By Josephine Gardiner (Sydney)
Australia’s best-known horse racing event, the Melbourne Cup is on today. The race is known to stop the nation… but that’s not all they’re stopping for! Floral frocks, feathers and fascinators – the event is a real life fashion show with its own catwalk known as ‘Fashions on the Field’. The dress etiquette for the event requires ladies to wear a headpiece, usually a one-off piece of millinery. However, such ‘one-off’ pieces are becoming harder to find as millinery falls victim to copying.
Fast fashion competitors are copying designs and having them mass-produced offshore. Despite the hours of work that milliners put into a creation, these knockoffs are being sold for a fraction of the price. Throughout this Spring Carnival, a group of independent milliners who are fed up over the sale of unauthorised copies of their designs, have been naming and shaming the retailers involved. Some milliners have even had to remove their work from various forms of social media in the lead up to the racing season to prevent further copying.
In a market where competitors can easily produce cheaper copies offshore, ensuring your intellectual property is protected to the maximum possible extent is not only a feather in one’s cap but also a commercial imperative. However, unlike Derby Day’s dress code, the law is not always black-and-white in this area. We have outlined below the key areas of intellectual property relevant to milliners and fashion businesses including copyright and design law.
Copyright vs Registered Designs
Designers should consider whether copyright or registered design protection is the most appropriate form of intellectual property protection for their creators. Sketches, drawings, scale models and the ultimate finished product are all aspects of the creative process which are likely to come under the scope of copyright or design law.
Both offer the exclusive right to use, sell or license the registered design or copyright work. This means that others must request permission from the original designer to replicate the product. However, there are differences between them such as the very long life span of copyright and the fact it vests in the author upon the creation of the work, compared to design law which offers the certainty of a formal registration process and the ability to hold a copier liable even if they independently created the design.
Copyright in Australia is governed by the Copyright Act 1968 (Cth) and relates to the protection of an original expression of an idea, but not the idea itself. In the context of millinery, this would mean the idea of a hat with a brim would not be protected by Copyright but a particular hat with a unique brim feature may be. The protection is available for ‘original artistic works’ which can include design drawings, prints, patterns, dressmaking patterns and ‘works of artistic craftsmanship.’ There is no exhaustive list of ‘works of artistic craftsmanship’, but the work must have an element of craftsmanship, have aesthetic appeal and must be the product of the creator’s skill, special training and/or knowledge. An advantage of copyright is that there are no costs or registrations involved and it lasts the lifetime of the author plus an additional 70 years.
In the context of millinery, a one-off headpiece may come under the scope of a ‘work of artistic craftsmanship.’ However, if the milliner hopes to mass-produce the design, copyright would not be an available option in protecting their design, as the law attempts to keep everyday industrial or manufactured goods out of the realm of copyright. Given that millinery is often about pieces being individually created, this may not be a problem, but for those who would like to mass-produce their creation, registering their designs may be a more appropriate option.
Under the Designs Act 2003 (Cth), a ‘design’ refers to the overall appearance of a product resulting from one or more visual features of the product. This includes shape, configuration, pattern and ornamentation applied to both industrially manufactured as well as hand-made products. This does not include the ‘touch and feel’ aspects of the material nor its function. To successfully register a product under the Designs Act, the design be ‘new’ and distinctive’ and cannot be substantially similar to any existing design both nationally and internationally. Once registered, the owner has enforceable rights for a maximum of 10 years after which, the design will be available to the public domain.
What happens if the product is eligible for ‘dual protection’ under both copyright and design law? For example, what if a milliner wanted the visual appearance of a hat to be registered as a design and also the corresponding 3D product to come under copyright due to it being an ‘artistic work’? The law deals with this overlap by limiting the availability of copyright in certain circumstances.
As mentioned above, if the relevant artistic work is ‘applied industrially’, that is if the design is commercially manufactured, then copyright protection will not be available in respect of that work. Dual protection is therefore difficult to obtain for designers who are wanting to commercially exploit their works. Additionally, copyright protection will not be available if the design of the corresponding artistic work (a 3D shape of a product) is a registered design.
However there are some exceptions to the above. If the design relates to a two-dimensional pattern on a product, such as a wallpaper design then it can retain its copyright protection and potentially get dual protection. Secondly, if the product is mass produced and the design is unregistered, it still may be possible to obtain copyright protection if the work is proved to be one of artistic craftsmanship. This exception is significant for designers as it allows them to mass-produce their product while still being able to enforce copyright.
Furthermore, the Australian Competition and Consumer Act 2010 (Cth) prohibits conduct, which would be considered misleading or deceptive. If consumers are being misled into believing that a copied product is somehow related to the designer of the original this could possibly amount to a breach of the Australian Consumer Law.
Lessons for milliners
Milliners must remember that although copyright protection is automatic in Australia, it can be risky to entirely rely on it. If their product is to be mass-produced then they may lose copyright protection. If the only available protection against copying is therefore to register the design, the challenge of proving that the product is ‘new and distinctive’ can be difficult and expensive, especially if there are already similar products being sold in the market. In any event, it is crucial that designers always remember to document their creative process in order to prove ownership of their designs.
For next year’s Spring Carnival, milliners must take off their fascinators and put on their thinking caps! Preventing intellectual property infringement might be expensive, but it is worthwhile when considered in light of the potential consequences down the track (brand damage, loss of marketing opportunities, legal costs).