Protection of Unregistered Fashion Items

Most fashion items are unregistered. There are still other means to prevent copying.

Fashion industry is a typical example of an industry where expression and inspiration flourish. Where there is expression, imitation and copying usually follow. Every day designers come across situations where the results of their creativity are copied by rivals.

Since the fashion industry is characterized by a rapid change of trends, fashion designs have not always been protected and the focus has been more on creating new designs rather than spending time and money on registration.

Most designers see the widespread copying as a solely negative thing. Blatant and slavish copies unfairly use the resources of the original designers. On the other hand, others see taking inspiration from other designers as a valuable characteristic to be preserved. Some designers even see copying as something that benefits the industry as a whole by pushing the fashion cycle forward.

Most Fashion Items are Unregistered

Combining these two perspectives is sometimes difficult. It is clear that some fashion items are truly original designs that need to be protected. Conversely, extending the protection too far will hinder creativity and limit the freedom of expression of designers.

If a fashion item is registered as a registered design or a trademark, the situation is quite clear. The registration holder clearly sees the applied design or trademark as novel and worth protecting.

The registration is published in a public register of designs, and others can search the database and national registers to find out if the design or trademark is already taken.

However, most of the fashion items are unregistered, i.e. not registered in any form. Are there any other means to prevent copying than registering your design?

Copyright as a Form of Protection

The primary form of protection for fashion items has traditionally been copyright. In order to be granted protection, the fashion item must be a product of intellectual creation: it must be an original outcome of the author’s independent creative work. This gives also plenty of room for interpretation: what is the threshold of originality for fashion items?

Clothing must fit the human body and consequently, this obliges the designer to use certain forms. With regard to functional products, such as fashion apparel, the threshold of originality for copyright protection is traditionally set quite high. It is clear that haute couture, which is constructed by hand and made-to-order for clients, usually passes the test. But is everyday clothing, such as ready-to-wear jackets, shirts or trousers, entitled to copyright protection?

For some elegant argumentation, consider the fashionable French. French Courts’ rulings often contain a very specific evaluation of the features and elements of the contentious fashion design. The French courts quite often find fashion designs protectable by copyright with the exception of those designs that clearly are unoriginal.

For example, the Court of Appeal Versailles considered that a sleeveless tunic top was entitled to copyright protection. The Court found that even if the elements, when evaluated separately, are considered usual and common and thus belonging to the public domain, their combination might still be original enough to constitute a creative esthetical work, which features the author’s personality. The Court confirmed that the tunic top was entitled to copyright protection.

Jackets and Bracelets Protected

Swedes, too, are considered pretty fashionable. Svea Court of Appeal considered that the Fjällräven “Expedition Dun” jacket, evaluated as a whole, was entitled to copyright protection. Finnish Supreme Court has tried cases of copyright in applied arts on several occasions and has come to the conclusion that for example bracelets (KKO 1962 II 60) and jewelry designs (KKO 1980 II 3) can be protected by copyright.

The Finnish Copyright Council has confirmed in several cases that products of artistic handicraft and industrial art can be entitled to copyright protection if they (despite their practical purposes) can be considered as works of art.

To summarize, the threshold for copyright protection for fashion items is set quite high. If the creative input of the designer has been substantial, and the result is independent and original, the design is probably protected by copyright. This extends also to “normal” fashion items.

The fact that a fashion object has an utilitarian purpose (such as a jacket designed to keep you warm during the winter) does usually not influence the evaluation of originality. Everyday items can also be original in the copyright meaning, but this requires that there is something original that differentiates them from other known designs. On the other hand, if the fashion article does not meet the originality requirement, the copyright protection does not apply even if the fashion item was copied.

UCD to the Rescue

Failure to register designs previously left only few opportunities to protect the copied design in the EU since the only form of protection which did not require registration was copyright. As stated earlier, the threshold for copyright protection is set quite high.

A major amelioration from the point of view of fashion industry took place when the Unregistered Community Design (UCD) was introduced in the EU. The UCD is obtained without registration. A fashion designer has therefore two choices: to register a new design before its commercialization in order to obtain a Registered Community Design (RCD) or to commercialize the design directly without registration. In the latter case, the designer relies on the protection given by a UCD or copyright.

In order to be protectable as an UCD, a design must be new. It cannot be identical to any existing design and it must have an individual character. The UCD is obtained automatically and it provides protection for a period of 3 years from the date on which the design was first made available to the public within the territory of the EU. Protection will apply in all Member States of the EU and it cannot be extended.

During the 3-year period, the UCD confers to fashion designer an exclusive right against copying by protecting the overall appearance of the design, excluding however those features that are dictated by mere technical function. A fashion designer must show that his design was intentionally copied to enforce his rights. UCDs grant the right to prevent the commercial use of a design only if the design is an intentional copy of the protected one and made in bad faith. In this sense, the UCD does not establish a monopoly, it just prevents copying.

Of course, there are considerable advantages of registering your design. By registering the design as a Community Design, the validity period is longer (max 25 years). Furthermore, RCDs are protected against similar designs even when the infringing design has been developed without knowing of the existence of the earlier design. One of the major advantages of RCDs is that registering provides you with a certificate, which makes it easy to prove ownership and tackle fakes and infringing products.

Inspiration or Infringement?

In order to be protected by copyright, fashion items have to be independent and original. The threshold of protection varies quite a lot between different countries. UCDs protect fashion items from copying in bad faith, provided that the design is not identical to any existing design and it has an individual character.

RCDs are a very effective form of protection, but in the rapidly evolving industry, everything cannot be registered. Strategically, designers should focus on creating a comprehensive IP portfolio: trademarks and RCDs can be used effectively to protect the intellectual investments made. Furthermore, registered IP rights can also be a valuable property that can be licensed, mortgaged or sold. Still, it is good to know that forms of protection exist aside from IP registrations.

Finally, how much of a previous design can one use before inspiration becomes infringement? This is a difficult question and unfortunately there is no simple answer. If there is a previous design registration, the overall impression of the designs must be compared. As copyright is typically not registered, the evaluation can be even more difficult. In difficult cases, experts’ opinion can be valuable and reduce the possible risks in the ever-changing fashion industry.

Antti Innanen
Associate

Sanna Soukko
Group Trainee

Attorneys at law Borenius Ltd
Helsinki