Claims of copying of designs by fashion companies appear regularly in the news media.
Unregistered design rights protect the shape or configuration of the whole or part of an article that is sufficiently original. Infringement of an unregistered design requires copying of the design to produce an article that is exactly or substantially to that design.
This was at the heart of a claim brought recently by Sonia Edwards against Boohoo which provides many lessons for both fashion designers and brands which may seek to be “inspired” by the works of the designers.
The claims
Ms Edwards claimed that Boohoo had infringed her unregistered design rights in the shape and configuration of:
- a bikini multiway top,
- organza rib puff-sleeve high neck fitted top,
- two high waist ruched skirts, and
- high waist half ruched leggings.
Ms Edwards represented herself at the trial.
A closer look at the claims
The Court considered the alleged infringements in relation to the following designs.
(1) Bikini multiway top
This bikini top design could be worn in multiple ways as the strap could be threaded through the panels in various ways. However, the Court found that it was not protected as an unregistered design from the claimed March 2016 date. This was because Ms Edwards had released an earlier 2011 version which meant that the 2016 design was not original enough for a new unregistered design right.
The Court was concerned about the risk of “evergreening” by extending such design protection with minor changes.
(2) Puff Sleeve Fitted Top
Ms Edwards relied on “an organza puff sleeve made from rib fabric…” and “the extended rib fabric cuff reaching from past the wrist and under the elbow and connecting to the base of the organza puff sleeve”.
The Court decided that an unregistered design could not be defined in relation to the fabric being used because methods of construction are not protectable and it could not be defined according to the wrist or elbow of a wearer as this will depend on the person. Therefore, the remaining (narrow) design was a puff sleeve connected to an extended cuff.
Due to the lack of evidence for longer cuffed sleeves, the Court found it to be “borderline” whether the remaining design was sufficiently original but valid.
(3) High Waist Ruched Skirts
The two skirt designs were posted on social media in 2013 and were the same except the back of one of them was not ruched (it was flat).
The Court ruled that the concealed waistband and the lack of seams on the side and zips and fastenings which are features which cannot be seen are not protected as unregistered design rights.
This also applied to features that relied on an individual wearer’s exact shape.
The Court was “prepared to accept” there was sufficient originality for the remaining parts in the chevron shape at the back and front of the waist, the hem, the ruching gathered in the centre on the front and back and the draping at the leg.
(4) High Waist Ruched Leggings
The Court decided that unregistered design rights could not subsist in a concealed waistband or a high fitting waistline (for the same reasons as above).
The remainder of the design was a small chevron shape at the top of the leggings with ruching on the top half. The Court considered this was “barely enough to compromise a subsisting design” but “just passes the necessary threshold”.
Infringement?
The Court decided that on the balance of probabilities there was not enough evidence of copying for there to be infringement.
The judge considered it unlikely that someone from Boohoo searching online for many of the designs would have come across Ms Edwards’ design given that many of them were from years before and Ms Edwards’ profile had been relatively low.
The Court also found that the low originality meant that it was possible that someone could come up with the designs independently.
In addition, for the Puff Sleeve Fitted Top design, the infringing articles were not made exactly or substantially to the design.
As a result, the Court decided that Boohoo had not infringed any of the designs.
Practical takeaways
The judgment has many practical takeaways for fashion designers, particularly those operating in fast fashion or who promote themselves using social media.
- Unregistered design rights can exist in photos shared on social media, but relying on a photo in social media as evidence of a design is too vague.
Fashion designers will have stronger protection if a design is claimed from a design document such as CAD or detailed design drawing. - Be careful about which unregistered design rights you rely on and from which date. If you have released an earlier design this could invalidate your later design if both have substantially the same features.
- Always keep detailed records to prove the ownership of your unregistered designs. This is also important if you are accused of infringing a third parties design rights.
- Register your designs – this provides much better protection (and a certificate!) because you do not need to prove copying and lasts longer (up to 25 years!) as we explained here.
This could have saved Ms Edwards in this case as Boohoo were found not to have copied her unregistered designs.
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