So, you’re a New Zealand fashion designer and you’ve just found out that a store in London is selling a line of dresses that look a lot like the dresses from your collection recently showcased at NZ Fashion Week. Can you do anything to stop the copycat dresses from being sold in the UK? Yes you can!
Copyright and design protection – the basics
Copyright protection arises automatically in New Zealand as soon as a copyright work, eg. a drawing, is made. Copyright protects against unauthorised copying of a design by others – it does not prohibitindependent creation of the same or a substantially similar design.
The “design” of a product generally relates to its appearance (shape or ornamentation), rather than to technical principles of its manufacture or operation.
It is also possible to register a design. Registered designs can be protected for up to 15 years under New Zealand design law and for up to 25 years under UK design law. It is important that design protection is applied for before the design is used or publically disclosed.
One advantage of registering a product design is that it is not necessary to prove actual copying to prevent someone else from using a substantially similar design. The time and cost of obtaining design registration may outweigh the benefits of obtaining the monopoly afforded by design registration – particular in fast paced industries like the fashion industry where, as Heidi would say, “one day you're in – the next day you're out”. Copyright and unregistered design rights (where these rights exist) are useful tools in the fight against copycats.
Did you know that New Zealand copyright law also protects three dimensional designs?
In many parts of the world, designs reproduced into three dimensions and industrially applied[i] have very limited copyright protection.
For example, in Australia copyright is lost if you apply an artistic work industrially. This means if you create a design that you intend to mass produce in three dimensions (eg. a dress design from which 50 or more items will be made) you will need to apply to formally register it as a design before you start using it in order to receive protection and prevent others from exploiting your design.
By contrast, in New Zealand however, functional, industrial and fashion products such as clothing are automatically protected under the Copyright Act 1994, regardless of whether the design is registered. The period of protection is quite long – being 16 years. This lengthy and extensive copyright protection for industrially applied designs is unique to New Zealand.
Designers are often surprised to find they can enforce their copyright in New Zealand but not in Australia and that the period of protection is so long.
What’s the situation in the UK?
New Zealand designers can take comfort in the fact that the UK provides similar protection for unregistered designs which have been industrially applied.
UK intellectual property law recognises a "design right" – the term refers to specific legal protection available to unregistered designs in the UK. There are important differences between unregistered design right and registered designs.
A design right gives automatic protection for the internal or external shape or configuration of an original design (ie. its three-dimensional shape) – but does not protect any of the two-dimensional aspects, for example surface patterns. Logos and the surface decoration applied to an article cannot be protected by unregistered design right but may be subject to copyright protection.
An unregistered design right in the UK arises automatically upon the making of an article to a particular design or by the creation of a design document by a “qualified person”. Protection lasts either 10 years after the first marketing of articles that use the design, or 15 years after creation of the design, whichever is earlier. A qualified person includes nationals or residents of the European Union and certain non-EU countries which offer reciprocal rights for UK nationals. New Zealand offers reciprocal rights, Australia does not – this means that New Zealand designers have rights in the UK that their Australian colleagues do not have.
As with three dimensional copyright in New Zealand, it is necessary to prove actual copying for there to be a breach of a design right.
In a nutshell…
Copyright and unregistered design right are not as robust as a registered design but they are useful in preventing copycat designs.
Any New Zealand designers entering the UK market have an advantage over their Australian counterparts as they can rely on unregistered design right under UK law to prevent unauthorised copying of the internal or external configuration of their designs. If a New Zealand designer, such asKaren Walker, was to find that one of her dress designs had been copied by a UK department store, she would be able to take action to have the copies removed from the market.