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Wednesday, 16 October 2013

IP and the Fashion Industry Conference 2013: Part III

The first post-prandial session of IP and the Fashion Industry was opened by Antony Gold (HGF), taking a look at disputes involving the fashion sector. Typical features include the following: design businesses as claimants rather than as defendants; the subject of dispute being "fast fashion"; small volumes of goods made and sold; widely varying approaches towards costs; big problems being easier to solve than small ones -- and lawyers being as often part of the problem as they are part of the solution.

Said Antony, the best way to address IP fashion disputes is to start with the question "what is the claim worth?", since the route to its resolution may depend on the answer to it.  Also, it's worth keeping a claim to its bare necessary minimum if a swift and effective result is sought, even if this means sacrificing a chance to succeed with regard to secondary issues. Issues can be clarified when letters are "ghosted" and sent business-to-business rather than lawyer-to-lawyer. Letters are less likely to be pared down when they relate to registered designs, however, since a good deal of technical and legal detail might have to be included in an otherwise simple letter.

Other issues to be considered include the risk of 'creep' as the defendant eases himself from one product to another, as well as genericide, the impact in general of infringements on the claimant's brand.

The parameters of dispute resolution services related to the measure of 'fast', 'cheap' and 'good', Antony noted. They can be fast and cheap, but not good; fast and good, but not cheap, or good and cheap, but not fast.

Looking for the exit: how important is it? The fact that a disputant in a fashion IP dispute has an exit strategy for bailing out of litigation etc is a reality, and even if you don't say what your client's exit strategy is, it isn't dificult to guess if you simply put yourself in the shoes of the other side.

Antony was followed by Berwin Leighton Paisner's Simon Clark.who promised not to cover the entirety of UK and Community design law in 45 minutes but merely to pick out the interesting bits. These interesting bits consisted to a great extent of large, flowery duvet covers.  Simon took a close look at the facts and legal issues pertaining to Karen Millen v Dunnes Stores, which the Irish Supreme Court has referred to the Court of Justice of the European Union.  It was not right, he emphasised, that one might copy a design simply because the various different bits of it might have been used on other garments on earlier occasions: it was the totality of the design which the law protected.

Like Robert Cumming this morning, Simon cited Nouveau Fabrics v Voyage Decorations and Dunelm, here), though this time from the point of view of not "stripping down" a design but taking it as a whole rather than in terms of liability for innocent infringement. In this case, notwithstanding the fact that both sides' designs were based on a pineapple -- a fairly standard fruit -- it was still possible to show that the defendant had copied. The elements of similarity were so similar that the burden of proof shifted from the claimant to the defendant to show how, other than by copying, its own design was created.  Simon then took the audience through Designers Guild v Russell Williams, here, in which the House of Lords (as it then was) gave a lesson in how to compare an allegedly infringing design, while also reminding the Court of Appeal, England and Wales, that it was not free to substitute its own findings of fact for those of the trial judge.  While "do the two designs give the same overall impression?" is the standard by which design infringement is measured, copyright only requires a finding that a substantial part of a work has been copied, whether the respective works look similar or not.

Lambretta Clothing Co Ltd v Teddy Smith (UK) Ltd and another [2004] EWCA Civ 886 (noted here by the IPKat) was the next case to receive Simon's attention, when he asked whether design law protects a combination of colours in the absence of shape (no, said the Court of Appeal).  This is a difficult decision, with Jacob LJ and Mance LJ adopting different interpretations of the law and Sedley LJ apparently agreeing with Jacob LJ but not for the reason given by him. Simon then explained the Samsung Galaxy and Magmatic decisions and their relevance to fabric pattern and surface decoration.

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