Publications / Intellectual Property
Fabric designs for swimwear have gone under scrutiny in the Federal Court of Australia in a recent decision involving City Beach and Seafolly.
Infringing copyright in a fabric print or embroidery design can occur by reproducing a substantial part of those works without the permission of the copyright owner.
Fewstone Pty Ltd trading as City Beach (City Beach) has been ordered to pay $250,333.06 in damages for infringing Seafolly Pty Limited’s (Seafolly) copyright in three artistic works:
- the English Rose fabric print
- the Covent Garden fabric print, and
- the Senorita embroidery design.
Seafolly alleged that a substantial part of each of the works was reproduced without its licence in a material form in fabric prints and swimwear garments by City Beach.
Seafolly sought remedies including compensatory damages, damages for damages to its reputation, additional damages and orders for delivery up of the infringing goods. It was argued the originality of the fabric prints and embroidery designs were critical to Seafolly maintaining its reputation as one of Australia’s leading swimwear brands.
In finding in favour of Seafolly, the court found that Seafolly designers applied their skill, effort, labour and judgment to achieve the works meaning they were original artistic works protectable by copyright. Justice Dodds-Streeton was satisfied that City Beach had notice of facts that would suggest to a reasonable person in the relevant business that Seafolly’s copyright was being infringed.
The evidence revealed that City Beach not only had the power to prevent the reproductions of the Seafolly works but it initiated, directed and commissioned the process. It was shown that City Beach sent physical samples of the genuine Seafolly garments and photographs of the Seafolly designs to its manufacturer and design company with instructions to copy or use them as inspiration for the new City Beach designs.
While there were some differences in detail and degree between the Seafolly and City Beach works, the differences were not sufficient to avoid significant similarity between the works arising from their similar combination of a number of similar elements. In particular, the court found the elements taken by City Beach comprised a substantial part of the Seafolly works in a qualitative sense, and were a quantitatively significant part of the works.
The court also rejected City Beach’s argument that the Senorita embroidery design was ‘embodied in’ the infringing City Beach garment (e.g. a 3D design), and no defence to copyright infringement under the copyright design overlap provisions could be relied upon. In particular, the court drew the distinction between the ‘shirring’ (gathering of fabric) and ‘smocking’ (placing a decorative pattern on top of fabric) processes involved in the creation of City Beach’s infringing garment as two distinct processes. It was the shirring process that created a three dimensional gathered structure, not the smocking process which involved the decoration of the garment with the artistic design.
Original and distinctive fabric prints and embroidery designs may be protected by copyright.
Fashion designers should:
- retain copies of the detailed steps and design creation process for any new fabrics or designs to establish designs are created independently and not copied
- seek advice to determine whether fabrics provided by your print designer are sufficiently different to existing fabrics or designs
- ensure contracts with your fabric print designer or manufacturer include a warranty that any designs are created independently and do not infringe any third party intellectual property rights, and
- obtain an indemnity that your designer or manufacturer will hold you harmless for any claims of intellectual property infringement.
If you require assistance with any aspect of trade mark or intellectual property law, please contact our team.
Focus covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. Focus is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.