Creativity in fashion: the complex effects of Intellectual Property
By William van Caenegem and Violet Atkinson, Bond University
In Muscat v Le, (1) Finkelstein J said (2):
Fashion is a multi-billion dollar industry that has no national boundaries. The segment of the market that caters to the young is
extremely lucrative. Fashion designers are creative people; they want their clothing to be distinctive and appealing.
The fashion industry is an important part of the domestic economy currently worth $12 billion,(3) but also a revenue earner of increasing importance for Australian exports. Foreign Minister Julie Bishop, when discussing the importance of nurturing Australian fashion design talent on an international scale pointed out that, "... [a] flourishing fashion industry means economic growth not only in Australian but also throughout our region".(4)
The Australian fashion industry is too often overlooked as a real creative industry. The success of Australian designers such as Zimmermann (5) and Sass & Bide (6) proves that this is a significant misconception and undervalues fashion design as a generator of future intellectual capital (IC). Unlike the extractive industries, the IC in fashion design is an inexhaustible future resource. Intellectual Property (IP) protection of fashion design is therefore an important topic.
In this article we examine the basic structure of legal protection in the fashion industry. By its nature fashion is both creative and cyclical, which presents particular challenges for lawyers and policy makers. We find that although the design registration system is the most suitable for fashion design, factors of cost and delay detract from its practical utility.
Outline of IP protection for fashion design
We are concerned here with the design of garments, excluding for present purposes apparel, shoes, belts, bags and the like. Nonetheless we must at times extrapolate from rules and decisions concerning such items as there is a paucity of decisions about garments as such.
Designs registration is generally recognised as the protection regime best adapted to creative fashion. It is the one area of IP law that is intended to protect a product, in this case a garment, in its entirety. Although copyright in original underlying drawings or patterns could perform a similar function, the exclusion of copyright protection for the shape and configuration of a garment severely limits its practical importance. (7) IP rights might also vest in bolts of fabric.
Trade mark piracy is not what concerns us here, as we focus on elements such as patterns, shapes and fabric stitching of garments. However, the fact that it is possible to trade mark patterns such as the famous Burberry check; to trade mark colours such as the red Louboutin sole; or perhaps to trade mark the distinctive shape of a garment such as the uniquely Australian Driza-Bone oilskin coat -- presents some opportunities to fashion designers to rely on trade mark registration in relation to visual aspects of their work. This topic is further examined below by reference to some recent cases.
Finally, the law of passing off (s 18 of the Australian Consumer Law) may be relevant where a competitor so closely imitates a garment that consumers conclude that it comes from the same source as the original.
- Copyright protection is plagued by overlap issues and other complications.
- To protect a complete garment comprising its aspects of shape, colour and cut, the designs regime is the most appropriate option.
- The registered design option has issues of uncertainty, the most significant involving the "informed user" who, according to the latest case law, may be anybody from a user (consumer), to a sales assistant, to an expert designer.
- The cost of design registration for fashion is an issue, particularly for most of Australia's up-and-coming design houses which are small and medium-sized enterprises (SMEs). Because the fashion innovation cycle is very short (usually six months) and because fashion houses usually produce whole collections consisting of many individual pieces, the overall cost of design registration quickly mounts up.
- One alternative that may be particularly suitable (8) for fashion is the European unregistered design right (UDR) system, which applies only to cases of deliberate copying and is short term (3 years maximum).
- The recent ACIP Options Paper recommends against this approach, citing uncertainty of ownership, the risk of undermining the registered design system, and the ability to lodge one application including multiple articles. (9) However, at present there is no discount for multiple designs in one application (10) and the up-front formalities check fee per item is $350.00 (no examination). If a collection concerns 30 items then this would amount to $10,500 -- multiplied by four collections per year, equals $40,000 per year. This does not include any attorney fees. Faced with these sums it would seem that, to support the important, growing fashion design industry in Australia the introduction of a UDR system should be reconsidered.