Prior to 2003, fashion designers could sue copyists of their
original designs under copyright law. In the Federal Court
decision of Muscat v Le, Justice Finkelstein held that Theresa
Muscat owned copyright in her dress making patterns for a pair
of V-shaped dance pants. His Honour found that the respondent
in copying these dance pants would have produced dress making
patterns which infringed Ms Muscat's dress making
patterns in breach of her copyright rights.
However, changes in 2003 to the Copyright Act 1968 (Cth) and
the introduction of the Designs Act 2003 (Cth) meant that if
fashion designers want to protect their original designs then
they need to register designs for their garments with IP
Review had issued a large number of copyright infringement
proceedings against copyists prior to the 2003 amendments.
Since the amendments to the law on copyright and the
introduction of the Designs Act 2003 (Cth), Review introduced a
company policy to file design applications for its new
Sometime in May 2006, an employee of Review visited a
Charlie Brown store at DFO in Moorabbin and purchased a
'lili' branded dress that was very similar to a Review
branded dress which had been designed by Review's
in-house design team. Review requested registration and
examination for this design with IP Australia and design
infringement proceedings were issued in the Federal Court of
Australia against Innovative Life Style Investments Pty Ltd and
Clothing Outlets Pty Ltd.
Innovative Life Style Investments Pty Ltd is the registered
owner of the 'lili' trade mark which is one of the
brands belonging to The Discovery Group.
Justice Jessup heard the parties at trial in December 2007
and he has since handed down judgment in this matter. In his
judgment, Justice Jessup awarded $7,500 in damages to Review
based on damage which it suffered to its reputation due to the
existence of the copy 'lili' branded garment.
He also ordered the respondents to pay additional damages in
the sum of $10,000 based on the fact that the respondents
continued to sell the copy 'lili' garment after they
were put on notice of the registered design for the Review
garment. His Honour also ordered that the respondent's
pay Review's legal costs.
Justice Jessup was not required to make a finding on whether
the 'lili' dress complained of infringed the design for
the Review dress as the respondents conceded that the
'lili' dress was substantially similar in overall
impression to the Review garment.
However, Justice Jessup did find that due to the lack of
creation evidence presented by the respondent's at
trial and the striking similarities between the two garments,
an inference that the 'lili' dress was a copy of the
Review dress is justifiable.
Peter Strain, one of the founding directors of Review, said
that Review was very pleased with the result.
"Review is committed to protecting its original designs
through the design registration regime," Mr Strain
"This decision confirms that the Courts are willing to
recognise original clothing designs that are created by
Australian designers and protected through the Australian
Design Registration system.
"It is important for Review to protect its original
clothing designs so that its loyal customers are guaranteed
that the garments which they purchase from Review stores are
not knocked off by other traders. It is also important for
Review to issue court proceedings when its designs are copied
to ensure that Review's reputation as an innovative
designer is retained and upheld."
Tony Watson, a Partner of Middletons who acted for Review
said: "Since amendments were made to the copyright laws in
Australia which precluded designers from bringing actions for
copied garments pursuant to copyright in dress making patterns,
Australian designers have been forced to seek protection
through the Australian Design Registration system.
"This decision clearly shows that the Courts are
prepared to recognise design rights in fashion garments.
"Review takes the copying of its original designs
seriously and it currently has three proceedings on foot in the
Federal Court of Australia against the brands "Alive
Girl', 'Spicy Sugar' and 'Redberry' for
infringing a number of its registered designs for innovative
"Middletons acts for a number of Australian fashion
designers and it has been assisting these clients to register
designs for their garments so that action can be brought
against traders who copy their original garment designs.
Designers need to protect their designs through IP
Australia's design registration system otherwise they
will have no recourse against copyists of their
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.
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