As 2013 Australian Fashion Week drew to an end this past April and the fashion media debated the new must-haves, the mistakes and what we’d all be wearing in the coming weeks and months, Australian consumers could expect to see the key trends and inevitable imitations slowly flow into their local shopping centers. Among all the new stock in shops, consumers might also spot a familiar print or distinctive fabric from the catwalk . . . made up into a garment being sold in a large department store, a boutique or a chain store under a different label. The risks associated with copyright and design infringement have significantly increased as many Australian fashion designers and retailers are relying heavily on offshore production and supply chains, and increasing their online presence with online sales and advertising. However, the fast moving nature of this industry means that protecting designers’ artistic works often comes down to a question of balancing cost with IP protection. This three-part article considers the existing protections offered by IP law in Australia, some of these risks and strategies for businesses to consider when seeking to limit the likelihood of infringing conduct which takes place overseas.
Current protection under Copyright and Design legislation
The Designs Act 2003 (Cth) (Designs Act) affords protection for up to 10 years in Australia to visual features of a product, such as the shape, pattern, ornamentation or embellishment that makes the product unique. The design of a product, such as an item of clothing, and the artistic pattern applied to materials like textiles or paper, may be registered. For example, Australian designer Ken Done owns an extensive portfolio of registered textile designs, while the fashion retailer Forever New Clothing Pty Ltd has registered the key pieces from each season’s collection for a number of years. To be registrable, a design must be new and innovative, and the design must be registered before being released to market. This process requires payment of fees to IP Australia and it takes time for a design to be examined and then registered. An alternative to the process of registration is to request publication of a design. Strategically, this may be the better option for fast turnover products such as fashion textiles. The effect of publication in the Australian Official Journal of Designs is that others are prevented from registering the same design, as it is no longer considered new. To benefit from copyright protection, a graphic or textile design must be an original ‘work’ within the meaning of the Copyright Act 1968 (Cth) (Copyright Act). While many drawings and designs for textiles authored in Australia will fall within the definition of an ‘artistic work’ and be afforded automatic protection, enforcing copyright in an artistic work which is reproduced on textiles or other materials can be more difficult. This is especially so when unauthorized copying takes place outside Australia. The Copyright Act includes specific provisions dealing with the overlap in design law and copyright law. Whether one regime or the other protects a particular design element will depend upon a number of factors. Importantly, the Copyright Act provisions dealing with designs prevent the enforcement of copyright in artistic works for which a ‘corresponding design’ has been registered under the Designs Act.
A corresponding design refers to the ‘visual features of shape or configuration which, when embodied in a product, result in a reproduction of that work’. Embodying such visual features includes weaving into, impressing on or working the design into a product. This might cover, for instance, a garment which is modified or decorated with sequins, buttons, studs or raised stitching. Under this definition, an artistic work for a fabric or paper design which is printed onto the material in 2D is likely to remain within the realm of copyright law. See Polo/Lauren Company LP v Ziliani Holdings Pty Ltd  FCAFC 195 for a discussion of the design/copyright overlap and the meaning of a ‘corresponding design’ in the context of alleged parallel importation of genuine Polo Ralph Lauren garments, some of which featured the stitched Polo Ralph Lauren polo player logo. As we know, the fashion world is fast paced and the rate of turnover – for shapes, styles, colors and prints – is unequaled in most other industries. In reality, many of the designs or artistic works featured on fashion textiles have a limited commercial life and may only require protection for one season. This means that designers and businesses often rely on copyright alone to protect their products, designs and artistic works, or turn their minds to legal protection of their designs only when they wish to stop unauthorized copying. Fashion policing: Design protection in Australia (Part 2) (to be posted Wednesday Oct. 16) will discuss associated risks.
This three part series was prepared by Emma Bekens, associate (firstname.lastname@example.org) and Sophia Christou, Lawyer (email@example.com) of Norton Rose Fulbright’s Australia Intellectual property group.