In a recent decision, G-Star Raw CV v Rhodi Limited & Ors [2015] EWHC 216, the UK High Court has provided some useful pointers to fashion designers as to considerations which will assist them in framing a successful case for infringement of UK unregistered design right. In particular, the decision highlights the importance of selecting appropriate parts of the garment in respect of which to assert design rights and the positive impact that can be gained by adducing detailed and reliable evidence to explain the design process. The case concerned a claim by the fashion company G-Star Raw CV against a group of corporations and individuals in respect of the infringement of the UK unregistered design right in various aspects of a pair of jeans called the Arc Pant. The Arc Pant has a highly architectural cut which causes the leg of the trouser to twist around the human leg, to create a 3D silhouette. G-Star asserted rights in five separate aspects of the design, which it claimed were infringed by the defendants in a number of jeans styles that they offered in the UK.

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One of the designers of the Arc Pant was a pattern cutter at G-Star, who was described by the Judge as an impressive witness. In her evidence, she described in detail the way in which she conceived of and created the Arc Pant design, which she felt incorporated a “whole new aspect of design in jeans”. On the basis of her evidence, the Judge held that it was plain that unregistered design rights subsisted in the Arc Pant designs and that G-Star was the owner of those rights. In making his assessment of the subsistence of the design, the Judge was careful to highlight that G-Star was not entitled to claim design right for the general concept of “3D” or “twisted fit” jeans, but that it was entitled to select parts of the article in respect of which to claim design rights. The Judge then went on to consider whether or not the defendants’ jeans were made substantially to the Arc Pant designs. He noted that the similarities between the Arc Pant designs and the defendants’ jeans were striking and held that the defendants’ jeans had been made substantially to the Arc Pant designs. The nature and extent of the similarities led to a rebuttable inference that they had been copied. Interestingly, in the course of his submissions, counsel for G-Star suggested that, when determining infringement, it would be appropriate for the Judge to take into account the requirement in copyright cases for a “substantial part” of an original work to be copied. However, whilst the Judge held that there had been “substantial reproduction” of the shape and configuration of the Arc Pant designs and the Arc Pant in the defendant’s jeans, he did not consider that an analogy with copyright law took matters any further in the context of unregistered design rights claims. He highlighted the strategic importance of carefully selecting those aspects of the garment in which to assert design rights, and noted

Provided the claimant identifies correctly the part(s) of his design which he claims to have been taken exactly or substantially, he will obtain protection against unfair misappropriation of the time, skill and effort that he has expended on creating that design. In those circumstances, no purpose is likely to be served by investigating the extent to which other aspects of his design are also “original”.  Conversely, if he pleads his design right case too widely, that may cause the claim to fail even if it might have succeeded if it had been advanced on a narrower basis, and the day will not be saved by saying that there are some aspects within the claimed right that are “original”.

The Judge concluded that, in the case of unregistered design rights, the question of “part” comes in at the stage of subsistence of the right, rather than at the stage of infringement.  

In light of the rebuttable inference of copying, the burden of proof was reversed, and it was for the defendants to prove that they had not copied the designs. The Judge was not impressed by the evidence adduced by the defendants. He pointed to gaps in the case as a result of evidence not being given by key designers and a key manufacturer of the defendants’ jeans. He criticised the fact that important correspondence was not disclosed and that the explanation for the deletion of emails was implausible and inconsistent, and expressed surprise that the defendants had not taken care to preserve a full paper trail of the alleged independent design process, in particular given that the parties had a history of disputes in relation to this design. He concluded that he was very sceptical about the defendants’ good faith. In the circumstances, he found that the Arc Pant designs had been copied.  

The claim related to secondary infringement of the UK unregistered design rights in the Arc Pant, by acts of importation and sale of the jeans. In order to make out a case for secondary infringement, the claimant must prove either that the defendants had actual knowledge that their jeans comprised infringing articles, or, objectively, that they had reason to believe that they infringed. The Judge found that the knowledge requirements were made out in respect of four of the defendants. In doing so, he took into account a number of factors, including previous dealings between the parties and the defendants’ access to samples of G-Star’s jeans. The Judge made clear in the course of his reasoning that companies which make their business from dealing in garments which replicate others’ designs cannot seek to avoid liability by farming the manufacturing process out to foreign companies over which they have no control. He did not, however, find that two of the company directors had acted in common design with the other defendants.  

This case acts as a useful guide to fashion designers as to the strategic considerations which they should take into account when building a case against infringers. It highlights the importance of carefully selecting the parts of the garment in which to assert rights and makes clear that the test for infringement in UK unregistered design right cases is whether the infringing article has been made exactly or substantially to the unregistered designs that are asserted, and not whether the infringing article copies a substantial part of the original work as a whole. The extent to which the Judge was impressed by the evidence of G-Star’s designer and critical of the holes in the defendants’ case makes it very clear that, in cases relating to unregistered designs, being able to put together a compelling story about the design process will go a long way to convincing the courts to uphold and enforce the rights.