IP Law Update: Dotting Your IPs and Crossing Your Ts (shirts)

This article was first published in the Lexis Nexis Intellectual Property Law Bulletin May 2016 Vol 29 No 4 and was co-authored with solicitor, Sharon Givoni.

In the past five years, a series of cases has sparked legal debate in that ubiquitous wardrobe staple, the T-shirt. Arguably the most popular and influential item of clothing worldwide, the “tee” is the outward manifestation of an individual’s style. For a brand, a T-shirt is a walking billboard for marketing and brand strategy.

At times, selling a T-shirt can be a high-stakes business. The case studies below will reveal the importance of demonstrating the following:

1. Replicating the “look and feel” of an artwork and placing it on a T-shirt can be copyright infringement, without needing to demonstrate that the infringing material is an identical copy;
2. Where a person infringes copyright by doing an act comprised in the copyright without the licence of the copyright owner, it is not necessary for the copyright owner to prove that the infringer knew the act was an infringement; and
3. Ask for permission. Asking permission to use another’s work seems obvious and a simple step to avoid costly litigation, yet the cases below show either a lack of understanding of intellectual property rights or vain hope of not being discovered.

Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197

Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd, while an older case, provides a detailed summary of copyright infringement law.

As background, Elwood Clothing (Elwood) is a designer, manufacturer and seller of clothing and clothing accessories. In 2008, Elwood brought an action for copyright infringement against Cotton On Clothing (CO) in relation to two designs, its “NewDeal” T-shirt and a “Vintage Sport” swing tag. Elwood’s NewDeal T-shirt featured the word “Elwood” below the numbers 9 and 6 with a stylised logo of a forward facing bull on the front and on the back, the number “96” in giant text below the phrase “raging bulls”.

CO’s design shares apparent similarities. At trial, the primary judge held that under section 10(1) of the Copyright Act 1968 (Cth) (the Act), the Elwood design was an “artistic work” because it constituted a “drawing”. A person infringes copyright where they reproduce, distribute, perform or display the protected works.

It is just an idea…

In the Elwood case, the primary judge took the view the general layout was only an “idea” rather than an “expression” of copyright and therefore not something that CO could infringe.

Or is it?

On appeal, however, the Full Federal Court held that the artistic quality of the work “consists of the layout, balancing, form, font, positioning, shaping and interrelationship of various elements”. The “look and feel” of the T-shirts involved:

• The numbering and its size and location on each T-Shirt;
• Arcing text around a central logo;
• A V-Shaped neckline;
• Layout and position of a bull-graphic; and
• The arrangement of text, size, ordering and other elements.

By reproducing the layout, arrangement and style of Elwood’s designs, CO had recreated the “look and feel” of the T-shirt to the extent that it had infringed Elwood’s copyright. The evidence revealed that CO employees admitted they had referred to the Elwood designs as a reference point for the CO T-shirts but had tried to make them sufficiently different.

Fenty v Arcadia Group Brands Ltd t/a Topshop [2015] All ER (D) 157 (Jan)

Fenty v Arcadia Group Bands Ltd, or more familiarly Rihanna v Topshop, pits one global brand against another in a battle over a T-shirt.

The saga began in March 2012 when Topshop started selling a tank top prominently featuring an image of Rihanna which was taken by an independent photographer. The UK retailer then sold the “Rhianna Tank” – a square-cut tank top with a “muscle sleeve” featuring an image of Rihanna with pouting coral lips and hair piled high.

In Australia, no individual law prevents the use of a person’s image on a T-shirt. Copyright laws are of no help as the author of a photograph owns the copyright, not the person being photographed. While Topshop did have a licence from the photographer to use the image, Rihanna had not consented to its use. The pop star then took legal action in the High Court of England and Wales, claiming $5 million in compensation.

Rihanna’s key argument was that Topshop’s sale of the T-shirt amounted to “passing off” her goodwill and reputation and was misleading. People, she said, would likely form an opinion that she had endorsed the product or was associated with it in some way. As such, she should be entitled to licensing fees. After reviewing her evidence in the case, the trial judge concluded that Rihanna is considered extremely influential in Topshop’s target market, being females aged 13–30 years old. Ultimately, the judge ruled in Rihanna’s favour. The judge took the view that many purchasers would have believed that Rihanna had authorised the use of her image on the garments.

Topshop’s case was weakened by evidence of its history of collaborating with a chain of different celebrities, such as Kate Moss and Kate Bosworth. This history of previous collaboration lent weight to Rihanna’s contention that the use of her image would lead Topshop’s target market into the false belief she had officially collaborated with Topshop and endorsed the T-shirt.

Topshop appealed the decision, and in January 2015 the Court of Appeal confirmed that the unauthorised use of Rihanna’s image amounted to passing off, rejecting Topshop’s appeal. However, the judgment should not cause worry to street vendors plying their unauthorised Rolling Stones or KISS T-shirts. Topshop’s actions and previous collaborations meant consumers were likely to be led into believing Rihanna endorsed Topshop’s T-shirt, whereas street vendors would be highly unlikely to create the same impression

Lorna Jane and Lydia Jahnke

Lorna Jane, the activewear brainchild of Lorna Jane Clarkson, designs and sells off the rack women’s exercise clothing. The brand has a cult following on social media and over 155 stores worldwide. Lorna Jane makes a point of heavily interacting with its followers through traditional offers, promotions and events through personalised mentions and support of fans online through social media.

Earlier in 2015, Lorna Jane’s actions in using a fan’s Instagram image on a T-shirt lost the brand significant social capital. Lydia Jahnke, a 19-year-old from Queensland, is an avid Lorna Jane follower, informal brand ambassador and an individual with a significant social media following. Jahnke regularly photographs herself sporting items of Lorna Jane clothing, posting her images to social media and routinely including the brand’s social media hashtag “move nourish believe”. A brand could not hope for a better marketing tool. Jahnke photographed herself on top of a hill, facing away from the camera with her arms raised in a “Y” shape. Months later, she discovered that her image had been used by Lorna Jane on a long-sleeved top, appearing in grayscale with the phrase “the woman on the top of the mountain did not fall there”. Lorna Jane had used her image without permission, very likely infringing copyright in the image.

A preliminary issue to consider is whether Jahnke actually owned the copyright in the image. The author of artistic work is the owner of any copyright subsisting in the work. The photograph is of Jahnke herself. If Jahnke did not take the photo, she has no right to the copyright of the photo unless the photographer assigned their rights in the photo to Jahnke. Alternatively, Jahnke may have used the automatic timer function to take the photo herself. A person who reproduces a work, but does not own the work, infringes copyright.

Similarly, a person infringes copyright in artistic work if he or she sells, without the licence of the copyright owner, an article where they ought to have known that the making of the article constituted an infringement. Placing to one side whether Jahnke was the author of the photo, Lorna Jane’s actions in taking the image and placing it on a T-shirt very likely infringes copyright and Jahnke is said to be seeking compensation. The key takeaway from Lorna Jane’s actions is the importance of asking permission.

More in the Media

Raw, cutting and often poignant in its simplicity, graffiti art is a form of expression limited only by the scale of a building or perhaps by the zealousness of a city’s police force. Understandably, the sardonic “cool” of graffiti art is something many brands seek to emulate.

Two brands, Urban Outfitters and American Eagle Outfitters (AEO), attempted to capture the edginess of street art by using graffiti in their marketing and designs. AEO used a well-known Miami street artist’s “lazy eye” motif on their website, social media, store displays and on T-shirts without asking permission. Similarly, Urban Outfitters was caught out when it used street artist Cali Killa’s art on their T-shirts. In both of these cases, they settled out of court.

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The T-shirt’s evolution from standard-issue clothing to an expression of personal style tracks our changing tastes and values like no other medium. The design of a T-shirt is much more likely to be the result of the design team’s push to have the latest on the racks than careful consideration of the intellectual property issues involved with placing particular images on a T-shirt. As these cases demonstrate, taking advantage of a trend without consideration of the implications risks breaching copyright. Key tips for brands are to show the clear evolution of an original T-shirt design and that if inspiration is taken from another design, recreating the “look and feel” of that design may constitute copyright infringement. As always, the message for clients is that asking permission to use an image is the surest way to avoid a copyright dispute.

If you have any questions or need assistance protecting your intellectual property, get in touch with our IP lawyers on 1300 544 755.