Melbourne is the fashion capital of Australia and is home to a large number of renowned designers, designers who spend a great deal of time and resources creating exclusive designs for the local and overseas markets. But the accessibility, quick turnaround and low costs of manufacturing garments in China has increased the prevalence of copy garments being available in the Australian marketplace.
With an ever-increasing amount of garment production now occurring offshore, copyists can get large quantities of garments manufactured and imported into Australia within a relatively short time span. The copies are being manufactured at such a fast rate that designers are now seeing copies of their original designs appearing in the market in the same season that their original garments are released.
In a recent Federal Magistrates Court case, evidence was given by one of the applicant’s witnesses where she described the process by which the respondent copied designs of well-known Melbourne designers. The deponent gave evidence that the owner of a Sydney fashion house took weekly shopping trips in Sydney to scout for and purchase samples of popular and high-selling items.
She would then collate these “samples” on a rack at her premises after removing the labels from the garments. She would then show the garments to customers as the items in her fashion label’s range which potential customers could order. Once a sufficient number of orders were received for a particular garment style, the fashion house would send the original “sample” to China to have the garment copied and the appropriate number of units produced.
The turnaround time to manufacture the copy garment was so quick that the copies were delivered to the respondent’s customers then onto retail shelves in the same season as the original designs were launched onto the market. The retail price point of the copied garments was less than half that of the original garment.
It is very common for copyists to take an original design and have the design reproduced in its entirety – that is, copy both the fabric print or graphics applied to the garment and the cut of the garment.
While copyright law can be used successfully by designers to protect the original two- dimensional elements featured on garments, in order to protect the original three-dimensional elements of the garment, designers must file an application to register the garment as a design under the Designs Act 2003 (Cth) before the design (or images of the design) is released to the public.
Registered designs
Without protecting garment designs through the Australian design registration system, designers have no recourse against traders who copy the three-dimensional looks of their garment designs. The process of registering a design is a relatively straightforward and inexpensive process. However, design applications must be filed before the design is published anywhere in the world. By registering designs, fashion houses are able to successfully bring civil actions against companies or individuals that copy their original garment designs. If designers are successful in these actions, they are able to seek injunctions, delivery up of any remaining stock and monetary relief in the form of either an account of profits or damages.
Copyright protection
Copyright protects two-dimensional designs such as fabric prints and also prints as applied to garments. Copyright protection is afforded to a designer of an original artistic work – there is no requirement that the designer register the artistic work to be afforded copyright protection. Where a copyright work is substantially reproduced, the copyright owner can bring an action against the manufacturers, importers, wholesalers and retailers of the copy products seeking injunctions and monetary relief in the form of damages or an account of profits.
In the case of Elwood v Cotton On, the Full Federal Court found that copyright subsisted in the graphic print applied to an Elwood t-shirt, which featured a specific layout and arrangement of numbers, letters and signature motif. Employees of the respondent, Melbourne-based Cotton On, gave evidence that they had been given the Elwood t-shirt and told to create something “the same but different”. The evidence given at trial revealed that the Cotton On employees had direct reference to the Elwood garment when designing the print for the Cotton On t-shirt. Even though Cotton On had changed the numbers, letters and motif on the t-shirt, the placement and arrangement of these elements were found to be substantial reproduction of the Elwood work and the Full Federal Court made a finding that Cotton On had infringed Elwood’s copyright rights. Cotton On was ordered to pay Elwood $280,000 in damages.
In the recent case of Ladakh Pty Ltd v Jing Cao, the Federal Magistrates Court found that copyright subsisted in an original graphic design of a human rib cage design. A Ladakh employee created the design by sketching a rib cage from a photograph of a human rib cage she saw on the internet. Over the first sketch, the designer applied dots using a ruler and felt pen to create the final design. The court held that this design was protected by copyright law as an original artistic work. The court found that the respondents’ design was a substantial reproduction of the applicant’s copyright work and therefore an infringement of copyright. Ladakh was awarded $43,500 in damages.