- Elwood Clothing t-shirt and swing tag designs are held to be artistic works by the Full Federal Court and protectable pursuant to copyright law.
- Designs admittedly copied by Cotton On have been found by the Full Federal Court to have substantially reproduced artistic works created by Elwood Clothing, even though many changes were made.
- It is important for designers, whether they be in the fashion industry or other design industries, to take care when referencing another person's copyright work.
- Changes to the colour, words or numbers in a design may not be enough for a copier to evade a finding of copyright infringement.
In late December 2008, the Full Federal Court delivered judgment in a copyright infringement appeal filed by Elwood Clothing Pty Ltd ("Elwood Clothing"). The unanimous decision of the Full Federal Court found that Elwood Clothing, a designer of fashionable street wear under the "Elwood" brand name, owned copyright in a range of its t-shirt and swing ticket designs.
The Full Federal Court overturned the trial judge's finding that a t-shirt and swing ticket design, which employees of Cotton On Clothing ("Cotton On") admitted to copying from designs released by Elwood Clothing, did not constitute an infringement of copyright.
This is an important decision that upholds copyright protection for designers and innovators of original clothing designs, and demonstrates that even though many changes were made to the Cotton On design this was insufficient to avoid infringement.
Employees of Elwood Clothing designed an innovative t-shirt design known as "NewDeal" (click here). This t-shirt design was extremely successful for Elwood Clothing and the design was one of its best sellers at the time. Employees of Elwood Clothing also designed an innovative and unique label design known as "Vintage Sport Swing Tag" (click here) which was used on a range of its garments including "NewDeal".
Cotton On released a similar t-shirt to the "NewDeal" design in 3 different styles (click here). Cotton On also released a swing tag similar to the "Vintage Sport Swing Tag" design (click here). The Cotton On designers gave evidence at trial that they had made reference to the "NewDeal" design and the "Vintage Sport Swing Tag" design when they designed the Cotton On t-shirts and swing tag. Furthermore, the evidence led at trial revealed that these employees were told to use the Elwood Clothing garment and swing tag in order to design something that was "the same, but different".
At trial, Justice Gordon found that the "NewDeal" design and the "Vintage Sport Swing Tag" design were protectable under copyright law as artistic works. Her Honour rejected Cotton On's submissions that these works were literary works as they could be read. Justice Gordon noted that the designs were artistic in nature because they had been created to form an aesthetically pleasing "look and feel" in the same way that any picture or drawing does.
However, Justice Gordon rejected Elwood Clothing's submissions that the Cotton On garment and label designs substantially reproduced the "NewDeal" design and the "Vintage Sport Swing Tag" design.
In her analysis, Justice Gordon found that the "NewDeal" and "Vintage Sport Swing Tag" designs were made up of a series of integers. Her Honour noted that while the layout of the "NewDeal" and "Vintage Sport Swing Tag" may have been taken by Cotton On, the fact that Cotton On changed the words and the numbers resulted in a different visual impression being made. Her Honour went on to discount the ideas or concepts which she said copyright does not protect and she did not consider the copyright work as a whole.
The Court then considered whether Cotton On had taken a substantial part of Elwood Clothing's designs. Her Honour found that the integer taken by Cotton On was one of a series of integers and that this did not constitute a substantial part of the copyright work. Justice Gordon made this finding even though the evidence at trial showed that the Cotton On employees had blatantly copied the Elwood Clothing t-shirt and swing tag designs.
Elwood Clothing appealed the findings of the primary judge to the Full Federal Court of Australia who unanimously upheld the appeal. The Full Federal Court agreed that the designs were original artistic works and they also rejected Cotton On's submissions that they were literary works.
The Full Federal Court found that the Cotton On garment and swing tag designs did in fact infringe the copyright in the "NewDeal" design and the "Vintage Sport Swing Tag" design. In coming to this conclusion, the Full Federal Court noted that the trial judge was mistaken in excluding from consideration what she classified as the ideas or concepts which are not protected by copyright law in determining whether Cotton On had taken a substantial part of the work. While the Full Federal Court accepted that Cotton On had changed the words and the numbers, the real question was whether Cotton On reproduced a substantial part of Elwood Clothing's original designs – a question which they unanimously answered in the affirmative.
The case will now be sent back to the trial judge for a determination on damages. The parties were heard on this issue at the trial, however no determination was made by the trial judge as Elwood Clothing did not succeed in its infringement claims at the first instance.
It is important for designers, whether they be in the fashion industry or other design industries, to take care when referencing another person's copyright work. The test for an infringement of copyright is not whether there has been an exact reproduction of the work, rather a person will be found to have infringed copyright if they have created a substantial reproduction of the copyright work in question.
Changes to the colour, words or numbers in a design may not be enough for a copier to evade a finding of copyright infringement. If there is clear evidence of access to the original work and reference then significant changes need to be made in the new design in order for a designer to escape being found liable for copyright infringement.
2009 L'Oreal Melbourne Fashion Festival
Middletons is a proud sponsor of the 2009 L'Oreal Melbourne Fashion Festival which will take place from 15-22 March 2009. As part of our sponsorship, we will host the Middletons Fashion Law Breakfast at our Melbourne offices on 17 March 2009. This year's breakfast will cover a number of recent cases that have been handed down by Australian courts which impact the Australian fashion industry and will include a discussion of the Elwood v Cotton On decision.
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.