, and carat weight.[1] The way a diamond is designed and shaped is called a “cut.” A cut is the arrangement of facets on a diamond and how well those facets interact with light.[2] Depending on which cut is used, the diamonds that qualify to be called that specific cut can be broad, but it can be very specific, down to the arrangement, number, and even angle, of its facets.[3] The most common cut is called the round “brilliant” cut.[4] Historically, the diamond cut was the only aspect of a diamond in relatively complete control by large diamond manufacturers. Large diamond mines are able to sort which diamonds to sell for jewelry use and which to sell for industrial use.

Smaller scale diamond miners do not have the same control over the four C’s of a diamond. For example, an amateur miner might go to a public mine and find only one jewelry viable diamond; that piece could be very large but narrow or have imperfections within. In order to preserve carat weight or provide the best clarity, that diamond would have to be cut in a specific way. The only other semi-controllable aspect of diamonds, historically, is the color. Natural diamonds can be treated with radiation to adjust the color to achieve a desired color scheme, but a precise color scheme could not be guaranteed.[5]

With the advancements made in synthetic diamond manufacturing, cut, color, clarity, and carat weight are all now completely controllable aspects of diamonds. These advancements have raised the question as to whether the intellectual property aspects of synthetic diamonds, and the IP rights of synthetic diamond manufacturers, are protectable under more avenues of IP than with respect to natural diamonds.

This paper will examine how the rights of diamond manufacturers have traditionally been protected, how synthetic diamonds are created, and the possible ways the IP aspects of synthetic diamonds, as well as the IP rights of synthetic diamond manufacturers can be protected under modern day technology and law.

The historical protection of diamond intellectual property

The natural diamond itself is not protected by intellectual property law before being cut. It is a fact of nature; nothing more than a rock, albeit ripe with potential. When a diamond is cut to be used in  jewelry, the rock itself is still not protected. Rather, the cut is what is protected, as that is the useful element added by the labors of a human.

The diamond cut is the defining factor in how a diamond looks and how it interacts with light. The way different diamond cuts interact with light is deliberate; the gem cutter is creating a functional feature, thus making it protectable under patent law. Unique and creative diamond cuts have been historically protected through patent and trademark law.

Patent protection

The round brilliant cut is the most common partly because it has been around for centuries, but also because it is one of the most efficient arrangements of facets in causing a diamond to interact with light to create desirable visual effects, such as “brightness,” “fire,” and “scintillation.[6]”

A diamond’s interaction with light to create these effects is the reason a cut is functional, and thus protectable under utility patent.[7] At the most basic level, a utility patent protects the way an article is used and works.[8] In the diamond industry, a utility patent protects how the cut, not the diamond, transmits light and creates brilliance, fire, and scintillation.[9]

While the round brilliant cut dominates the consumer market, a multitude of other types of cuts exist. Figure 3 shows a portion of the first page of Tiffany & Co’s utility patent for the Lucida cut filed in 1998.[10]  Figure 4 is a page from Henry Grossbard’s radiant cut utility patent filed in 1976.[11] Both of these patents have since expired, as well as Tiffany’s concurrent design patent, however Tiffany & Co. is still actively using and protecting the Lucida trademark.[12] Utility patents require a detailed explanation of how the facets work to refract light and create the aforementioned visual effects, and will protect a diamond cut for 20 years measured from the filing date.[13]

Figure 5 shows how far science and technology have come in accurately measuring the light performance of a cut.[14] This image is a compilation of pages from a patent filed in 2017 for a very specific way to create an emerald cut, down to the precise degree that each facet should be cut every time, for the purpose of obtaining a perfect light performance grade from the American Gem Society. This patent is one of many that measurably demonstrates the functionality of a cut.

In the alternative, a design patent protects the way an article looks; in the diamond industry, a design patent protects the ornamental appearance of a diamond cut.[15] (35 U.S.C. 171) When a diamond has been cut, an observer can view the physical manifestation of a diamond design. Design patents are usually less complex than related utility patents and require only a diagram of what the finished cut looks like to warrant protection. Figure 6 is a page from a patent assigned to Lili Diamonds for the Meteor cut, registered in 2011.

While a design patent does not protect any of the functional, structural, or utilitarian elements of a cut, a design patent and a utility patent are not mutually exclusive. A company that wishes to create a new diamond cut can apply for, and receive, both a utility and design patent. In addition, the name of a unique cut can be protected by trademark.

Trademark Protection

Certain cuts are profitable enough that failing to name the cut would be to miss out on a safety net for missing money. For example, Lili Diamonds patented the Meteor cut above, however it was not patented as the “Meteor Cut.” It was patented simply as “Gemstone.[16]” Lili Diamonds filed for trademark protection of the “Meteor” cut name in the United States in 2016, 5 years after the date of first use. Trademarks in the diamond industry protects the brand name of the cut, and need not be registered if used in commerce, and need not be registered after first use.

However, once the name is registered, the name must be used in commerce.[17] Trademark protection for the cut name is desirable, as the duration will be indefinite if affidavits of continued use are timely filed.[18] Lili Diamonds, a jewelry company has a couple of trademarked cuts, such as the Lily cut and the Orchidea cut. While the patent protection has since expired, the company is meticulously active in maintaining trademark use and protection for all of their recognizable cuts.[19]

The names of Lili’s cuts would likely fall under suggestive, and thus are inherently distinct marks that do not require secondary meaning within the minds of consumers. I say this because even though the cuts are named after real things, like Lily, and Meteor, if courts were to apply the imagination test to the Meteor cut, it would likely require imagination, thought, and perception to reach a conclusion as to the nature of the goods, rendering it a suggestive mark. Zatarain’s Inc. v. Oak Grove Smokehouse, Inc. Furthermore, Orchidea is a funny spelling of a word, and would also be found to be suggestive.

Other IP protection

Trade dress is a special type of mark. The trade dress of a product is essentially its total image and overall appearance.[20] In a relatively recent case, the Supreme Court established three categories for determining whether a product’s trade dress is protectable: product packaging, product design, and a “tertium quid.[21]” Trade dress that is either product packaging or akin to product packaging, like the robin’s egg blue boxes and bags that Tiffany’s products come in, is considered trade dress that is inherently distinctive, and protectable without requiring proof of secondary meaning.

However, product-design trade dress does require a showing of secondary meaning to be protectable.[22]Because court’s have been instructed to err on the side of caution, and classify hard cases at the margin as product-design, diamond cuts would likely not qualify for trade dress protection. The USPTO will also not issue protection for functional trademarks.[23]  The unfortunate reality for diamond manufacturers is that 95 percent of the public knows nothing more than the popular “round” or “square” shapes, – even less know the name of the actual popular cut, and can’t tell the difference between propriety cut designs.[24] 

Trade secrets are essentially useless in protecting natural diamond cuts. Any trained observer can take a diamond, count the facets, and recreate the cut on a couple pieces of quartz until they’re ready to recreate it on a diamond. However, synthetic diamonds are grown using a formula, and this paper will explore whether all that goes into a growth formula can be protected under trade secret.

Copyright protection for diamond cuts has not been accepted by courts and issuing offices because of problems with meeting the originality threshold, the problems that come with the exclusive rights of copyright holders, and the inseparability of a diamond cut’s utilitarian aspects from its aesthetic elements. The originality requirement is a high barrier to protecting diamond cuts. Under the Constitution and by statute, copyright validity depends on originality.[25] The novelty and originality thresholds are extremely low, yet diamond cuts do not meet the threshold for a number of reasons.

First, diamonds cuts have been in the market since the 16^th century.[26] The market has been saturated with diamond cuts for hundreds of years. Thus, claiming creative originality for a new diamond cut would be difficult, especially if based on copyright standards; most of the popular diamond cuts, like the brilliant cut, are in the public domain today. Exclusive rights of copyright holders present an even greater hurdle.

For illustrative purposes, consider the Queen’s cut, a 60-facet modified oval, patented by Henry Grossbard.[27]  Imagine that Mr. Grossbard was granted copyright protection instead of patent protection. Mr. Grossbard would have the exclusive rights of copyright holders: to do and to authorize the activities that implicate these rights. One of these rights includes the right to create derivative works. Now that a court has granted copyright protection to a cut of a diamond, the court would have to determine what constitutes a derivative work.

Mr. Grossbard himself said that anyone can copy the Queen’s cut by changing a few facets around. Therefore, a person who copies the Queen’s cut and changes a few facets around would likely face infringement liability under copyright, where he would escape under patent law. A derivative diamond cut would likely include more than merely changing a couple of facets around, but it’s unknown how far the rights would extend, because courts had the foresight to predict this rabbit-hole.

Lawsuits would be brought against any diamond cutter who sold a modified oval cut, or an oval, or even a circular shape in general. There would likely be arguments made that any cut with around 60 facets would be a derivative work. Additionally, because a derivative work has a higher threshold requirement for originality than the copyrighted work, it is unlikely any diamond cut that looks remotely like the Queen’s cut could be sold within 70 years. 

The last hurdle a diamond cut would have to make to garner copyright protection is a mixture of the merger doctrine and functional qualities of the cut. Copyright does not protect the pictorial, graphic, or sculptural features of useful articles, unless those features are separable from the useful article’s utilitarian elements.[28] In Mazer, the part of the lamp that could get protection is the separable elements, the sculpture, not the lamp as a whole. In this case, a sculptor could take a piece of stone and cut it in the shape of a Queen’s cut. In theory then, the cut could be protected under copyright.

However, what if someone then wanted to apply that cut back onto a diamond in order to create the light refractions? It would be impossible to create the light refractions of a specific cut without cutting a diamond in that shape. In this instance, the merger doctrine would likely kick in. There is only one way to cut a diamond to create the type of light refractions that the Queen’s cut offers, and thus, the idea and expression would merge and the cut would not be copyrightable.

The fundamental problems with protecting diamond cuts through copyright are the novelty and originality threshold, the problems that come with the exclusive rights of copyright holders, and the inseparable qualities a diamond cut has. This is why most inventors who create a new diamond cut have elected to protect their cuts through the simultaneous use of utility and design patents, rather than through copyright law.

Synthetic diamond creation

Synthetic diamonds can be created through a variety of methods, but only two methods are primarily used to create gem-quality diamonds that are used for jewelry.[29] These techniques are known as “High Pressure, High Temperature growth,” (HPHT) and “Chemical Vapor Deposition” (CVD).

The HPHT growth process is shown in Figures 8, 9, and 10. To grow a diamond using the HPHT method, a diamond manufacturer needs equipment to simulate the key conditions of natural diamond growth, which are high temperature and high pressure.[30] Figure 8 is a diagram of a heating cell where the high temperature portion of the growth process takes place.

First, a manufacturer will place a diamond seed crystal at the bottom of the cell. A seed crystal is a tiny piece of diamond (pure carbon) that behaves as a blueprint for carbon atoms. The diamond seed is then surrounded with a metal solvent like iron, cobalt, nickel, or titanium, which is then topped with a pure carbon source like graphite or diamond powder.

Next, the manufacturer begins to heat the cell, heating the top of the cell significantly more than the bottom. The cell heats the metal solvent until it melts; the metal solvent acts as a filter, allowing the carbon at the top to travel down into the cooler part cell, where it meets the diamond seed. The diamond seed is the blueprint for the way the manufacturer wants the carbon atoms to arrange, and does not have to be natural diamond.

HPHT or CVD grown diamonds can be used as a seed crystal, as the atom structure is the same across all types – strong diamond. The carbon atoms from the source find the strong diamond seed blueprint, and begin arranging and attaching to the diamond seed, causing growth.

Figures 9[31] and 10[32] show how diamond manufacturers mimic the second key condition of natural diamond growth: pressure. Figures 9 and 10 shows cubic presses; 6 anvils simultaneously push onto a heating cell to apply massive amounts of pressure. There are other types of presses, however cubic presses are the most popular throughout the industry, due to the efficiency and  customizability. Cubic presses can come in massive sizes to accommodate large-volume cells; the entire apparatus is often much bigger than a person. The entire process can take anywhere from days to weeks, depending on the efficiency of the process, and the desired diamond size.

The second method diamond manufacturers use to grow diamonds for jewelry is called “Chemical Vapor Deposition” (CVD), which is a gas-phase chemical reaction. Figure 11 is a diagram of the chamber and components needed to grow a diamond using the CVD method. Just like in the HTHP process, a diamond seed is needed, which is termed “substrate” in the diagram. However, unlike the HTHP process which takes place in a high-pressure environment, this reaction takes place in a vacuum chamber below atmospheric pressure.

Hydrocarbon gas is mixed with pure hydrogen gas and then microwaves are introduced to generate plasma to stimulate the hydrogen and hydrocarbon bonds to bounce around at high speeds. The microwave frequency used is actually the same as used in a typical microwave oven, although you can’t grow diamonds in your kitchen microwave. The diamond seed is placed on a platform and heated from below, although not as much as with the HTHP method.[33] A diamond seed is a pure carbon structure, but the edges of the carbon structure are terminated by hydrogen atoms.

To add more carbon atoms to the diamond seed, the terminating hydrogen atoms need to be removed first, which is the purpose of the pure hydrogen gas. Figure 12 is a picture of what this process looks like. Hydrogen atoms like to be in pairs, so the singular hydrogen atoms will “clean-up” the edges of the carbon seed by picking up the terminating hydrogen atoms, leaving space for a hydrocarbon atom to take its place. Then the process repeats atom by atom, layer by layer, as the diamond grows. The time required to grow a diamond using the CVD can be anywhere from days to weeks, depending on the specifications of the manufacturer.

Diamond manufacturers who use either of these diamond growth methods are in greater control over the diamond. Because a diamond manufacturer is able to control the size, or carat weight, he also has absolute freedom in the desired cut. With two of the 4C’s now controllable through the mere growth process, the other two are within reach – Color and Clarity. 

Natural diamonds and synthetic diamonds, can be treated with heat or radiation to produce or change the color. Depending on the inclusions/impurities in a natural diamond, a manufacturer with the right knowledge and tools can create a variety of colors but cannot reproduce the exact same color on any diamond every time. Synthetic diamonds provide diamond manufacturers with the ability to control color at more precise levels. The number and types of atoms in a growth chamber can be modified to create different results. If a diamond manufacturer wanted to create a blue diamond, it would add boron atoms into the chamber (HTHP more common than CVD), or it would add nitrogen to grow a yellow diamond[34].

Synthetic diamond manufacturers who produce fancy gem quality diamonds for jewelry have specific formulas in order to create the same color diamond every time.[35] A CVD growth will often result in a brownish tint when the growth process is sped up. This is a result of vacancy clusters and non-diamond carbon inclusions. However, some diamond manufacturers who wish to grow colorless diamonds with CVD will cause this intentionally to shave time off the growth process, as the CVD grown diamond can be quickly treated under HTHP to remove the color.[36]

Natural diamonds have impurities called inclusions that occur when a diamond grows around mineral grains during its formation stage. In HTHP grown diamonds, traces of the metal solvent may get trapped within, creating inclusions that look different than the minerals trapped in natural diamonds. CVD diamonds are usually higher clarity, as there’s no metal solvent to trap. Non-diamond carbon inclusions can detriment clarity, but CVD inclusions are not common, especially when conducted correctly.[37] As illustrated, a diamond manufacturer now has perfect control over color and clarity.

Now, let’s assume the diamond manufacturer we’re talking about is Lightbox, a synthetic diamond manufacturer under DeBeers; it grows, cuts, and places its diamonds into jewelry using the CVD method. As discussed above, this means that Lightbox has complete control over the 4C’s. Lightbox can grow the same diamond, with the exact same size, color, and relative clarity, to be cut the same way each time. To explore how this control translates to IP protection, let’s have an exercise through a hypothetical.

Suppose Lili Jewelry has licensed the Meteor Cut trademark and design and utility patents to Lightbox for its creation of its flagship synthetic diamond: The Blue Moon Diamond. The diamonds are CVD grown in Lightbox laboratories and are cut using the Meteor Cut. After cutting and polishing, each diamond weighs 5 carats every time. In the CVD growth chamber, Boron is added 300 parts per billion to consistently create the same light blue color, and the clarity is always graded at either VVS1 or VVS2. We will be using this fictional Blue Moon Diamond as a starting point for the following discussion on synthetic diamond protection.

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Endnotes

1. https://4cs.gia.edu/en-us/diamond-cut/

2. https://www.gia.edu/gia-about/4Cs-Cut

[3] U.S. Patent No. 10,448,713

[4] https://www.gia.edu/gia-about/4Cs-Cut

[5] Mike Breeding, The Evolution of Laboratory-Grown Diamond Evaluation at GIA | GIA Knowledge Sessions Webinar, (Oct. 1, 2020), http://www.youtube.com/watch?v=sZ1keCKdv_U

[6] https://4cs.gia.edu/en-us/diamond-cut/

[7] http://gemologyproject.com/wiki/index.php?title=File:SRB800px2.JPG

[8] USPTO.gov/web/offices/pac/mpep/s1502.html (citing)  (35 U.S.C.S. § 101).

[9] Thomas Overton, Legal Protection for Proprietary Diamond Cuts, 38 Gems & Gemology 310, 314 (2002)

[10] U.S. Patent No. 5,970,744

[11] U.S. Patent No. 4,020,649

[12] https://www.tiffany.com/search/?q=Lucida%C2%AE

[13] https://www.uspto.gov/web/offices/pac/mpep/s1502.html

[14] U.S. Patent No. 10,448,713

[15] Thomas Overton, Legal Protection for Proprietary Diamond Cuts, 38 Gems & Gemology 310, 314 (2002)

[16] U.S. Patent No. D650,306

[17] Thomas Overton, Legal Protection for Proprietary Diamond Cuts, 38 Gems & Gemology 310, 314 (2002)

[18] Id.

[19] Lilijewelry.com/specialty/lili-diamond-cuts/

[20] Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. 763 (1992).

[21] Wal-Mart Stores, Inc. v. Samara Bros., Inc. 529 U.S. 205 (2000).

[22] Id.

[23] Traffix Devices, Inc. v. Marketing Displays, Inc. 532 U.S. 23 (2001)

[24] Pers. Comms, Thomas Overton. LinkedIn, 2/12/2021, 4:56 p.m.

[25] Yurman Design, Inc. v. PAJ, Inc., 263 F.3d 101, 109 (2d Cir. 2001) (citing Feist & U.S. Cons. Art. 1 § 8 , cl. 8).

[26] https://www.langantiques.com/university/rose-cut/

[27] Shor, Russel. “A Diamond Smorgasbord.” Jewelers Circular Keystone Aug. 1997: 80+. Business Insights: Global. Web. 12 Feb. 2021.

[28] Mazer v. Stein, 347 U.S. 201 (1953)

[29] Mike Breeding, The Evolution of Laboratory-Grown Diamond Evaluation at GIA | GIA Knowledge Sessions Webinar, (Oct. 1, 2020), http://www.youtube.com/watch?v=sZ1keCKdv_U

[30] Pressure ~5-6 GPa (equivalent to 150 – 190 km dept in the earth) with a temperature of anywhere from -~1300-1600 degrees Celsius, can take anywhere from days to weeks.

[31] Mike Breeding, The Evolution of Laboratory-Grown Diamond Evaluation at GIA | GIA Knowledge Sessions Webinar, (Oct. 1, 2020), http://www.youtube.com/watch?v=sZ1keCKdv_U

[32] https://www.hatchbrilliance.com/diamond-education/article/cvd-and-hpht-diamonds-explained-3

[33] About 300 degrees Celsius lower

[34] Low Boron 0-100 parts per billion: colorless. Higher Boron (>~100 ppb): blue

[35] Pers. Comms. GIA Librarian

[36]  Mike Breeding, The Evolution of Laboratory-Grown Diamond Evaluation at GIA | GIA Knowledge Sessions Webinar, (Oct. 1, 2020), http://www.youtube.com/watch?v=sZ1keCKdv_U

[37] Id.