The Rag Trade – A Hopeless Case? January 2008
January 28, 2008
IP in the Fashion Industry
IP rules take on a different facet depending on the industry involved. So, whether you are a retailer bringing key designs to the masses at affordable high street prices, or a designer seeking to protect your designs from blatant copyists, it is important to seek guidance from IP lawyers who understand both the fashion industry, and the minefield that is copyright, design, and trade mark law.
Registered designs
A designer can register a fashion or other design in the UK or within the EU, provided the design creates a new overall impression on the informed user. A registered design gives the designer stronger rights against copyists because action can be taken to stop designs that are substantially similar even if they are independently created and not copied from the registered designs. However, it may be impractical within a fast-moving industry like fashion routinely to register designs, as work is continuously being produced and the life cycle for each design may be too short to merit the investment of time and money required for design registrations. This is despite the fact that the registration system allows multiple designs to be included in a single application for registration at a surprisingly low cost.
A copying culture?
More importantly, copying of designs is so prevalent in the fashion industry that it is almost accepted as a fact of life. The marked reluctance to take action against copying stands in striking contrast to the heated condemnation of piracy and associated legislative and litigation campaigns in other creative industries. So, the widespread tolerance for copying, combined with the fast paced nature of the industry is probably the real reason for the low take-up of registered designs.
Copyright and unregistered designs
Designers will still have an automatic unregistered UK and EU design right and copyright in their designs. So, even without a registration action can still be brought based on copyright and unregistered designs. This is what happened in the recent successful action in Ireland by Karen Millen”s parent company, Mosaic, against Dunnes Stores. The action was under the European Community Unregistered Design Right regulations, which protects “original” designs, so the outcome would have been the same here.
However, to be in a position to enforce unregistered rights the designer will need to be able to demonstrate that unregistered rights exist, particularly in cases where these are challenged. To have adequate evidence of independent creation of the design the designer will need to be able to show records of the design, including its creation and continuous progress.
The problem with relying on copyright and unregistered design rights is that in addition to other hurdles to be overcome, there is the need to prove that the infringing goods were actually copied from your designs. An issue which may deter fashion designers against litigation is the difficulty of proving that the work is original to them, and that the infringing copy has been copied from their work. The work could itself be an alteration of what has already been done before. To litigate in such cases may be too uncertain and costly. However, if a strong case can be established, then legal action can be an excellent opportunity to signal to the marketplace that copying will not be tolerated, and this can have far reaching effects.
Dunnes Stores litigation
Karen Millen had not registered any of the designs which the supermarket giant was alleged to have copied. While we wait for the court transcript to become available some interesting insights can be gleaned from media reports of the arguments put forward during the case concerning a “faux shrug cami top” and Karen Millen striped woman’s shirt.
What is also interesting is how little Dunnes Stores appear to have done to cover its tracks. For example, the Irish Times 3rd October 2007 reports that lawyers for the Karen Millen discovered an order from Dunnes to the sub-contractor, DH International, which referred to a “Karen Millen jumper”. There were also a number of e-mails between DH International and a Turkish manufacturer dealing with a “Karen Millen top” and a “Karen Millen jumper”. In addition, there were reportedly receipts showing that Dunnes bought items of Karen Millen clothing in Brown Thomas and Dundrum Shopping centre, in Dublin, in early 2006. This arguably demonstrated that a Karen Millen shirt was physically given to a manufacturer so it could be copied.
From the reports of the case it is clear the garments sold by Dunnes were virtually the same – according to Karen Millen, if two women walked into the room the initial impression would be that they are wearing the same shirt. Dunnes” response to this was that the designs in question were “very common” and not original, and therefore copying them was not an infringement. Karen Millen”s lawyers argued that if Dunnes were correct, there would be a licence to plunder other people’s designs and to produce pirated copies as soon as possible, except in cases of “groundbreaking” designs.
With regards to the Karen Millen “faux shrug cami top” design, Dunne”s argument was that it was available in the marketplace before Karen Millen shops launched their version in December 2005, and the concept had been around since the early twentieth century and could be found in fashion items in the 1930s, 1950s and up to the 1990s. The garment was used during warm-up routines by ballet dancers and in the 1990s was integrated into jumpers and tops, and according to Dunne”s, it was “too commonplace to feature on the catwalk” and did not create a different overall impression” from similar tops.
Ms Justice Mary Finlay Geoghegan, in rejecting Dunnes” argument that the Karen Millen designs were commonplace and did not deserve protection under the EU regulation, found that Karen Millen”s designs had novelty and individual character having regard to the colour, texture and material used in the garments. These created a different overall impression on someone who knew about fashion from designs that had been on sale in previous years.
The importance of trade marks to fashion labels
In marked contrast to the infrequent use made of registered designs within the fashion industry is the widespread use made of trade marks. Building up a brand name provides valuable equity and protection to a designer, affording opportunities to capitalise on this even more if the brand is successful by moving on to create a lifestyle brand covering a wider range of goods than clothing which is in class 25 – such as leather accessories in class 18 and perfumes and cosmetics in class 3. Recent cases have shown the importance of keeping the trade mark portfolio under constant review to ensure wide protection is secured for the mark by registering all applicable goods classes that the label is likely to need, and to prevent other designers or retailers from successfully applying for similar labels in classes of goods that you will need protection for.
For example, Emilio Pucci”s registration in class 25 for clothing was inadequate grounds to oppose the successful registration by Kavanagh of the trade mark “Pucci” of leather and imitation leather goods, clothing and accessories for pets in class 18 and cosmetics, shampoos and materials for grooming of pets in class 3. This is a highly undesirable development for a brand such as Emilio Pucci, which might well have wanted to extend its own registrations into those very classes, and will now be unlikely to be able to do so. Nor is this an isolated case. There are numerous other examples on the trade mark registers of the danger of treating a trade mark registration as a one- off matter which can be forgotten about once effected.
Conclusion
Interestingly, the fashion industry presents an anomaly to the traditional justification for having strong IP laws. By giving the creator of a work the exclusive right to exploit the work and protect it from exploitation by others, the State rewards and encourages the creator to further creativity. Copying is generally accepted as stifling creativity and innovation. In most industries action would be taken to stamp out copying. However, the fashion industry is the exception to this rule. Despite widespread copying, particularly by high street retailers using catwalk designs, the law is rarely used to stop copying, and yet innovation continues to thrive and new designs continue to be produced. Arguably this culture of limited controls on copying benefits designers, who produce new designs inspired by the work of others, so creating a virtuous cycle of continuous creativity at an ever faster pace.
NOTE: Since this article was written (Jan 2008) we have heard that Dunnes is appealing the High Court decision.
