20 May 2020
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The fashion industry like all other industries is navigating unprecedented economic challenges. Brands need to leverage and protect their IP portfolio to drive brand awareness, customer engagement, and sales. Further, the novel coronavirus outbreak has not diminished the threat of IP infringement or counterfeiting. Fashion brands still need measures to safeguard their creative output, market share, and to combat the adverse effects of brand piracy and dilution. The global health crisis has given a big boost to the upward trajectory of e-commerce sales and a strong incentive to cutting costs, which together will increase the IP risk materially.

Response Clothing v Edinburgh Woollen Mill

On 29 January 2020, the English High Court handed down its decision in the copyright infringement action between Lancashire-based clothing manufacturer, Response Clothing Limited (‘Response’) and Edinburgh Woollen Mill (‘EWM’), the Carlisle-based retailer with a portfolio of 400 stores in the UK. Response had supplied EWM with a ladies jacquard top with a wave pattern (‘the Wave Fabric’) for four seasons. In 2012, EWM rejected Response’s price increase for the supply of the jacquard tops. The Wave Fabric was a commercial success and EWM, loath to lose the product, provided garment suppliers in UK, Vietnam, and Bangladesh with a “sample of Response’s top or a swatch of Response’s fabric” and a specification document. Mr Justice Hacon had to decide whether the Wave Fabric was capable of copyright protection as an artistic work or a work of artistic craftsmanship and, if so, whether EWM was liable for primary and secondary infringement for the sale of the tops with the Wave Fabric.

It was held that the Wave Fabric qualified for copyright protection as a work of artistic craftsmanship. The designer of the Wave Fabric was both (a) a craftsman in that he or she had made the fabric in a skilful way, taking justified pride in his or her workmanship, and (b) an artist in that he or she used their creative ability to produce something which has aesthetic appeal. EWM was found liable for secondary infringement, because a reasonable person would have believed that the similarities between Response’s Wave Fabric and the fabrics made by alternative garment suppliers would mean that sale of these fabrics would infringe the rights held by Response.

Conclusion - Much Ado about Fabric?

This is the first English decision which applies the judgement of the Court of Justice of the European Union (‘the CJEU’) in Cofemel. The CJEU held that the national law of Member States could not impose a requirement of aesthetic or artistic value. The CJEU decision represented a change from the UK decision in the Star Wars case, which had held that the Stormtrooper helmets and armour that Lucasfilm Ltd had commissioned did not to have aesthetic appeal and therefore did not benefit from copyright protection. It followed that the Wave Fabric was original, because its design was the author’s own intellectual creation.

Response Clothing v Edinburgh Woollen Mill is a cautionary tale for cost-conscious brands at a time when price increases will be particularly unwelcome. Brands should be wary of providing new suppliers with samples made by previous suppliers. There is a heightened risk that the new supplier will produce a sample that is very similar to the sample supplied. In pursuit of cost-effective alternatives to popular designs, brands could be at risk of IP infringement claims. Conversely, innovative designers now benefit from a more favourable interpretation of the IP in their lines, which should boost their brand enforcement strategies.

Find a link to the Response Clothing decision here.

Find a link to the Cofemel decision here.

Find a link to the Star Wars decision here.

This blog was co-authored by Hilda-Georgina Kwafo-Akoto and Sean Jauss.

Sean is head of our legal team and dispute resolution teams and a member of our Management Board. He has over 15 years of experience advising on contentious and non-contentious IP matters, including patents, trade marks, designs, copyright, database rights and trade secrets across a range of industry sectors. He works closely with senior management and their external counsel to deliver a wide range of IP related projects in a pragmatic and commercially-focussed manner, including on IP protection, commercialisation, technology transfer and dispute resolution.

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