High profile examples of copyright and design infringement have been hitting the headlines recently, ranging from Rihanna’s dispute with Topshop over use of her image (Robyn Rihanna Fenty and Others v Arcadia Group Brands Limited and Others), to Karen Millen’s attempt to curtail infringement of their fashion designs (Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd), to ownership issues related to Innocent Smoothies’ “dude” logo (Fresh Trading Ltd v Deepend Fresh Recovery Limited and Andrew Thomas Robert Chappell). Here, we take a look at another recent example of how infringement of these rights can arise in the fashion industry and summarise the key considerations that designers and suppliers should anticipate when being commissioned to produce original work.

Lee Ann Fashions (LA) received a design brief from their client Marks & Spencer, asking them to create some tribal themed fabric for a new range of clothing. LA then commissioned John Kaldor Fabricmaker UK Ltd (JK), a fashion house that designs, manufactures and sells fashion fabrics, to produce a selection of sample fabrics to fulfil the brief. JK accepted the brief and presented LA with a range of fabrics, none of which were selected. Instead, LA instructed one of their in-house designers to produce an alternative fabric, which was completed the same day, and which Marks & Spencer subsequently approved and used for a dress in their Per Una range. The JK and LA fabric designs at issue are set out below.

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Following their non-instruction and the subsequent production of the Marks & Spencer range, JK argued that LA had committed copyright and design infringement of their fabric designs, claiming that there had been conscious copying, subconscious copying or indirect copying. LA denied the infringement and stated that their designer had not seen the original JK design when producing the print.

In his decision, Judge Hacon began by assessing the similarity of the designs at issue, and concluded that there was some similarity between the designs but that this was not strong. Therefore, whether there was infringement depended on whether, on the facts, there was a possibility that LA had copied the JK design.

LA’s defence was helped by the fact that they were able to provide evidence to show the various steps in the design process that had been taken in independently creating the design, namely:

  • The written brief from Marks & Spencer, describing what they wanted as “more primitive wood blocking prints, bold batiks, multi-stripes and tribal prints. Often these are anchored with stone and black with highlights of the colour pops of the collection”;
  • Images of a previous print created by LA that was used as their starting point for the new design;
  • Images showing elements from the previous print that had been manipulated using Photoshop in order to create the new design; and
  • Images showing that LA had created the print in a number of different colourways for Marks & Spencer to choose from.

Based on the evidence provided and the testimony of the LA designer who created the design the judge concluded that the design was created independently of any conscious or unconscious influence from the JK fabric. LA was therefore cleared of infringement.

Had LA been unable to defend its position and been found to be infringing the JK design, this could have posed serious consequences such as a potentially weakened relationship with Marks & Spencer and liability to pay damages to JK.

In the fashion world situations where an agency is commissioned to provide design concepts, which the client then appropriates for their own purposes, or are suspected of doing so, arise frequently, and in most cases it does not reach the headlines.

Another common issue arises where a design agency is commissioned and produces designs for the client but no assignment of the IP rights occurs. We have seen recently, in the case of the Innocent Smoothies’ “dude” logo, the difficulties that can arise when a design agency claims rights in a work that has been heavily used by their client, but where no assignment has taken place.

Recent case law demonstrates, therefore, how vital it is that proof of concept and origin is retained by the designer and agreement reached on who owns the copyright and design in a work, should a similar situation arise.