Hey! Hands off my IP! (Design Rights)

Continuing with the Hey! Hands off My IP series, October’s blog post looks at the benefits and drawbacks of design rights for fashion brands, and asks whether it really is worth pursuing a registered design right in the fashion industry.

Vintage Courreges shades

An iconic sunglasses design from the 60’s space age designer, Andre Courreges

What are design rights?

Design rights protect the appearance of a product, or part of the product, enabling owners of the design to enforce their rights against anyone using the design without consent.

Under English law, you can have a registered or unregistered design right and rely on either for protection. However, registered design rights offer more protection. A registered design right lasts for up to 25 years (subject to renewal every 5 years), whereas an unregistered design right is only valid for either:

  • 10 years from first marketing the product made to the design; or
  • 15 years from creation of a design document

whichever is shorter.

If relying on an unregistered design right, the right doesn’t actually come into existence until the design has been recorded in a design document, or an article has been made to the design.

Records

Record everything!

Designers should therefore always sign and date their design documents. Records should be kept of the design document and the design process, and the date of first marketing of articles made to the design should also be recorded. These will be needed if your design is infringed in order to prove the date from which the right exists and that it is still valid.

Design right criteria

For both registered and unregistered design rights, a design must be:

  • made up of a shape or outline of the whole or part of an object;
  • original and have individual character, which means that it cannot be common; and
  • recorded in a design document or be the subject of an object made to the design.
Fashion design 1

Even a rough sketch of your design will be a sufficient record

To be protected by unregistered design right, a design must not be:

  • a method or principle of construction;
  • comprise features of shape or configuration of an object which:
    • enable the object to fit with another object so that either object can perform its intended function; or
    • are dependent upon the appearance of another object, of which the article is intended by the designer to form an integral part; or
  • be a design for surface decoration.

For all of you legal buffs out there, the relevant statute is the Copyright Designs and Patents Act 1988 and the above criteria and restrictions can be found at section 213 here.

What can’t be registered

There’re always some restrictions on what can and can’t be registered, here are some of the main ones:

  • hidden parts (parts which can’t be seen once the product is made);
  • features which are needed to allow the object to perform a technical function; or
  • designs which go against public policy or morality.
Restriction

Don’t forget to consider the restrictions before applying to register a design

Why register?

Apart from being easier to prove than an unregistered design, and the fact you have 10, possibly 15 years more worth of protection, other benefits of registering as opposed to simply relying on unregistered rights are:

  • Speed: Protection starts from the application date. Registration is likely to take place within two months of filing the design with EU Intellectual Property Office.
  • Geographical scope: With a registered Community Design, the right provides EU-wide protection with the possibility of further international protection.
  • Enforcement: A pan-European injunction may be available and is a cost-effective way of protecting a design in a number of different markets.
Speed

The registration process is fast, unlike registration of other IP rights

What do I need to do to register a design right in the UK?

It’s always worth doing a clearance search first to check there isn’t a similar design right registered in the territory you’re looking for protection in. However, unlike with trade marks, the examiner assessing your application doesn’t notify owners of those designs, which could be deemed similar. Instead it would be up to those owners to check on any design rights potentially infringing their earlier rights and challenge on the basis of infringement. This means the registration process is fast!

If you elect to have a clearance search carried out, once you have the go ahead, you can register a design with the UK Intellectual Property Office for UK-wide protection only, or with the EU Intellectual Property Office for EU-wide protection in all 28 Member States. A registered Community Design (EU-wide) is more expensive, but obviously offers much more protection than registering in the UK only.

As with all IP rights, it’s really important to get an expert involved to avoid any nasty pitfalls. Be sure to therefore instruct a lawyer to carry out any clearance searches and register the designs for you – not only that, it takes the hassle away from having to do it yourself!

Register

Registering a design right can be hugely beneficial, but be sure to consider your individual circumstances to assess whether it will work for you!

When should I apply to register my design?

An application to register a design should be lodged prior to publication, ideally the day before, or the same day that the design is showcased to the public.

Is it worth a fashion designer applying to register a design?

As an early stage brand unless you are likely to re-use the design, collection after collection, season after season, then it’s not worth registering a design in the fashion industry. Doing so could be extremely costly given the amount of individual designs one collection will produce and the amount of collections a brand will show during its lifetime!

However, that said, some designers do re-use particular designs as a sort of trade mark of their brand. Take for example Chanel’sBoy Chanel” iconic handbag, or Dior’sFuturist Boots” from Raf Simons’ Spring/Summer 2015 collection.

Chanel boy bag

Chanel’s iconic “Boy Chanel” handbag registered design

At this particular show, Simons exposed a supernatural fashion crusade between past, present and future, which was inspired by David Bowie, who provided a soundtrack for the psychedelic looks on the runway. On his design, Simons commented, “This season, the Dior couture woman will walking on diamonds on the soles of her shoes”, pure poetry!

With such an iconic design, and given the magnitude of the design house itself, it’s no wonder that the House of Dior Couture wanted to protect this particular design.

Dior Futurist Boots

Walking on diamonds, here’s an example of Dior’s “Futurist Boots” registered design

If however, you think a particular design will only be shown once in one collection, or isn’t likely to become iconic of the brand itself, copyright is perhaps a better intellectual property right to rely on to keep costs down. See my previous post, “Hey! Hands off my IP! (Copyright)” for more info.

FTL verdict

When protecting designs, here are some really useful practical steps to consider, whether relying on unregistered or registered design rights, or copyright:

Fashion design sketch 2

It’s always a good idea to keep documented evidence of your designs, whether you decide to apply for registration or not

  • Use appropriate copyright notices. These put third parties on notice of a designer’s rights, such 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 “© Sarah Simpson 2007”.
  • Safely archive the original design drawings, with dates and stamps/signatures.
  • Think about creating a stamp to use on key documents to mark their importance.
  • Avoid circulating design drawings, sketches and other prep work to third parties.
  • Keep contact details for each individual designer or artist working for you, including their name and nationality, copies of their employment or consultancy contract and any assignment documents.
  • Have the above documents checked by a lawyer to ensure it is the brand that owns the designs and not the individual designer – this is particularly important where designers are engaged with the brand on a consultancy basis, rather than employed by the brand.
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Naughty Gucci!

FTL’s newest post features a recap on an interesting US copyright infringement issue. This involved super-brand Gucci and occurred during a showcase of its Spring/Summer ‘16 collection.

The grudge arose when Gucci’s models walked down the catwalk in New York wearing golden nail rings highly similar to those designed and created by jeweller Bijules.

Gucci 1

Gucci’s Spring/Summer 2016 show

All about nail jewellery

Bijules is a famous jeweller renowned for its signature nail rings, with ambassadors such as Rihanna and Beyoncé flying the flag for the brand.

As we know from the last “Hey! Hands of my IP!” post on copyright, which you can find here, unlike copyright protected by English law, copyright in the US is a legally registerable right.

Bijules protected its copyright in the ‘Bijules Serpensive Nail Ring’ and ‘Bijules Serpensive Nail Ring II’ by registering them with the US Copyright Office in 2007. To view the registrations, type “Bijules” into the search box of this link.

Bijules 1

Shock horror! One of the fashion big boys ripping off an up and coming accessories designer – think of the publicity Kim!

Bijules bites back

Bijules founder, Kim Jules, stated that she may consider bringing proceedings against Gucci for copyright infringement following their use of the nail rings and commented:

“While it is an honor to be knocked off by Gucci, they have all of the resources to create something unique; instead they went back to something that’s steadfast and iconic of my company and that is unjust. If Gucci sells those nail rings to stores, those stores are going to believe Gucci made them and not me, and that is not a fair statement.”

Gucci 2

Although his designs are beautiful, Gucci’s creative director Alessandro Michele is under fire for allegedly copying the New York based designer, Kim Jules

Jules also pointed out that Gucci Creative Director, Alessandro Michele, was aware of Bijules and their nail rings.

Here’s an example of the original Bijules designs:

Bijules 2

The Bijules original…

and here’s an example of Gucci’s later versions:

Gucci rings

…and a highly similar Gucci rip off!

Too close to warrant coincidence methinks!

A slap on the Gucci “Bijuled” wrist?

To date Kim Jules has not brought formal proceedings against the Italian fashion power house, and there doesn’t appear to have yet been word on whether Gucci will be making the nail rings available for retail sale.

FTL comment

Perhaps Gucci has taken note and won’t be progressing its “Gujuled” nail rings! Perhaps Kim Jules doesn’t think pursuing this would be commercially worthwhile…

Gucci 3

Gucci showcasing its accessories at Milan Fashion Week – S/S16

In any event, this is a great reminder that you should never ever try to pass off another’s design as your own. You will be found out!

A tut tut to Gucci who should know better!

Hey! Hands off my IP! (Copyright)

As promised, FTL is continuing with the “Hey! Hands off my IP!” series of blog posts. The first post in the series was on trade marks, you can access it here. Next we take a look at copyright.

It’s a common error to mistake copyright as a registerable right and get it confused with a trade mark. This piece aims to demystify the differences, provide greater clarity on copyright and explain why it’s a useful tool for those in the fashion/fash tech industries.

 

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Protect your designs and avoid copyright infringement by reading on…

What’s copyright?

Contrary to some general public perception, copyright cannot be legally registered in the UK, which is one of the key differences often confused with a trade mark.

Recently when listening to the radio (yes I’m a retro gal!), I heard numerous presenters assuming that certain objects, lyrics and recipes need to be registered to attain copyright. WRRRRONG!! This really infuriates me…

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Glued to my radio!

Copyright automatically arises on the creation of a Work. An idea alone cannot generate protection, the idea must be Recorded to become protectable under copyright. The Work must also be Original.

What does it mean to be a Work, Recorded and Original?

A Work: to be classified as a Work, the piece must fall within one of the following categories (for the legislation buffs out there, the relevant statute is here):

• a literary, dramatic, musical or artistic work;
• a sound recording, film or broadcast; or
• the typographical arrangement of a published edition.

For those in the fashion industry, this could include sketches of new clothing, handbag designs, shoe drawings, photographs of mock-ups or photos of the final product for example. However the garments themselves would not generally be protected by copyright, as it would be hard to drop them into one of the above categories.

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Copyright would exist in these very designs!

It’s worth noting that in other countries, garments can be protected by copyright due to their more openly drafted laws on copyright. This is the case in France, Germany and the US and was how Bijules could register its nail ring for copyright protection in the US.

Fixation: A further hurdle to leap before copyright protection applies is that the Work must be fixed. This means the literary, dramatic, musical or artistic work, for example, must be put “in writing or otherwise” (section 3(2), Copyright designs and Patents Act 1988, or CDPA for short!).

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“Record” everything to achieve fixation!

Originality: Finally, the work must be Original! It’s no good copying someone else’s work and then claiming copyright in it – that won’t work!!

Interestingly, it’s not necessary for the whole piece to be original for copyright to exist. Generally, the level of originality required in the UK is low; for example, copyright in calendars and competition cards have been accepted in the UK.

For fashion photographers, originality of photographs has raised questions, but European law states that:

“Photographs which are original in the sense that they are the author’s own intellectual creation shall be protected… “

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Photographs are able to achieve copyright protection. Follow the steps outlined above to ensure they’re safe!

Who owns copyright?

Normally the owner of copyright within a Work will be the creator. However Works created in the course of employment by an employee will usually be owned by the employer, due to express terms in the employee’s contract.

Also, where a piece is commissioned, let’s say Vogue UK commissioned the famous milliner Philip Treacy to create an exclusive design as part of the 2016 100th year anniversary, it’s unlikely that Vogue would fail to formally contract with Treacy to secure Vogue’s ownership of any copyright in the design. So here, the commissioning party will typically own the copyright.

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Philip Treacy’s amazing creation for the late Alexander McQueen’s Spring/Summer 2008 collection. Wonder if Treacy was commissioned by McQueen and if so, who owned the copyright!?

How long does copyright last for?

Copyright exists from the moment a work has been created. The duration of this depends on the type of work created, by way of example, an artistic work affords protection for 70 years from the death of the author/creator.

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Vogue is celebrating its 100th year this year! Continuing the theme, copyright even exists in these vintage Vogue covers dating all the way back to 1916, provided the date of the author’s death was not before 1946 of course!

What rights does copyright give the owner?

The copyright owner has the exclusive right to do the following with the Work:

• copy it;
• issue copies to others;
• rent it out;
• perform, show or play it in public;
• communicate it to the public; and
• make an adaptation.

Are any rights reserved for a creator who may no longer own the Work?

The author automatically acquires a number of moral rights in relation to their Work including rights:

• to be identified as the author;
• to object to derogatory treatment of the Work; and
• not to have a Work falsely attributed to him or her.

What happens when someone breaches copyright?

Copyright is infringed if, without the permission of the owner, someone does, or authorises another to do, any of the acts that are exclusive to the copyright owner as outlined above.

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Universal sign for copyright. Stamp on all of your works capable of copyright protection to warn off any copyright thieves!

This can apply to the whole of the Work or only part of it and relates to direct or indirect infringement.

Round up

Being an automatic right, and not one that can be legally registered in the UK, copyright can often be difficult to prove. For example, a startup fashion business may create a wonderful design, which is then totally ripped off by large corporate retailer. The startup may not have filed evidence of its creation, which would prove originality prior to the date the corporate giant made a copy. The startup would therefore find it difficult to its ownership of the Work.

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Although your studio may only have humble beginnings, be sure to record your original works to benefit from copyright protection!

What can be done?

A way around this is to record and keep dated copies of your file drawings, plans and photographs. This will then go some way to prove you are the owner and that the Work does not belong to those trying to steal your work!

Copyright can be mind-boggling and legal advice often needs to be tailored on a case by case basis. If you’ve hit a copyright wall and don’t know where to turn, contact FTL via the contact me page.

Until next time…