This article was written for and first featured in Intellectual Property Magazine
The global wedding industry is big business. Accordingly, it is not surprising that within hours of Catherine Middleton appearing on our television screens in ‘that’ dress, designers the world over were putting pencil to paper and sketching replica designs to be rolled out onto our high streets as cut-price copies. In Suzhou, China many of the 700 wedding dress factories and shops confirmed that they were planning to turn out copies of the dress within 15 days and would go on sale for £110. In New York, Shala Moradi of fashion label, Faviana, finished her budget version of the dress within eight weeks of the wedding. Likewise, in the UK one designer had a replica of the dress ready by the end of the Royal Wedding day.
It is said that imitation is the sincerest form of flattery, but this may come of little comfort to Sarah Burton, creative director of fashion house Alexander McQueen and chief designer of the dress, who no doubt invested considerable time, money and effort in creating her design.
By contrast to ordinary fashion items, where the item’s popularity is often not known until after it has been placed onto the market and which, in any event, has a short shelf life, both Middleton’s choice of designer and the appearance of her dress were eagerly anticipated from the moment she and William announced their engagement. Nevertheless, Sarah Burton, like so many fashion designers, might be wondering what she can do to protect her design against the recent flurry of lookalike dresses that have hit the high streets. In particular, she might be wondering whether a traditional article such as a wedding dress can be protected at all.
There are four different types of design protection: UK unregistered design right and UK registered design right (the UK regime), and unregistered Community designs and registered Community designs (the EU regime). In order to obtain protection as a UK unregistered design, a design must be original, that is, it must not have been copied, and it must not be commonplace[1]. Similarly, both the UK registered design right and the EU regime require a design to be new and to have individual character[2]. A design will have individual character if it creates a different overall impression to designs that are already in existence.
The Dress
Design rights may subsist in the whole or part of an article. Therefore, if rights subsist in the design of a wedding dress, this can mean that it resides in the design of the whole dress, or in a section, such as the neckline or silhouette, or the way in which the dress is fastened. Further, the parts that are capable of protection may be individual parts or a combination of parts.
It is doubtful whether the design of Kate Middleton’s dress as a whole is protectable under either the UK or the EU regime. This is because, as it stands, a wedding dress is not a new article. Indeed, billions of wedding dresses are put into production each year. Even so, if the entire dress was considered a new creation, Sarah Burton would have to show that her design is not commonplace and that it has individual character. However, sartorial commentators and the general public have drawn similarities between Catherine Middleton’s wedding dress and those of Grace Kelly in 1956 and Isabella Orsini in 2009. Accordingly, it is unlikely that the informed user would conclude that Sarah Burton’s design creates a different overall impression to the earlier creations.
But what of the individual elements such as the 9ft long train or the veil? Given that most wedding dresses have a train and veil, it is likely that these aspects would not be considered new and would not therefore be protected under either the UK or the EU regime. Then what about the more intricate details of Kate’s dress, such as the three petticoats of lace that were hand-stitched using the Carrickmacross lace-making technique or the narrowed waist and padded hips? Whilst these aspects might sound unusual, the Carrickmacross lace-making technique originated in Ireland in the 1820s, and the narrowed waist and padded hips suggest that Sarah Burton was inspired by late Victorian corsetry. As such, on their own, these features are unlikely to be considered new or original. On the contrary, if you combine these elements and consider them in the light of modern day wedding dresses, you may find that you have something rather unique. Certainly, the focus with Alexander McQueen’s designs is bringing contrasts together and Kate Middleton’s wedding dress is no exception, where traditional fabrics and lacework are married with a modern structure and design. Accordingly, when the style of stitching and the silhouette are taken together, they may be safeguarded under UK or EU design law (or both).
In any event, where the UK regime fails, the EU regime and copyright protection step in. Under both the EU regime[3] and copyright law,[4] surface decoration is capable of protection. In this instance, it may be possible to argue that the lace appliqué on Kate’s gown, which features the four floral emblems of the UK: rose, thistle, daffodil and shamrock is surface decoration. However, upon closer inspection, each piece of lace was hand-cut and applied onto ivory silk tulle with stab stitching every two to three millimetres. If this resulted in the creation of a 3Ddesign, it would be excluded from copyright protection under section 51 CDPA. Nevertheless, given the artistic craftsmanship that must have gone into this aspect of the design, there is little doubt that another lace like it exists. This is important because, like in design law, for copyright to subsist, the work must be original.
Practical issues
If the Royal Wedding dress, or parts of it, are capable of being protected under design law, Sarah Burton would inevitably encounter problems at the enforcement stage. This is because many of the copyists are located abroad. Different rules and procedures govern the creation and reproduction of designs, and actions for infringement. Although there is in place the Hague Agreement, which provides for international registration and protection of designs, very few countries are signatories to it, for example, the US and the People’s Republic of China. Indeed, the UK itself has not yet ratified the Hague Agreement. Conversely, copyright is protectable internationally under the Berne Convention and so there may be scope to claim copyright infringement in other jurisdictions.
More importantly, from a practical perspective, Sarah Burton would need to consider whether it would be feasible to take action against each infringer, as the cost of doing so has the potential to outweigh the benefits. It would be advisable to concentrate on easy targets first or on those individuals or companies that have infringed the design on a wider scale, as small scale copying might not be worth suing over. Indeed, in some cases, it may only prove to increase the profile of the infringer. In any event, if Sarah Burton documented her creation and has dated her drawings, then enforcement proceedings may be made easier, as it is likely that she would be able to show that she has title in her creation. Such evidence would be crucial in an action for either infringement of a UK unregistered design or copyright because of the requirement to prove copying.
If Sarah Burton were successful in claiming infringement of her design or copyright (or both), the following remedies would be available:
- Injunction;
- Damages; or
- Account of profits.
It could be argued that damages are unlikely to be an adequate remedy because damage to Sarah Burton’s reputation may already have been done if she is now compared to value brands. Consider the case where copies are so good that they would be difficult to distinguish from the real article. For example, the Chinese dress manufacturers mentioned earlier claim that they copied Diana’s wedding dress to 90% accuracy. Consumers who would otherwise be willing to purchase one of Sarah Burton’s designs might conclude that the brand no longer has the same appeal and has effectively been tainted. Although this might sound a little far fetched, this type of behaviour has been seen in China, where some Louis Vuitton items have become less sought after given that it is now difficult to distinguish the real article from the fakes that have flooded the market.
Similarly, given that many of the copies are being put on the market as cut-price copies, an account of profits might not result in a sufficiently high level of compensation to justify proceedings. For example, etailer www.i-want-that-dress.com is selling its version of the Royal dress for £349. It has been reported that supermarket label, George at ASDA, and value fashion group, Peacocks, are considering producing a similar design.
One tactic when dealing with infringers that is often not considered is to request as part of any settlement that the infringer publish an apology in fashion periodicals, journals and magazines. This has the advantage of naming and shaming the infringer at a minimal cost to the owner of the design or copyright. Further, it is likely that it will cause damage to the reputation of the infringer and, subsequently, cause them to think twice before infringing again.
In sum…
It is clear that it is not always easy to protect rights in this type of situation, particularly given the international nature of the copying and the fact that protection is enforced on a national level. That said, failure to act gives infringers the upper hand and they may think that they have licence to infringe again. It is important that fashion designers, who have spent a significant amount of time and money, and expended considerable effort in the creation of their work, make examples of the infringers which will, in-turn, discourage others. Failure to send the right message that infringements are not tolerated will give infringers the upper hand.
Top Tips
- Document your creation, as this will help to show that you have title.
- Ensure your staff have adequate training in what they can and cannot do when designing.
- Concentrate on easy targets, as small scale copying might not be worth suing over.
- Consider obtaining a public apology in place of issuing proceedings.
- Don’t shy aware from proceedings, particularly where infringement has taken place on a wide scale.
[1] sections 213(1) and (4) Copyright, Designs and Patents Act 1988 (“CDPA”).
[2] section 1B(1) Registered Design Act 1949 (“RDA”), and Articles 5 and 6 of the Council Regulation (EC) No 6/2002 on Community Designs (the “Community Design Regulation).
[3] Article 1(a) Community Design Regulation.
[4] section 51 CDPA.
