Designer handbags and accessories are a rife source of ‘inspiration’ for copycats. Krystil Carter breaks some commonly held myths by designers, and offers advice for the retailers who stock them.
Myth 1 – ‘My work is protected by law because I created it.’
Broadly speaking, there are two areas of law that protect designs in Australia – registered designs and copyright.
Many designers assume their creative work is legally protected simply by virtue of the fact they created it (and a lot of it is).
But many designers would be quite surprised to learn that legal protection falls away in certain circumstances, unless the designer has taken positive steps to protect it (this is referred to as the ‘copyright/design overlap’).
The overlap is based on the following premise: copyright laws will generally protect a designer’s artistic work until the artistic work is mass-produced (i.e. production of 50 units or more).
At that point, if the overall design of the artistic work could have been registered under design law, copyright protection falls away for the original artistic work. This means that if it was a design that could have been registered, but wasn’t, the design is without protection under copyright and design law.
If a product is not protected under copyright or design law then it can only be protected under the law of ‘passing off’. For a garment to be protected by ‘passing off’ it must have acquired a significant reputation in the marketplace such that consumers would recognise it as emanating from the original designer.
Myth 2 – ‘Copying is completely outlawed.’
There’s a common myth that copying another designer’s work is completely outlawed. Designers need to be aware that copying is only outlawed if the designer’s work is protected by law, and not all designs are protected. If the designer’s work isn’t protected by law (for example, patent, design, copyright, trade marks or passing off), then the design is, generally speaking, free to be copied by others as long as the source of the product has been distinguished by adequate labelling.
Myth 3 – ‘General rules can be followed so I won’t be considered to have copied another’s design.’
I’ve been asked a few times from designers if there are general rules or guidelines they can follow to ensure they don’t cross the line from being ‘inspired by’ to ‘copying’ someone else’s work. One person even said to me, ‘is it true if I only copy 10 per cent of another’s design, I’m not copying?’
Rules like this just aren’t true. From a legal perspective, there really are no general rules in these areas of law. This is because when the courts consider whether a design has been copied, it has to consider the garments in front of it.
The assessment of whether a design has been copied is a very qualitative and subjective assessment. So designers shouldn’t be fooled into thinking general rules exist. What designers should know is that if they take a significant part of the garment, they are taking a risk. For instance, the ‘significant part’ of a pair of jeans could be the pocket.
How can this be avoided? Well, there are a few lessons for designers:
• don’t assume your garments are protected merely because you created them – get expert legal advice so you know the position regarding which laws protect your garments.
• because a design doesn’t always have automatic legal protection, designers should take steps to protect what they do have. Again, get expert legal advice so you can take steps to protect your creativity and hard work.
• don’t assume you can always rely on copyright laws to take action against a copycat. As discussed above, in certain circumstances copyright laws will not protect designs.
I’m a retailer: should I check my garments aren’t copied before purchasing them?
I’ve been asked a few times from retailer clients of mine if there’s any legal obligation on them, as a retailer, to ensure the garments they purchase for their boutiques aren’t the work of a copycat. The answer is no – there’s no law in Australia which says retailers must check that the garments they purchase are originally designed. However, if it turns out the designs are copied, there can be very negative consequences for the retailer.
Firstly, if the original designer takes action, the original designer may be able to sue the retailer as well as the copycat. This would of course depend on the circumstances in which the copying arose, but retailers should be aware there is a risk that a lawsuit by the original designer may be started against them, especially where the retailer is on notice by the supplier that the supplier is supplying ‘knock-offs’.
Secondly, if a retailer has purchased stock that’s the work of a copycat and the copycat is later sued by the original designer, the lawsuit may have consequences for the retailer including that the copycat’s garments are to be withdrawn from sale (which may mean the garments in the retailer’s store have to be withdrawn without any compensation to the retailer).
Advice for the retailer: Putting the appropriate protection in place
Despite what’s said above, there are some very practical steps a retailer can take to protect itself against copycat suppliers. In particular, it’s crucial retailers ensure the agreements they have in place with their suppliers provide the appropriate protection including clearly drafted warranty and indemnity clauses.
The way these clauses operate in practice is that under the agreement, the supplier would promise the retailer that the garments it supplies don’t infringe anyone else’s intellectual property rights (this is the warranty clause). If this turns out to be false and some action is taken by the original designer against the retailer, the retailer would then have a contractual right to get any money lost back from the supplier (this is the indemnity clause).
So the lesson for retailers is do your homework – know who you’re purchasing from and satisfy yourself as to the integrity of the garments you’re purchasing, because ignorance is no excuse in law.
Krystil Carter is a lawyer of Melbourne-based law firm Gibsons Solicitors, which specialises in brand protection and enforcement, intellectual property and media and entertainment.