Kate Middleton's fashion choice and fair dealing: a snap decision?

This Kat has more than a passing interest in fashion. She was therefore, she was intrigued to read about the possible proceedings in Australia between famous designer Collette Dinnigan and photographic agency Ikon Pictures concerning the use of a photograph of Kate Middleton, the Duchess of Cambridge, at a wedding in September 2011.

The Duchess wore a red lace dress from Ms Dinnigan's collection to the wedding and was photographed by one of Ikon's photographers. Ikon then sold the photographs to London's Daily Mail newspaper, which in turn featured the photographs in a story about the Duchess's attendance at the wedding. The fact that the Duchess was wearing one of her designs came to the attention of Ms Dinnigan, who issued a press release with the picture stating that she was 'pleased to announce that Catherine, Duchess of Cambridge wears (A) Collette Dinnigan Red French Floral Lace Dress'. Ms Dinnigan did not request permission from Ikon or pay a licence fee (which, according to Ikon, would have been in the region of £5,000) to use the photographs.

The director of Ikon, Niraj Tanna, stated last week stated that he would commence legal proceedings against Ms Dinnigan for copyright infringement over the widely disseminated media release (which, he claimed, had also resulted in the pictures being used without permission on local fashion websites). Ikon's legal advisors, Minter Ellison, indicated that Ikon would be seeking damages and exemplary damages because of the flagrancy of the infringement. Mr Tanna stated that:

"As a royal photographer I do not take lightly when a third party infringes my copyright ... The amount of effort that goes into photographing The Duke and Duchess of Cambridge at various events is very costly and time consuming. I'm sure Collette Dinnigan would take offence if I was to walk into her boutique and take a dress without paying."

In response, Ms Dinnigan claims that she had acted within the defence of fair dealing because she was reporting the news. Her legal advisors, Axis Legal, stated that:

"The press release issued by Ms Dinnigan's company was for the purpose of reporting on a news event that was current at the time, namely that the Duchess of Cambridge was wearing a Collette Dinnigan dress. This is appropriate use of the photo in question and Ikon was at all times acknowledged as the author of the photograph."

Section 42 of the Australian Copyright Act 1968 contains a defence for fair dealing for reporting the news. However, the corresponding section under section 30 of the Copyright Designs and Patents Act 1988 in the UK expressly excludes photographs for the purposes of fair dealing under subsection (2). Accordingly, Ms Dinnigan would not have been able to raise the defence of fair dealing under this head had the alleged infringement occurred in the UK.

The IPKat suggests that Mr Tanna's choice of words is interesting, for in a literal sense he has in fact 'take[n] a dress without paying'. That is, he has captured and authorised the reproduction of a photograph which itself contains Ms Dinnigan's artistic work. The Kat feels that Ms Dinnigan may have not raised this argument in her defence owing to that favourite area of IP practitioners, the (dreaded) copyright/designs overlap. If Ms Dinnigan's dress was mass produced, then her protection would be under design rather than copyright law.

Merpel, a little fashionista herself, asks readers the question: even if section 30(2) did not apply to publications in the UK, are the fashion choices of the Duchess current newsworthy events or is this construing the concept too liberally?