THERE ARE PLENTY of businesses making and
selling garments in the rag trade and all of them are trying to
stand out from the crowd. Each label is looking for their point of
difference and, for a large number of brands, their distinctive
fabric prints are a strong part of their brand identity and what
attracts consumers to their garments.
To avoid damage to a brand's reputation and its exclusivity
in the marketplace, it is important that businesses take steps to
ensure that their original fabric prints are protected. In a recent
Federal Court of Australia decision, Seafolly Pty Limited v
Fewstone Pty Ltd (trading as City Beach) (Seafolly case), Seafolly
Pty Ltd (Seafolly) successfully sued surf shop operator City Beach
for infringement of Seafolly's copyright in three copyright
works: two fabric prints and a design that was embroidered onto
City Beach was ordered to pay Seafolly over AU$250,000 in
This case provides a prime example of how labels can fight back
against copyists and enforce their copyright rights in exclusive
Outlined below are three key tips you should employ in order to
protect your business' unique fabric prints:
1. Keep accurate creation records
It is important that designers are in the habit of maintaining
accurate records showing every stage of a design and how the design
evolved, including any reference materials that were used in the
design process. When creating a design for a new print, it is
understandable that the final design itself, and not the journey
taken to arrive there, is often at the forefront of the
designers' minds. However, if someone copies your original
print design, or accuses you of copying their design, you need to
be able to show how your design was created. The best way to do
this is to keep an accurate design file, both digitally and in hard
copy, containing any documents that show the path of how the design
was arrived at, including mood boards, drafts of the design and
emails between team members discussing the direction of the
Part of the reason behind Seafolly's success in the Seafolly
case, was that it was able to produce complete design files for its
prints, showing that the works were original and had been
2. Ensure that your label owns its prints
Be warned – you may not own what you think you own.
Copyright is generally owned by the creator of the copyright work.
This includes the individual or the employer of that person if the
work is created in the course of the creator's employment.
However, when a fashion label enlists the services of freelancers
to create original fabric prints, or source the works from fabric
design houses, the copyright in the print will be owned by the
freelancer, or the creator of the print you have purchased, unless
otherwise specified in writing.
It is best to ensure that written employment contracts are in
place (confirming that employees are 'employees' and not
contractors) and that all freelancers, or suppliers of fabric
designs, sign a short copyright assignment for all of the prints
that they create for your fashion label.
Seafolly engaged third parties to undertake some of the design
work of its original fabric prints that were copied by City Beach.
This was not an issue for Seafolly as it was able to produce
written assignments which proved that Seafolly was the owner of
copyright in the prints and was entitled to bring an action for
infringement in copyright.
3. Be ready to enforce your rights
Finally, it is important that businesses be proactive in
monitoring competitors and keeping an eye on the marketplace to
ensure that copies of fabric prints are quickly detected and action
taken. Allowing copies of your business' original prints to
remain in the marketplace can not only impact your bottom line with
reduced sales, but can also damage your brand and its reputation
In the Seafolly case, AU$80,000 of the damages was to compensate
Seafolly for lost sales and AU$20,000 was for harm to
Seafolly's reputation as a result of the copies being available
in the marketplace. The remaining AU$150,000 was awarded as
'additional damages', which the Court ordered for various
reasons, including to discourage further copying by City Beach and
others in the garment industry generally who may be tempted to
engage in this type of conduct.
The creation of original fabric prints can be a valuable way for
fashion brands to build a name for themselves. It is important that
this investment is protected by fashion brands and that action be
taken against competitors who try and take advantage of this
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
K&L Gates has been awarded a 2012 EOWA Employer of Choice
for Women citation acknowledging our commitment to workplace
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