Copying in fashion is nothing new. Modern fashion industry professionals are constantly faced with accusations of plagiarism. Sometimes, these accusations are purely for promotional purposes (for example, a little-known designer named K. Kendall claimed that Alexander McQueen stole the design of Kate Middleton's wedding dress). Some people engage in battles on social media, considering it a matter of honor or a form of competition (for example, during the New York Fashion Week, American designer Alexander Wang accused German designer Philipp Plein of copying the style, decor, and collection of his 2014 fashion show on his Instagram page), while others take the matter to court with real financial consequences. Where is the line between inspiration and illegal copying of someone else's work, and is there any legal protection against plagiarism?
Russian Law
In Russian law, plagiarism is understood as the most common way of violating copyright, namely, the appropriation of the authorship of a work and all the rights legally belonging to the original author. An obvious example of plagiarism in the fashion industry is the copying of product designs.
The current legislation contains an open list of copyright objects that are subject to protection (Article 1259 of the Civil Code of the Russian Federation), which includes, among other things, works of decorative and applied art, such as graphics, design, and others. The concept of «design» itself is not defined in the law. The practice of judicial interpretation of this term in relation to the fashion industry has not yet been established. Currently, there are only a few cases where holders of exclusive rights to product designs have taken legal action against unfair competitors. However, courts generally consider the design of clothing, jewelry, or other accessories to be a work of design and subject to copyright protection.
It is important to note that only a work of design that is created through the author's creative intellectual effort is considered a work of design and subject to copyright protection. This criterion raises questions about the legal status of fashion design. For example, how should we regard the repetition of models that were popular in the past in modern collections, or the combination of elements from different collections in a single product: as the author's creative work or as a copy of someone else's work?
From the perspective of Russian law, the fact of plagiarism is difficult to prove. The Civil Code of the Russian Federation establishes a presumption of authorship, which means that the copyright for a design arises from the fact of its creation in an objective form, without requiring registration or other formalities. However, due to the lack of such formalities, it can be challenging to prove that the design of a product has been copied. In addition, even small changes can already indicate the creation of a new result of intellectual activity.
For example, in a dispute over the copying of jewelry designs, the court found that the designs of the plaintiff and the defendant included images of colorful houses on a blue background (the sky) and abstract, fantasy-like images of flowers. The images of buildings on the disputed rings did not meet the criterion of objective novelty, as they could be found in the paintings of various artists, including those by Wassily Kandinsky. The authors of the ring drawings used similar techniques typical of any works of decorative and applied art, however, all the elements of each drawing are imaginative, original, creative and unique; the subject composition of the schematic images of houses is also different. In this regard, the court considered that the conclusion about the creative nature of the design of the disputed products can be made as a result of the study of details, individual design elements, their mutual disposition, and not on the basis of a general idea of similarity (or dissimilarity) to the point of confusion. Since the similarity of style does not indicate a lack of creativity in the disputed design, the court denied the plaintiff's request for protection (Decision of the 9th Arbitration Court of Appeal dated September 3, 2015, No. 09AP-14070/2015-GK in Case No. A40-5706/14).
In another case, on the contrary, the court concluded that the processing of the wedding ring design was illegal, recognizing that the defendant had copied the design from the plaintiff and was selling the processed work without the rightsholder's consent, which was illegal and subject to appropriate liability (Judgment of the Court of Intellectual Property Rights dated November 20, 2014, No. S01-1128/2014 in Case No. A40-13480/2014).
It seems that over time, judicial practice will be able to draw a line between copying someone else's work and creating a new work based on or inspired by other works, but it is not yet extensive enough to identify a general trend.
In addition to copyright, the appearance of a product can be protected by a design patent. To obtain protection, two conditions must be met: the appearance of the product must be new and original in its essential features. Not every product can meet these conditions, especially when it comes to clothing. Moreover, since obtaining a patent takes a very long time, registration as an industrial design is applicable only to products that are potentially in trend for several seasons. Most often, bags, eyeglass frames, and jewelry are protected as industrial designs, but there is a case in which designers from the Stavropol Territory obtained a patent for a «men's leather jacket with a removable mutton-skin lining».
Foreign regulation
The current legislation of European countries is based on the protection of the rights of fashion designers, and in addition to the norms of international law and the legislation of the European Union, it is also based on national regulations. France was the first country to introduce legislation directly protecting the copyrights of fashion designers. The current French Intellectual Property Code explicitly includes fashion products as objects of copyright protection. French courts often handle lawsuits filed by French designers against plagiarists. So, back in 1994, Yves Saint Laurent's lawsuit against the American designer Ralph Lauren was reviewed and satisfied, in connection with the latter's violation of the plaintiff's rights to the Tuxedo dress. According to the court's decision, the defendant paid the plaintiff a total of 395 thousand dollars.
In the UK, there is protection for both registered and unregistered design objects under the Copyright Designs and Patents Act 1988. It was this Law that served as the basis for the development of European Union legislation on the protection of design.
The Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 legalized the creation of a special «design law» in all EU member states. This document establishes harmonized standards for the eligibility and protection of most types of registered industrial designs. Design is defined as «the appearance of an entire product or part of a product due to its features, such as lines, contours, colors, shapes, textures, and/or materials of the product itself and/or ornaments».
The subsequent Council Regulation of 12 December 2001 No. 6/2002 on Industrial Designs established a unified system of design rights protection throughout the European Union, which is complementary to the national systems of industrial design rights protection in each EU member state. This document simplified the protection of design rights and allowed copyright holders to register the design of products within one year of their public display. According to this act, unregistered design objects are also protected for three years after their public display.
However, while Europe emphasizes the need to protect copyrights in the fashion industry, the situation is different in the United States. The fashion industry is the second-largest industry in the United States, after the financial industry. There are over 800 fashion companies in the country. At the same time, there is no law in the United States that protects «clothing rights», nor is there a developed and recognized methodology for determining the uniqueness of the design of an item for which protection is sought. The design of clothing and accessories falls outside the scope of protection provided by American law. Of course, it is possible to register the design of a fashion item under patent law (for example, the design of a Bottega Veneta bag or a Crocs shoe) or as the appearance of a product protected by trademark law, known as trade dress (the red soles of Louboutin shoes or the blue packaging of Tiffany's). In some cases, some design items are recognized by American courts as artistic work and protected by copyright, for example, unique prints on products and patterns on fabrics. In other cases, in the United States, the position is that clothing is a «utilitarian» item and therefore is not protected by copyright.
Currently, in order to be protected from the point of view of copyright, fashion design must be «conceptually separate» from the utilitarian purpose of the product. This principle of protection stems from the U.S. Supreme Court's decision in Mazer v. Stein in 1954 (see: Mazer v. Stein, 347 U.S. 201 (1954)). In this case, the court determined that a statuette produced for mass circulation and sold as a lamp base, despite its functional purpose, was a work of art and subject to copyright protection.
Applying this approach, in Varsity Brands, Inc. v. Star Athletica LLC, the court held that copyright protection could not be granted to the design of cheerleader uniforms (members of a cheerleading squad that entertain spectators during breaks at sporting events) because it could not be conceptually separated from its utilitarian purpose. In other words, cheerleader uniforms would not be cheerleader uniforms without the chevrons, stripes, zigzags, and brightly colored combinations. The Court of Appeals overturned this decision and recognized that the design of the Varsity Brands cheerleader uniforms is subject to copyright protection. Currently, this dispute over the rights to the cheerleader uniforms has been referred to the U.S. Supreme Court for review.
Thus, based on the utilitarian concept of clothing and other fashion items, U.S. copyright law does not protect the personal rights of the author to the design work, which is the overall model of clothing. The test for conceptual separability, developed by U.S. courts, is also not always objectively applicable to determine the tactics for subsequent protection of a truly unique and creative fashion design work. As a result, in most cases, the design of clothing or accessories can be copied without negative legal consequences.
In this regard, many brands resort to other methods of protecting their original designs. For example, Hermès's famous Birkin and Kelly bags are registered as trademarks (trade dress) in the United States. This vigilance allowed the French fashion house to recover $100 million in damages from three dozen websites in 2012 for selling counterfeit copies.
Thus, the regulation of rights to works of clothing or product design is one of the least harmonized areas of intellectual property law. In different countries, the protection of intellectual rights to design can be provided only by patent law, patent and copyright law, as well as special "design law." Unfortunately, there is no universal method of protection against plagiarism in the field of design. Moreover, plagiarism in fashion can be both intentional and accidental, and the line between open copying and inspiration is very thin, so the comma in the title of this article will be placed by the court depending on the circumstances of the particular case.
The article was published in the journal Legal Insight No. 3(59) 2017
Russian Law
In Russian law, plagiarism is understood as the most common way of violating copyright, namely, the appropriation of the authorship of a work and all the rights legally belonging to the original author. An obvious example of plagiarism in the fashion industry is the copying of product designs.
The current legislation contains an open list of copyright objects that are subject to protection (Article 1259 of the Civil Code of the Russian Federation), which includes, among other things, works of decorative and applied art, such as graphics, design, and others. The concept of «design» itself is not defined in the law. The practice of judicial interpretation of this term in relation to the fashion industry has not yet been established. Currently, there are only a few cases where holders of exclusive rights to product designs have taken legal action against unfair competitors. However, courts generally consider the design of clothing, jewelry, or other accessories to be a work of design and subject to copyright protection.
It is important to note that only a work of design that is created through the author's creative intellectual effort is considered a work of design and subject to copyright protection. This criterion raises questions about the legal status of fashion design. For example, how should we regard the repetition of models that were popular in the past in modern collections, or the combination of elements from different collections in a single product: as the author's creative work or as a copy of someone else's work?
From the perspective of Russian law, the fact of plagiarism is difficult to prove. The Civil Code of the Russian Federation establishes a presumption of authorship, which means that the copyright for a design arises from the fact of its creation in an objective form, without requiring registration or other formalities. However, due to the lack of such formalities, it can be challenging to prove that the design of a product has been copied. In addition, even small changes can already indicate the creation of a new result of intellectual activity.
For example, in a dispute over the copying of jewelry designs, the court found that the designs of the plaintiff and the defendant included images of colorful houses on a blue background (the sky) and abstract, fantasy-like images of flowers. The images of buildings on the disputed rings did not meet the criterion of objective novelty, as they could be found in the paintings of various artists, including those by Wassily Kandinsky. The authors of the ring drawings used similar techniques typical of any works of decorative and applied art, however, all the elements of each drawing are imaginative, original, creative and unique; the subject composition of the schematic images of houses is also different. In this regard, the court considered that the conclusion about the creative nature of the design of the disputed products can be made as a result of the study of details, individual design elements, their mutual disposition, and not on the basis of a general idea of similarity (or dissimilarity) to the point of confusion. Since the similarity of style does not indicate a lack of creativity in the disputed design, the court denied the plaintiff's request for protection (Decision of the 9th Arbitration Court of Appeal dated September 3, 2015, No. 09AP-14070/2015-GK in Case No. A40-5706/14).
In another case, on the contrary, the court concluded that the processing of the wedding ring design was illegal, recognizing that the defendant had copied the design from the plaintiff and was selling the processed work without the rightsholder's consent, which was illegal and subject to appropriate liability (Judgment of the Court of Intellectual Property Rights dated November 20, 2014, No. S01-1128/2014 in Case No. A40-13480/2014).
It seems that over time, judicial practice will be able to draw a line between copying someone else's work and creating a new work based on or inspired by other works, but it is not yet extensive enough to identify a general trend.
In addition to copyright, the appearance of a product can be protected by a design patent. To obtain protection, two conditions must be met: the appearance of the product must be new and original in its essential features. Not every product can meet these conditions, especially when it comes to clothing. Moreover, since obtaining a patent takes a very long time, registration as an industrial design is applicable only to products that are potentially in trend for several seasons. Most often, bags, eyeglass frames, and jewelry are protected as industrial designs, but there is a case in which designers from the Stavropol Territory obtained a patent for a «men's leather jacket with a removable mutton-skin lining».
Foreign regulation
The current legislation of European countries is based on the protection of the rights of fashion designers, and in addition to the norms of international law and the legislation of the European Union, it is also based on national regulations. France was the first country to introduce legislation directly protecting the copyrights of fashion designers. The current French Intellectual Property Code explicitly includes fashion products as objects of copyright protection. French courts often handle lawsuits filed by French designers against plagiarists. So, back in 1994, Yves Saint Laurent's lawsuit against the American designer Ralph Lauren was reviewed and satisfied, in connection with the latter's violation of the plaintiff's rights to the Tuxedo dress. According to the court's decision, the defendant paid the plaintiff a total of 395 thousand dollars.
In the UK, there is protection for both registered and unregistered design objects under the Copyright Designs and Patents Act 1988. It was this Law that served as the basis for the development of European Union legislation on the protection of design.
The Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 legalized the creation of a special «design law» in all EU member states. This document establishes harmonized standards for the eligibility and protection of most types of registered industrial designs. Design is defined as «the appearance of an entire product or part of a product due to its features, such as lines, contours, colors, shapes, textures, and/or materials of the product itself and/or ornaments».
The subsequent Council Regulation of 12 December 2001 No. 6/2002 on Industrial Designs established a unified system of design rights protection throughout the European Union, which is complementary to the national systems of industrial design rights protection in each EU member state. This document simplified the protection of design rights and allowed copyright holders to register the design of products within one year of their public display. According to this act, unregistered design objects are also protected for three years after their public display.
However, while Europe emphasizes the need to protect copyrights in the fashion industry, the situation is different in the United States. The fashion industry is the second-largest industry in the United States, after the financial industry. There are over 800 fashion companies in the country. At the same time, there is no law in the United States that protects «clothing rights», nor is there a developed and recognized methodology for determining the uniqueness of the design of an item for which protection is sought. The design of clothing and accessories falls outside the scope of protection provided by American law. Of course, it is possible to register the design of a fashion item under patent law (for example, the design of a Bottega Veneta bag or a Crocs shoe) or as the appearance of a product protected by trademark law, known as trade dress (the red soles of Louboutin shoes or the blue packaging of Tiffany's). In some cases, some design items are recognized by American courts as artistic work and protected by copyright, for example, unique prints on products and patterns on fabrics. In other cases, in the United States, the position is that clothing is a «utilitarian» item and therefore is not protected by copyright.
Currently, in order to be protected from the point of view of copyright, fashion design must be «conceptually separate» from the utilitarian purpose of the product. This principle of protection stems from the U.S. Supreme Court's decision in Mazer v. Stein in 1954 (see: Mazer v. Stein, 347 U.S. 201 (1954)). In this case, the court determined that a statuette produced for mass circulation and sold as a lamp base, despite its functional purpose, was a work of art and subject to copyright protection.
Applying this approach, in Varsity Brands, Inc. v. Star Athletica LLC, the court held that copyright protection could not be granted to the design of cheerleader uniforms (members of a cheerleading squad that entertain spectators during breaks at sporting events) because it could not be conceptually separated from its utilitarian purpose. In other words, cheerleader uniforms would not be cheerleader uniforms without the chevrons, stripes, zigzags, and brightly colored combinations. The Court of Appeals overturned this decision and recognized that the design of the Varsity Brands cheerleader uniforms is subject to copyright protection. Currently, this dispute over the rights to the cheerleader uniforms has been referred to the U.S. Supreme Court for review.
Thus, based on the utilitarian concept of clothing and other fashion items, U.S. copyright law does not protect the personal rights of the author to the design work, which is the overall model of clothing. The test for conceptual separability, developed by U.S. courts, is also not always objectively applicable to determine the tactics for subsequent protection of a truly unique and creative fashion design work. As a result, in most cases, the design of clothing or accessories can be copied without negative legal consequences.
In this regard, many brands resort to other methods of protecting their original designs. For example, Hermès's famous Birkin and Kelly bags are registered as trademarks (trade dress) in the United States. This vigilance allowed the French fashion house to recover $100 million in damages from three dozen websites in 2012 for selling counterfeit copies.
Thus, the regulation of rights to works of clothing or product design is one of the least harmonized areas of intellectual property law. In different countries, the protection of intellectual rights to design can be provided only by patent law, patent and copyright law, as well as special "design law." Unfortunately, there is no universal method of protection against plagiarism in the field of design. Moreover, plagiarism in fashion can be both intentional and accidental, and the line between open copying and inspiration is very thin, so the comma in the title of this article will be placed by the court depending on the circumstances of the particular case.
- Vasilishina P.Yu. Comparative Analysis of the American and Russian Approaches to the Protection of Fashion Industry Objects through Copyright. — St. Petersburg Lawyer, 2016, No. 3.
The article was published in the journal Legal Insight No. 3(59) 2017