We all know that designers draw inspiration and ideas from the work of others. So it will come as no surprise that several disputes regarding too-similar fabrics and products have ended up in court. You might be surprised by the results.
Did you know that if you use a screen-printed image on a t-shirt, you may be able to do something about copycats, but if you embroider that same image on the t-shirt you might be powerless? Or that if you paint a pattern on furniture, it is probably protected, but you may be unable to stop a competitor from using that very same image if you have woven it into a carpet?
Many designers would assume that their creative work is legally protected. Much of it is. But many would also be surprised to learn that in certain circumstances, legal protection falls away unless you take certain positive steps. This trap is called “the copyright/design overlap”. Companies like Polo/Lauren have found out the hard way that, if you do not have a registered design, whether or not your product is protected by copyright laws could come down to something as simple as whether it has a textured surface, or is flat.
Whilst this article focuses on the copyright/design overlap, it is worth touching first on the intellectual property rights of designers generally.
IP Basics
Copyright protects “original artistic works” for at least 70 years after they are created. For designers, artistic works could include patterns and prints, images, dressmaking patterns or design drawings, but a garment itself is not usually a protected artistic work. A copyright owner can stop others from reproducing the artistic works. You do not have to register your ownership of copyright in Australia – if you, or your employees, produce an artistic work, usually you own copyright in it.
Registered Designs: whereas copyright protects specific artistic works, registration of a design allows you to protect the overall appearance of a product, including the features of shape, pattern and ornamentation which give the product a unique appearance. Only a new and distinctive design can be registered, and it must be registered before the product is released to the market. If you successfully register a design, you receive exclusive rights to use it, and to stop anyone else from using it or a very similar design without your permission. Protection lasts for up to 10 years.
Trade Mark law can protect logos, brand names and famous branding features. Trade marks can be registered, and it is much easier to take action to protect registered trade marks than unregistered trade marks. Many companies register their names and logos. Trade mark protection can last indefinitely provided the renewal fees are paid.
In some circumstances, the best (or only) protection against copying may be to register a design for your garment or product. But to register a design takes time and money, and there may be some legal hurdles along the way. The fashion and design industries are fast-paced, and registering a design may not be practical or even possible. Designers usually rely on copyright laws to protect their work.
Recently, several design houses have complained to the U.S. courts about copyright infringement by the store Forever 21.
There have been some recent copyright battles closer to home too:
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Les Tissus Marey and Lisa Ho locked horns over a printed fabric said to be for the exclusive use of Sportsgirl;
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Elwood took action against Cotton On in relation to some T-shirt graphics;
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Ted Baker London is rumoured to have reached out-of-court settlements with JAG, Target and Witchery; and
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Dibbs Abbott Stillman is currently involved in similar matters for footwear distributors and a French fashion label.
Fashion cases do not always go well for the copyright owner. A hard lesson was learned earlier this year by Polo, in The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd (2). Polo/Lauren sued to stop others using its famous polo player logo. Although the polo logo is a trade mark and would normally be protected as such, in this case Polo/Lauren said the polo logo was an artistic work, and sought to rely on its copyright in the logo.
Polo/Lauren lost because the polo logo was embroidered onto the garments - the stitches raised the logo above the surface of the rest of the garment. Crucially, the stitches did not just change the pattern or ornamentation of the garment, they changed the shape of the garment itself. Polo was caught in the “the copyright/design overlap”.
Copyright/design overlap
This tricky area of the law is based on a simple premise: the Copyright Act should protect your artistic work until it is used in a mass produced product. At that point, if the overall design of the product could have been registered under design laws, copyright protection for the original artistic work falls away.
For designers, the principle is that if an artistic work is built into a garment in a 3-dimensional way, it becomes part of the structural design of the garment itself, and should be protected by registering a design. Copyright law may no longer protect the original artistic work.
To determine whether this is the case, the law focuses on whether features of shape or configuration have been used in a product to reproduce the artistic work. This is best explained by an example:
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You create a pattern from colour, lines and/or images. The pattern is an artistic work. You own the copyright in that pattern – it cannot be used by others without your permission.
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If you have that pattern printed onto a fabric, you have not used features of shape and configuration to reproduce the pattern on the fabric. The use of the pattern is purely ornamental - it does not change the physical structure of the fabric used in the garment. If somebody else uses your pattern, or something very similar to it, you can sue them for breach of copyright.
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But if you reproduce the pattern in a garment by embroidering it onto the fabric, or use studs, sequins or other methods that change shape to create the pattern, you have reproduced the artistic work using 3-dimensional elements. You have applied the pattern as part of an industrial design.
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If you have that embroidered, studded or sequined product mass produced (for clothing manufacturers, this means a product run of 50 items or more), copyright law will no longer protect your rights in the original pattern. If you have not registered a design under the Designs Act, it will be difficult to take action against someone who copies your pattern and uses it in another product.
The Copyright Act loosely describes some of the production methods that are considered to change the shape of a textile. These key production methods are those that take an artistic work and weave it, impress it or work it into a product.
Lessons to be learned
It is dangerous to assume that designers can rely on copyright laws if they want to take action against copycats.
Designers need to be aware that the way a garment is designed and produced may change its legal status. Depending on the production method, an image or pattern used in a product may lose copyright protection if the product is mass-produced.
In certain circumstances, the only protection against copying is to register a design. The process of registering a design has its own difficulties, including the challenge of showing that a design is new and distinctive.
If a product is destined for mass production, and it uses an artistic work in a 3 dimensional way – whether it be woven into, impressed on or worked into the product – designers should consider seeking advice about design registration.
(2) The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCA 49
* If you would like any further information please contact Stephen Cartwright at stephen.cartwright@dibbsbarker.com
