 Ask Me About IP
(New Zealand) - December 2009
Earlier this year, FINZ joined forces with James & Wells Intellectual Property to host "Ask Me About IP" - an intimate workshop where attendees were given the opportunity to put their fashion-related questions to IP lawyer Carrick Robinson. Here are some of the fundamentals that where raised during our discussion ...
Q: "What protection is currently available with respect to the copying of designs?"
“Patents and design registrations for fashion are fairly uncommon. In the fashion sector, most companies tend to rely on copyright, which automatically exists in certain categories of original work at no cost. However, you do need to keep detailed design and development records [such as dated sketches and patterns], because the copyright is created in preparatory work, not the finished garment.
“Ideally, you should have copyright for each individual garment and it helps to have an IP lawyer date your work. But, in reality anyone can use the copyright symbol and there’s no harm in employing a generic copyright warning as a deterrent.
“If somebody does ‘knock-off’ your work, there are certain hoops you’ll have to jump through. If you have a registered design, you can sue for infringement. But, with copyright you need to prove that copyright exists and you are in fact the true author of the design, which can be quite costly. It’s not a perfect system, so you need to determine which option works best for you.”
Patents
A patent provides protection for the ideas embodied in novel technologies, products and processes. Patents cover a principle or idea and not just a single physical form of an invention. Therefore, the monopoly granted can be wide in scope and cover many variations of a basic product of process.
Design Registrations
A design registration provides protection for aspects of the appearance of an article, such as its shape, configuration, pattern or ornamentation. Individual design registrations cost up to NZ$1,000.
Copyright
Copyright automatically exists in certain categories of original works. There is no requirement to register copyright and hence no cost. Copyright does not extend to ideas. It protects the particular way in which a particular idea is expressed.
Q: "What constitutes a copied design? How different does a design need to be from an existing product in the market? A lot of people seem to work to the 20-30 percent alteration rule?"
“The 20-30 percent rule is a complete myth and not a good rule of thumb. The real issue is substantial transformation, which is very subjective and based on quality, not quantity. In music, for instance, borrowing a couple of bars or a distinctive bass-line would be copyright infringement. When it comes to fashion, jeans are a fairly standard garment, but Levi’s stitching and the positioning of its red-tab are recognised as unique or substantial and are therefore protected.
“In cases like these, we look at the similarities and differences between the two garments, interrogate the designers on its origin and weigh-up which features are unique or substantial.”
"A lot of copying goes on in the production of textile prints and designs. How can a designer avoid innocent infringement when they’re purchasing fabric prints and designs in good faith from a supplier?"
“You need to ask the supplier whether it’s their own original design and get it in writing – ‘you indemnify me from any risk of IP infringement’. Unfortunately, this type of action is not that straightforward. Ultimately, you need to balance the practicalities of your relationship with the supplier.”
Q: "Litigation can be expensive and I doubt if many New Zealand designers could afford to take on a large company. If someone infringes your IP, how far do you go in taking legal action against them? What are the costs involved and when do you call it quits?"
“As a preventative measure, you should have IP markings on your website, garments, labels and swing-tags – the copyright symbol, your company name and the year.
“When it comes to litigation, the main thing is to act quickly. The first step is a written cease and desist order, which costs around NZ$1,000 and outlines the foundation for potential legal proceedings. In the letter, we demand that the offender cease production and sale of the infringing items, and order these goods to be removed from the market and destroyed. We will generally go back-and-forth in writing for 2-3 months until the matter is resolved or our client takes them to court. Around 80 percent of all threatened litigation is settled out of court and in most cases the offender backs down.
“The next step would be to file an interim injunction, which ensures that the cease and desist order is enforced, because we’re now pending trial. Getting to this stage will cost NZ$15,000-$25,000. And, in 90 percent of cases this is where it stops.
“The final step is a substantive trial, which is serious action. In this situation, both sides will be confident that they have a strong case. Going all the way will cost you anywhere between NZ$20,000-$50,000 and the winner will be awarded a percentage of their costs.”
"Could you just go and talk to the person infringing your copyright?"
“You could go and see them, but we advise our clients not to, because they may prejudice their rights. We prefer to be involved in all conversations, which should be carried out without prejudice."
"Could you write your own cease and desist order?"
“A generic letter doesn’t have any impact without the legal content and this is important, because it outlines the foundation for potential legal proceedings. If you’re determined to take matters into your own hands, talking is probably better than putting anything into writing.”
Feedback from "Ask Me About IP" attendees ...
"We found the James & Wells IP workshop to be really valuable. It brought up intellectual property issues the we hadn't previously considered, including new media implications, which were really interesting."
Helene Morris & Aimee McFarlane - (Lonely Hearts)
"It was a privilege to have someone so knowledgeable speak at a high level on topics that were directly relevant to our sector and respective businesses. It was also refreshing to be given rough estimates of the costs involved and tips on certain tasks that small businesses can manage themselves."
Cushla Reed - (Minx Footwear)
"We both found the IP workship to be very relevant and beneficial to our business. It was nice having a smaller, more intimate group, because we felt more comfortable asking questions. Carrick explained things in a way that was easy to understand and didn't bamboozle us with lawyer-speak."
Toni Sills & Kylie Niovara-Dave - (Caroline Sills)
For more information contact Carrick Robinson at James & Wells Intellectual Property - email: carrickr@jaws.co.nz (or) ph: +64 9 914 6740.
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