Tim O’Callaghan is a partner in Druces LLP, specialising in advice to the fashion and luxury goods business. In this month’s column, he discusses copyright law and its relation to the lingerie industry.
“I even sent them the look-book and line-sheet ahead of my meeting with them!” said my client at the end of a long telephone conversation about a high street multiple who had copied her designs.
As is often the case, the designer, having met the design team of the high street giant and then forwarded copies of her designs ‘in confidence’, then sees her own designs advertised by the high street behemoth without them having so much as placed an order with her.
It is not an conversation that the intimate apparel solicitor has with his clients infrequently and yet there remain a few myths about the law in this area which it is worth periodically exploding.
Copying is rife in the fashion industry. Alas, not all designers have creative flare, there are even some retailers whose design process goes something like this: work out which new intimate apparel brand is doing well, find out which of that brand’s pieces are selling most, order one and send it to the factory to be copied, having first directed the factory to make some rudimentary adjustments in the hope of making the copying less blatant.
So what can be done to protect your signature designs from this fate? Lingerie designers are increasingly relying on their legal rights, and specifically design right protection, to stand up to the copiers.
Prior to the advent of European design protection in its various forms, designers would generally have to rely on copyright infringement as the only possible claim.
This inevitably limited the scope of any claim they could bring as copyright, whilst it should always be considered when ones designs have been ripped-off, is something of a blunt instrument, more suited to protecting plays than pyjamas, films than fun-suits; in the intimate apparel sector it only really affords protection to unique prints, patterns and the drawings from which the design is created.
If a competitor made and sold an exact copy of your uniquely appointed brassiere, the law of copyright is likely to be as much use to you as a pair of Spanx to Kim Kardashian. A far more effective weapon in your legal arsenal is design right protection, something that, in my experience, few designers know a great deal about.
So what form does design right protection take and how can designers make the most of it?
You may rely on one or more of the following:
1. UK unregistered design rights;
2. Unregistered Community design right.
3. UK registered design;
4. Registered designs at European Community level;
The first two forms of right exist automatically in respect of registrable designs. They therefore exist once you have created a design that is capable of registration. You need do nothing beyond creating the design to acquire the right.
The second two rights require you to actually apply for and obtain registration. There are also slight differences in what each of the rights protects and how long the protection lasts. Unregistered Community Design rights last for three years and the unregistered UK Design right for 10 years, whereas registered designs can give what are effectively monopoly rights for 25 years.
It is important to appreciate that for any of these protections to apply the design must be original and cannot be commonplace. A basic pair of tights, for example, would not be capable of protection.
The unregistered UK right protects the design of any aspect of the shape of the registrable design. The unregistered community design goes further, also giving protection to the colours, shape, texture, materials and embellishments of the garment. It is therefore generally a more useful right to assert.
As the two forms of registered design give substantially the same protection as their unregistered counterpart, many designers are understandably prompted to ask why they should bother to go for registration at all. After all, 25 years protection of a design is generally more than is really necessary in the fast changing world of fashion, and why go to the cost of applying?
There is no stronger form of legal protection for your designs than registered design right. If ever you find someone has copied your designs, having a registered design number and certificate for your lawyer to wave under their nose will often be the beginning and end of any infringement action.
Having a registered design also has the great advantage of helping to settle disputes almost as soon as they arise by discouraging the copier from going to the expense of defending a claim.
There is an additional benefit to registration; having a portfolio of registered designs makes your business more attractive to investors and potential purchasers. They like to see actual proof of the business’s intellectual property assets.
Registering your designs and enforcing those rights will also result in your brand acquiring a formidable reputation in the marketplace; no bad thing in these days when, notoriously, factories can make knock-off copies of designs within a fortnight of the originals appearing on the catwalk.