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IP in Fashion - Product Development

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author/source: Geoff Caesar

ipfashiondevelopment

Product Development

Generally, the most relevant form of protection for fashion designs in the UK will be unregistered or registered design rights (currently available in the UK under both UK and EU-wide forms of protection). In the UK, any separate copyright relating to fashion designs will generally be limited to surface decoration or to designs that qualify as “works of artistic craftsmanship”.

In this article in the Alinea Law Member series on intellectual property in the fashion industry we cover:

  • Copyright
  • UK unregistered design right
  • Community design right
  • Ownership issues: copyright and design right
  • Idea recordal: copyright and design right
  • Patents

Copyright

Every fashion item, whether an item of clothing, a pair of shoes, a handbag, a hat or an item of jewellery, starts out as an idea. The development of the final item will involve inspiration, creativity, time and thought on the part of one or several individuals, so that the end product is the result of what may be a lengthy process.

The idea itself is not protectable in its own right, certain basic concepts must remain available for anyone to use. However, once an original idea is “put down on paper” or is somehow otherwise made into something tangible, copyright may automatically arise to protect the way in which that original idea has been expressed.

To benefit from copyright protection, a work must be “original”, in other words, it must not be a copy of a pre-existing work and must involve independent skill and labour. The threshold for originality is generally a low one. However, in relation to fashion products, copyright protection will generally be limited to their decoration or works involving a sufficient element of “craftsmanship”.

UK unregistered design right

  • UK unregistered design right protects the shape or configuration of the whole or part of an article, excluding any surface decoration.
  • The design must be original.
  • The right is intended to give finite, short-term protection. Therefore the right is limited to the lesser of 10 years from the first marketing of articles made to the design or 15 years from the creation of the design document recording the design, with the possibility of a licence of right in the last 5 years.

The Intellectual Property Act 2014 (IPA) amended the definition of unregistered design right with the aim of helping to reduce uncertainty over the scope of protection and to limit the protection for trivial features of designs. Section 1(1) removed “any aspect of” “the shape or configuration of designs” from the scope of protection, by amending section 213(2) of the Copyright, Design and Patent Act 1988 (CDPA). The meaning of “commonplace” in section 213(4) of the CDPA was uncertain in relation to its geographical coverage. Section 1(3) of the IPA aimed to remove that confusion by extending the definition to “commonplace in any qualifying country”, with the definition of qualifying country remaining as set out in section 217, which includes the UK and EU member states. 

In the fashion field various attempts have been made to bring design features of fashion items into the UK design regime. An attempt to protect the selection of a particular set of colours and their application to a tracksuit top was found not to be an aspect of the shape or configuration of the article (Lambretta Clothing Limited v Teddy Smith (UK) Limited [2004] EWCA Civ 886). However, copyright protection and unregistered Community design right may assist. The Court of Appeal’s decision in The Procter & Gamble Company v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 provided guidance on the interpretation of the scope of design rights.

This was the first decision of an appellate court in the EU on the scope of Community registered design protection. The Court of Appeal held that:

  • For the purposes of both registrability and infringement of a Community design, the informed user was taken to be aware of other similar designs that formed part of the “design corpus”.
  • The informed user was more discriminating than the average consumer for trade mark purposes.
  • The overall impression of a design was the impression created when the design was viewed and not a subsequent recollection of the design.
  • Smaller differences in design would be sufficient to create a different overall impression if the freedom of the designer was limited by functional considerations.
  • The freedom of the designer was not a reference to the freedom of a particular party but to the degree of choice a designer would have in creating his design. In other words the test was an objective one.
  • The “different overall impression” test was “different” and not “clearly different”.
  • The registered Community design should be compared to the infringing article. The informed user should reach an overall impression of the respective designs and then ask whether those overall impressions differed.
  • The alleged infringement should produce the same impression as the registered Community design, but only features that were the subject-matter of the registration should play a part in the assessment of the overall impression.

In Guild v Eskander Ltd [2002] EWCA Civ 316, the claimant brought an action for infringement of copyright and/or design right in respect of designs for three garments namely a shirt, jumper and cardigan. The defendant succeeded on appeal and the Court of Appeal ruled that he had not copied the designs. Considering the originality of the defendant’s designs, the Court of Appeal questioned “... whether all, not just any one or more, of the additional features [gave] rise to the requisite quality of originality”. The court held that even if substantial parts had been copied, a design could still be original if (taken as a whole) it was new, was significantly different and the result of the independent work of the designer. Further, it did not matter whether an additional feature resulted from a mistake, although the inclusion of a mistake might not be significant in terms of the input of labour, it could be the product of skill and could contribute to the originality of the design.

In Lambretta Clothing Ltd v Teddy Smith (UK) Ltd and another [2004] EWCA Civ 886, the Court of Appeal held that a design illustrating the choice of colourways for a standard garment (as set out below) did not qualify for design right protection. Further, the court determined that neither could the design be protected by copyright on the grounds that the colourways were surface decoration and not part of the shape or configuration. As a result, an action for UK design right infringement failed. This case pre-dated the Community Design Regulation (2002/6/EC) (CDR) and its facts would have been treated differently if the Community design right had been available at the relevant time. Community design right protects the design of the appearance of the whole or a part of a product resulting from the features of, among other things, the colours of the product itself and/or its ornamentation.  

By contrast, in Abraham Moon & Sons Ltd v Thornber and others [2012] EWPCC 37, 5 October 2012, the Patents County Court (as it then was) considered copyright protection in the claimant’s design of woollen plaid fabric for upholstery and furnishing. The court held that it was infringed by the defendants’ fabric. The judge concluded that the claimant’s designer had employed considerable artistic skill, labour and judgment to produce its design, and found the defendants’ design very similar. He rejected the defendants’ argument that their fabric had been designed independently. The judge held that the claimant’s design instructions to set up the loom known as the “ticket stamp” was a literary work and infringed by the defendants’ ticket stamp. It was also a graphic work as it was a record of a visual image and therefore an artistic work infringed by the defendants’ fabric. The judge held that there was no defence under section 51 of the Copyright, Designs and Patents Act 1988 as the claimant’s design represented “surface decoration” and was consequently excluded from this provision. 

In Madine (t/a Nico) and another v Phillips (t/a Leanne Alexandra) and others [2017] EWHC 3268 (IPEC), 13 December 2017, The IP Enterprise Court (IPEC) held that unregistered UK design right in two designs for wedding dresses was infringed by a wedding dress made by the defendants and through dealing in china figurines of a girl wearing such a dress. 

EU Community design right

The Community Design Regulation (6/2002/EC) introduced two forms of Community-wide design protection:

  • Unregistered design right. This right has been available since 6 March, 2002 and confers automatic protection for three years from the date on which the design is first made available to the public within the EU. It provides the holder with the exclusive right to use the design and prevent unauthorised deliberate copying.
  • Registered design right. This right has been administered by the EU IPO (formerly known as the Office for Harmonisation in the Internal Market (OHIM)) since 1 April 2003. It provides the holder with the exclusive right to use the design and prevent unauthorised use. The maximum term of protection is 25 years (secured in renewable tranches of five years).

The availability of Community design rights has presented designers with a new way forward. Although the unregistered Community design right lasts for only three years, this will in many cases be enough to protect the lifespan of the design.

For the purposes of fashion, the following aspects of the Community Design Regulation are worthy of note:

  • The wide definition of design namely “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation” (Article 3(a)).
  • The term “product” includes not only industrial or mass-produced items but also handicraft items (Article 3(b)).
  • Designers should be aware that a design will only be protected under the Community Design Regulation to the extent that it is “new” and has “individual character” (Article 4(1)).
  • A design is considered to be “new” if no identical design has been made available to the public before its filing or priority date, in the case of a registered Community design or before the date on which the design was first made available to the public, in the case of an unregistered Community design. Designs are identical “if their features differ only in immaterial details” (Article 5).
  • A design will have individual character if “the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public” before the filing or priority date, in the case of a registered Community design or before the date on which the design has first been made available to the public, in the case of an unregistered Community design (Article 6).
  • The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design, considering: the nature of the product to which the design is applied or in which it is incorporated; the industrial sector to which the product belongs; and the degree of freedom of the designer in developing the design.
  • The Community registered design is subject to a 12-month “grace period” (Article 7). Any disclosure made by the designer in the 12 months before the filing of the application is not taken into account when deciding whether a design is new.

In Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd, Case C-345/13, the ECJ largely followed the Advocate General’s opinion (see Legal update, Advocate General’s opinion on interpretation of Community Designs Regulation) and ruled that the assessment of whether a design had individual character under Article 6 of the CDR had to be conducted in relation to one or more specific, individualised and identified designs from among all the designs which had been made available to the public previously, and not a combination of features taken in isolation and drawn from a number of earlier designs, as Dunnes had contended. Regarding Article 85(2) of the CDR (which sets out provisions on the presumption of validity of Community designs) the ECJ rejected Dunnes’ contention that the right holder of an unregistered Community design had to prove that the design had an individual character within Article 6 in order for the design to be treated as valid. The ECJ held that the right holder need only indicate what constituted the individual character of that design, meaning that the holder should indicate what, in its view, were the element or elements of the design concerned which gave it its individual character. 

In PMS International Group plc v Magmatic Ltd [2016] UKSC 12, 9 March 2016, the Supreme Court rejected an appeal by Magmatic Ltd, who manufactured and sold the “Trunki” ride-on suitcase, against the Court of Appeal’s decision that the respondent’s ride-on suitcase did not infringe its Community registered design (the CRD). The Supreme Court agreed with the Court of Appeal that the High Court had erred by failing to find that the overall impression created by the CRD was of a horned animal, failing to take account of the lack of ornamentation on the CRD’s surface and ignoring the colour contrast in the CRD between the body and the wheels. Given these errors, the Court of Appeal had been entitled to reconsider the question of infringement and find that the respondent’s suitcase gave a different overall impression to the CRD. Lord Neuberger also refused Magmatic’s request to refer a question to the ECJ on whether absence of ornamentation could be a feature of a Community registered design, holding that the issue did not arise in the appeal and that the point was not arguable since minimalism could self-evidently be an important aspect of a design.

Community design rights have been used to good effect by a number of fashion houses. Both Jimmy Choo and Chloë have attracted the attention of the national press for their effective use of design rights to remove cheap copy versions of their designs from the UK market.

Hague Agreement

The EU has since 1 January 2008 been a party to the Hague International System for the registration of designs. This system provides the owner of a design registered in a participating territory with the possibility of having that design protected in one or more of the territories of the other contracting parties to the Hague Agreement by filing one application with the World Intellectual Property Organisation (WIPO) in Geneva with one set of fees. The owner of a design who elects to use the Hague System may choose or designate the countries in which protection is required and can designate all of the EU as one territory and so use the system to obtain a Community registered design at the same time as registrations in other participating territories. The system provides the owner of a design with a bundle of rights in the chosen territories which are administered and renewed through a single registry in Switzerland, WIPO. As such, the system enables owners of design rights to streamline and simplify the way in which they obtain and maintain their registered designs.

(An application for an international design may currently be governed by the London Act 1934, the Hague Act of 1960, the Geneva Act of 1999 (together the Hague Agreement), or any combination of these depending on whether the country in which the applicant resides, or is a national of, is a signatory. However, in order to simplify the system, with effect from 1 January 2010 the London Act (the earliest of the three Acts which make up the Hague Agreement) was frozen. Since that date, no new designations under the London Act have been recorded in the international design register; designations made before that date have not been affected. This change will place greater emphasis on the Geneva Act and reduce the complexity of the system, as there are a number of differences between the London Act and the later Acts. In August 2016, the Director General of the World Intellectual Property Organization confirmed that the London Act 1934 would terminate on 18 October 2016. 

Since 23 December 2010, international design registrations have been renewable online using an electronic interface available on the Hague system website.

The UK ratified the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs on 13 March 2018. The Hague Agreement entered into force in the UK on 13 June 2018.

Ownership issues: copyright and design right

A fashion designer who produces a sketchbook of designs of dresses, skirts and tops for the next spring/summer collection, taking his/her influences from the colours and trends in the market place supplemented by his/her own creativity and flair, produces a sketchbook of artistic works for copyright purposes. But, who owns the rights in the work?

Copyright and design right are assets which may be produced during the creation of a design. But it does not follow that the designer will be the owner of those rights/assets. The following chart gives a brief summary of some of the issues which may arise:

ipfashiondevelopment

The Intellectual Property Act 2014 included changes to the ownership of commissioned designs for registered and unregistered design right, which came into effect on 1 October 2014. Section 2 changed the rule in section 215 of the Copyright, Designs and Patents Act 1988 (CDPA) that the commissioner of unregistered design right is the first owner, so that it will instead be the designer. Section 2(3) provides that the section shall not apply to any design created before the commencement of the section or any design created after the commencement date, irrespective of when the design was commissioned, if the designer and commissioner have entered into a commissioning contract and the contract was entered into before commencement.

Section 6(1) of the 2014 Act made the same change for registered designs (by amending section 2 of the Registered Designs Act 1949). The Intellectual Property Act 2014 (Commencement No.3 and Transitional Provisions) Order 2014 (SI 2014/2330) provides that section 6(1) does not apply to any designs created before 1 October 2014, or created on or after 1 October 2014 in pursuance of a commission (irrespective of whether the design was commissioned before, on or after that date) provided they were created pursuant to a contract between the designer and the commissioner entered into before 1 October 2014.

Record of idea: copyright and design right

The question of ownership of copyright or design right typically arises in the context of complaining that a third party has copied or plagiarised a design. Before enforcing its rights, a designer will need to be able to show, first, that there is copyright or design right in the design and, secondly, that he/she or a relevant company owns the relevant rights. How can a designer enforce its rights?

Document trail

Unregistered design right and/or copyright infringement occurs when a third party copies someone else’s work. Keeping a document trail that records the creation process is important to show the existence and ownership of rights in the original work. A good document trail will show the originality of the work, record the date of first creation and reveal any subsequent amendments. It should also demonstrate how the idea evolved into a tangible product.

A document trail consists of all preparatory materials such as copies of sketches, documents, products, and research materials which were created or consulted during the creative stages for inspiration are relevant. The following list indicates the types of documents which might be produced during the creative process.

  • Notes that demonstrate or record the brainstorming process. These will be helpful in showing how the idea turned into a tangible product.
  • Sketch books, day books and other contemporaneous records made by the designer which both date and demonstrate the evolution of the design, including the proverbial “scribbles on a paper napkin”.
  • Records of meetings and attendance notes of significant telephone conversations which relate to the design process.
  • Copies of e-mails, letters, faxes and internal notes which, for example, suggest amendments and/or improvements.
  • Written reports reviewing the development of the work and/or recommending changes.
  • Dated and stamped or signed drafts (from the most elementary stage to the final product, including all intermediate versions) of all relevant materials.
  • Copies of the final artwork in hard copy and electronic form.

Ideally all of these materials should be safely preserved but in reality this is unlikely to be practicable. A more workable solution is for each designer or design house to devise its own system of documenting the internal design process. Evidentially, it will be helpful to show that a “course of conduct” has been followed and from the perspective of the designers working on a day-to-day basis, it will be easier to follow a system they feel comfortable with.

Practical steps

  • Use appropriate copyright notices. These put third parties on notice of a designer’s rights, such as the rights in a design drawing. These should take the form of “Copyright © – [name of copyright owner]” followed by the date of first creation (the year will be sufficient) for example “© Jane Brown 2007”. If a work has been amended, the original date and the amendment date should both be referenced in the copyright notice. 

  • Safely archive the original design drawings and intermediate drawings, both dated and stamped/signed. It is preferable, to the extent possible, to date and store every version of a document (including draft and final versions).

  • Consider creating a stamp to use on key documents to mark their importance.

  • Avoid circulating design drawings, sketches and other preparatory work to third parties.

    • Keep contact details for each designer/artist, including name and nationality, copies of employment or consultancy contract and any assignment.

    Patents

    Although patents may in some circumstances be slow and expensive to obtain when compared to other types of IP rights, they have been used to protect such known products as GORE-TEX® waterproof fabric and Speedo’s FASTSKIN® FSII swimsuit fabric as well as some of the Geox Groups’ innovative footwear. Patents are registered rights which should be sought on a country-by-country basis. In order to be granted, a patent application for an invention must be new (that is, not disclosed anywhere in the world prior to filing of the application), not be obvious and be capable of industrial application. Aesthetic creations, discoveries, scientific theories, methods for doing business or presentation of information are some of the things that are not regarded as inventions. If granted, a patent provides protection for 20 years from the date of filing and prevents unauthorised third parties from using, manufacturing, selling and importing the patented invention. Since an invention that has been disclosed is not patentable in the majority of countries, it is very sensible to speak to a patent attorney before making the invention known to the public.


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