In a landmark case, a judge has ruled that this Lili dress (right) is a copy of this Review dress (left). SMH March 9, 2008
I read this article in The Age last weekend by Liz Porter and forgot all about it but wanted to share it with you. It is quite exciting as all designers do like to see how others make their product (call it research and inspiration if you will), but want to protect our own designs, which is costly and sometimes impossible.
Just goes to show you should be original... I have just yelled out to Steven, "If I credit the newspaper, writer, etc, can I post the original article?" He has shrugged.
Let me know if I can't.
What the frock? A designer's costly dressing down
The Age/Sydney Morning Herald
March 9, 2008
FASHIONISTAS might study these two dresses and note that they both have capped sleeves, strategically placed lines of lace, inverted V-shaped high-waisted seams and pleated skirts. But for intellectual property lawyers, the garments — one by Review, the other a Lili brand dress sold in a Charlie Brown shop — are the key pieces of evidence in a landmark Federal Court case about copying and infringement of a registered design.
The case has ended with a victory — and an award of $17,500 in damages — for Melbourne fashion label Review over the Sydney-based company behind fashion labels Charlie Brown and Lili.
The ruling, by the Federal Court's Justice Christopher Jessup, will be closely scrutinised by every fashion house in Australia because it is the first court judgement on the issue of copying and damages since a dramatic 2003 change to the Designs Act, requiring garment designs to be registered before any legal action over garment copying can be taken.
Justice Jessup found that the Lili dress had been copied from the Review dress. He ordered the Lili label's parent company, Innovative Lifestyle Investments Pty Ltd, to also pay Review's legal costs, estimated to be $60,000. Adding in its own legal costs, including fees for a silk at the three-day hearing, the case is estimated to have cost the company $200,000.
According to Review's lawyer, Middletons' Tony Watson, the ruling will give fashion houses confidence that they can win cases — and damages — in the new system. He said the ruling could spark a rash of similar actions from designers who had been waiting to see the law changes tested in court before suing alleged copyists for design infringement.
Mr Watson said that the significance of the victory for Review, and for the other designers watching it, was not the damages award. "It is not about the money, it is about the deterrence value for potential other copyists," he said.
Review is awaiting a ruling on a similar case against Sydney fashion label Red Berry, heard in the Federal Court last month.
The dispute with Lili began after a Review employee visited a Charlie Brown store in May 2006 and bought a Lili dress that looked strikingly similar to a design by Review's co-founder and chief designer, Jayne Ellis. The following month, Review's solicitors wrote to the company, explaining they had registered the design and warning that continued sale of the Lili dress would entitle them to damages under the Designs Act. But the company continued to manufacture and sell the dress.
During the court hearing, Justice Jessup examined both dresses closely. He did not have to rule on whether the Lili dress was a copy, because its designers admitted their dress was "substantially similar" — while denying having copied it. Instead he ruled on the issue of damages for an infringement of a registered design.
Before the 2003 changes to the Designs Act, fashion houses that alleged their designs had been copied had to sue for breach of copyright in their dressmaking patterns. Litigation remained an uncertain affair, as there was some doubt about the legal basis upon which fashion designers could even sue over copyright. This was not clarified until December 2003, with a landmark Federal Court finding by Justice Ray Finkelstein that designers could claim copyright over dressmaking patterns.
In that case, the judge found that designer Theresa Muscat owned the copyright to the patterns for her Mytiko brand pants — and found that that copyright had been infringed by several manufacturers.
Previously fashion designers had sued each other at a great rate, but most cases were settled out of court. Review itself had taken legal action over copying in 19 different cases, settling all of them out of court.
Mr Watson said that many fashion designers had been initially unhappy with the changes to the Designs Act, because the law required them to pay $200 for every design they wished to register. If they wished to take legal action, they would then have to pay an additional $360, to have their design "examined"— checked against other designs registered, to establish that it was "new" and "distinctive". But if they ignored the new system, they would have no recourse if people copied them.
With many fashion labels bringing out 100 styles a month, designers can't register all of them. But they can file an application for registration for a group of styles (paying $200 for 30 or 40 designs). They have six months to choose which ones to register, but protection of their design starts from the date of filing.
Peter Strain, co-founder of Review, said the Federal Court decision had meant an enormous amount to his business — and was significant for all designers. He said the stress of litigation was a big disincentive against court action. "But this decision has made it all worth it. We have had people copying our designs for nine years. This ruling means there is now some protection for designers," he said.
A spokesman for Innovative Lifestyle Investments said the company was appealing the decision and had made a submission to the Australian Competition and Consumer Commission on the issue.