"Fashion and IP – “protection” of high profile designs

Celebrity fashion is big business with people increasingly wanting to look, dress and smell like their favourite celebrity. While this opens up opportunities for brands and individual celebrities, it also increases the likelihood of copycat products and attempts by copycats to benefit from an implied association with them. How do fashion designers combat such issues? 

Providing designers with sufficient protection to encourage innovation while not restricting others from creating products has always been a legal conundrum in an industry which some consider has its foundation in reusing trends and being “inspired” by others. Designers have found their position much improved since the introduction of a new unregistered Community right which caters for the seasonal production of ranges. This is in addition to UK unregistered design right, which however exclude surface decoration and copyright which only protects artistic works to the extent that they are not defined by the product on which they are incorporated.

However, is reaction the best form of protection?

Bella's dress

2011 was the year of the high profile celebrity wedding. Kate Middleton and Prince William, followed by Kate Moss and Kim Kardashian and then, on the big screen, Bella and Edward in The Breaking Dawn: Part 1. All had the same surrounding media hype being beamed around the world with accompanying photographs and magazine spreads.

Another aspect they shared was a demand for replicas of what the bride was wearing. How does design law protect such sought after designs?

Wedding dresses, while high price tag items, are far more likely to reference classic design elements. For example, the use of lace in the shoulders and sleeves, a sweetheart neckline and an incorporated train in the back of the skirt of the dress (Kate Middleton), a sheer bias cut panel dress with an overlay embellished with sequins (Kate Moss) and strapless fitted bodice with a full tulle skirt (Kim Kardashian). Arguably, none of these elements alone is novel and therefore capable of protection.

But design rights can subsist in the whole or part of an article -- and the combination of a number of commonplace elements, if put together, can result in a protectable design. As many practitioners would agree the skill in design right cases is often defining the elements, or their combinations, in which design right is being claimed, and even in the most unlikely of areas there remains scope for detailed design work to be undertaken.

However, following on from the judgment of the Court of Appeal for England and Wales in Dyson v Vax, the more restrained the defined freedom and the more specific the right claimed, the more difficult a designer may find it to show both validity and infringement.

But are cease and desist letters and threats of litigation the only way? Both Kim Kardashian and Summit Entertainment (the distributors of the Twilight film) anticipated that there would be a demand (although this may have diminished following the quick collapse of KK’s marriage). Therefore, rather than letting third parties take lead on the production of replicas, both commissioned their own authorised cut price versions.

Summit in particular hit the ground running with their imitation dress going on sale shortly after the opening weekend (US$139.5 million in ticket sales) of the film. Months prior to the release of the film in strictest confidentiality, they had worked with Alfred Angelo to develop a version of the Carolina Herrara dress from the film. At US$799 it is reasonably positioned to cash into the romantic capital of Twilight’s predominantly female following.

BB Dakota Twilight jacket

Separately, Summit have again shown that they know the value of their Twilight “brand”. Summit owns various trade mark registrations in the US in relation to “Twilight” and was unhappy when it discovered that BB Dakota, a clothing brand which had produced a jacket worn by Kristen Stewart in the first Twilight film, was using its trade marks to promote and market the jacket. The Leigh jacket had been discontinued prior to the release of Twilight but, seeing it in the film, BB Dakota had put it back on sale. So far so good for BB Dakota. However, having done so they renamed it the “Twilight” jacket and started using various of Summit’s trade marks and copyrighted images to sell it.

No licence agreement had been entered into and Summit successfully claimed infringement against BB Dakota on the basis that their use went beyond what was reasonably necessary to identify the jacket (“as worn by Bella Swan in the movie Twilight” would have probably been sufficient) and suggested some form of association or permission to use the marks.

The right approach will vary from situation to situation; for example, offering authorised replicas of the royal wedding dress would have not been appropriate. However, a designer and/or brand may want to consider, provided it is commercially viable, whether their money is better invested in joining, and ideally eclipsing, those offering a cut price version, thereby taking back some control, rather than chasing them through the Courts".