A more conservative version of this article was first published in the Lexis Nexis Internet Law Bulletin November/December 2015 Vol 28 No 9-10
Take away tips:
- Fashion designers whose 2-dimensional fabric designs are distinctive can uphold their rights through copyright. Problems can arise, however, if there is no “smoking gun” evidence of copying.
- Those who wish to protect 3-dimensional aspects of a fashion design that they propose to apply industrially should consider applying for design registration as copiers will have a defence to copyright infringement.
In an earlier fashion law update, we looked at the kerfuffle surrounding Miley Cyrus’ outfit choice at the 2015 VMAs. That VMA fashion scandal is an appropriate lens through which to view the various ways in which fashion designers can protect their creations. That the alleged infringement of DI$COUNT UNIVER$E designers’ rights occurred in the US, and not here in Australia, does however complicate the matter. This article doesn’t propose to examine the US law in any detail but focuses on the relevant Australian law.
The law divides intellectual property protection into three distinct areas. We put each under the microscope and explain how copyright, trade marks and design registration can protect your apparel, accessories and designs.
Copyright protection applies to designs printed or otherwise reproduced in 2 dimensions, such as prints on fabric. The DI$COUNT UNIVER$E t-shirt at the centre of this controversy is an example of a fabric print that would enjoy copyright protection. Elwood’s t-shirt design is another example. Here, the Full Federal Court agreed on appeal that Cotton On had substantially copied this print. Notably, the defendant’s employee designers admitted having had reference to the plaintiff’s design.
There are countless examples of DI$COUNT UNIVER$E 2-dimensional fabric prints that would also qualify for this type of protection. These include their prints incorporating large, scattered letters of their brand name, and those consisting of images of large eyes combined with mouths dripping with blood.
A common misconception is that infringement is measured based on a percentage approach. Rather, it is determined by whether the copied element is a substantial part of the overall work. Reference to the quality of the what has been copied, rather than quality, answers this question.
Where difficulty can arise is that DI$COUNT UNIVER$E’s designs appear to be somewhat raised or 3-dimensional. For example, Nadia Nepreychikov and Cami James seem to have created their garments by sewing sequins onto the fabric.
In short, Australia’s law states that if the article has a raised or textured surface that is part of the original manufacturing process and not applied after the designer has manufactured the underlying fabric, then the article’s design will be considered a “corresponding design”. If the raised or textured surface is “industrially applied”, it will not attract copyright protection.
In the US, the current position is similar in that while fabric designs attract copyright, dress designs generally don’t. Unless, you can separate the design elements from the overall function of the article of clothing.
In Australia, if designers intend to “industrially apply” their design, they are encouraged to register their designs under the Designs Act 2003 (Cth) for a five-year term, with a maximum of ten years. These designs lose their copyright protection under the Copyright Act 1968 (Cth) unless the work is considered “artistic craftsmanship” (i.e. having an aesthetic quality, and handmade with skill). The equivalent registration under US law is known as a Design Patent. Fashion houses, however, rarely seek out this registration, deterred by the expense involved in registration and the industry’s fickle nature.