Copyright and Fashion: A UK Perspective

By Iona Silverman, IP Associate, Baker & McKenzie

In 2006, the UK Government formally adopted the term “creative economy” to capture the sense of the wider contribution of the creative industries to economic and social life. Since then, it has increasingly recognized the importance of the creative industries, in particular the fashion industry, as a generator of jobs, wealth and cultural engagement. However, despite its current and future potential importance to the economy, fashion is not awarded the same level of copyright protection as other creative industries.

Insofar as the fashion industry thrives on copycat designs and seasonal product lifespans, some question whether it has any desire or need to invoke copyright. However, if the UK's creative industries are to continue to flourish, protection is paramount. In an age where mobile phone cameras, 3D printers and online shopping combine to snap, recreate and sell knock-off products in the time it takes to display a collection at a fashion show, designers need to be able to protect their works just like other artists.

Does copyright protect fashion?

Before considering the extent to which copyright protects fashion, a short word on design rights. Why, you may ask, should copyright protect works of fashion when design rights can protect the appearance of a product? This article does not explore the protection offered by registered designs nor does it argue that they are unimportant; rather it probes the extent to which copyright protects fashion.

In principle, every original work is automatically protected under copyright, however, the WIPO-administered Berne Convention for the International Protection of Literary and Artistic Works gives countries some latitude in determining how to protect applied art such as fashion (Article 2(7)). To be protected by copyright in the UK, a work must fall within one of the eight categories set out at s.3 of the Copyright, Designs and Patents Act 1988 ("CDPA"). Logically, a work of fashion should be an original artistic work. Case law, however, does not favor this argument as garments and other works of fashion do not fall neatly into any of the listed sub-categories of artistic works. The most appropriate category, works of artistic craftsmanship, requires a work to be both artistic and a work of craftsmanship.

The meaning of "artistic" has been considered in a number of cases. In Hensher v Restawhile, the House of Lords unanimously held that a prototype for a distinctive three-piece lounge suite, which was intended for mass production, was not artistic. The Lords differed in their reasons as to why. Since this case, a baby's cape has been held not to be artistic because there was no intention to create an artistic work and a patchwork bedspread was not deemed to be artistic because although the designs were "pleasing to the eye" they were not sufficiently creative. More relevant still to the fashion industry, sweaters and cardigans were held not to be artistic. Although they had been displayed in the Victoria and Albert Museum, they were exhibited as examples of developments in fashion rather than as works of art. Most recently the High Court has held that the storm trooper helmets used in the Star Wars films were not artistic because their purpose was not aesthetic. The Supreme Court later held that the helmets were not sculptures, and could not be protected in that way either.

These cases suggest judges are reluctant to concede that works of fashion could be artistic. The meaning of "artistic" remains difficult to define; as a general rule it seems the work must be aesthetically appealing to the general population or must have been created as an artistic work.

Demonstrating "craftsmanship" is easier. Knitting and tapestry-making have been treated as crafts (as were the storm trooper helmets). While works of fashion are likely to be considered works of craftsmanship if they are one-off pieces, the position with respect to mass-produced goods is unclear. In Hensher v Restawhile, Lord Reid and Viscount Dilhorne said that the requirement for craftsmanship implies that a work must be hand-made whereas Lord Simon held that "craftsmanship" cannot be limited to handicraft; nor is the word "artistic" incompatible with machine production.

Overall, these cases demonstrate that the threshold for showing that a work is one of artistic craftsmanship is high, meaning that garments are not protected by copyright in the UK. Other countries, including France, Germany and the US, do not have closed list copyright systems; because they don't have to attribute works of fashion to a specific category of protected works they enjoy a broader scope of protection.

Is the UK moving towards an open list system?

In France, Germany and the US, any work which is original can be protected by copyright. In France, the threshold for originality is a work which "bears the stamp of the author's personality" and in Germany copyright protects "personal intellectual creations". This is similar to the "intellectual creation" test found in the Software Directive, the Database Directive and the Term Directive of the EU. This test was first used in respect of literary works at a European level in Infopaq, a case decided in 2009 concerning the copyright in a digital news reporting service.

The Court of Justice of the European Union (CJEU) held that for a part of a literary work - a newspaper article - to amount to an infringing reproduction, that part must itself be an original work in the sense of being its author's own intellectual conception. In Bezpecnostní softwarová asociace – Svaz softwarové ochrany v Ministerstvo kultury a case relating to copyright in graphic user interfaces, the CJEU held that copyright applies only in relation to a subject matter which is original in the sense that it is its author's own intellectual creation. Later the test was applied by the CJEU in Football Association Premier League and others v QC Leisure and others and Karen Murphy v Media Protection Services Ltd and in SAS v World Programming Ltd.

These cases have enabled the CJEU to migrate from a starting point where only computer programs, databases and broadcasts were harmonized works (see above Directives) and all other subject matter was protected as set out in national legislation, to fully harmonizing the notion of a work, so that anything which is the "author's own intellectual creation" is protected. This is, of course, inconsistent with the closed list approach in the CDPA. Lionel Bently, of Cambridge University, has critically defined this process as "harmonization by stealth". If the harmonized notion of a protected work is implemented in the UK, this could dramatically expand the scope for fashion designers to use copyright to protect their works.

The test was considered in relation to originality by the High Court in Newspaper Licensing Agency v Meltwater. It found that the test for originality had been "re-stated but for present purposes not significantly altered by Infopaq". This was confirmed by the Court of Appeal. Subsequently in Temple Island Collections Ltd v New English Teas Ltd, the "red bus case", the then Patents County Court (now the Intellectual Property and Enterprise Court) was asked to consider whether copyright subsisted in the composition of a photograph of a red bus travelling over Westminster Bridge, against a monochrome background. It was common ground at trial that, following Infopaq, copyright may subsist in a photograph if it is the author's own "intellectual creation". As the works in this case were photographs, the analysis is in line with the Term Directive, however it is interesting that the court made reference to Infopaq rather than the Term Directive when stating the test.

These cases indicate that the harmonized test for originality now applies in the UK; it therefore seemed likely that the harmonized notion of a work would also apply. However, when SAS Institute v World Programming Ltd returned from the CJEU to the High Court, Mr. Justice Arnold held otherwise saying that just because something was an intellectual creation it was not necessarily a work. The Court of Appeal dismissed the subsequent appeal but failed to address this point, leaving open the question of whether the intellectual creation test defines a protectable work in the UK.

Protection in the US

In the US, original works of authorship are protected by copyright. The test is whether they contain a "modicum of creativity". One of the main differences in the US is that the US Copyright Office operates a voluntary registration system for copyright – in line with the Berne Convention (Article 5(2)). Federal registration presumes ownership and validity, and crucially is necessary to file an infringement action. US law also provides for a fair use exception which is broader than the fair dealing exceptions seen in Europe. Fair use is an old doctrine which was codified by s.107 of the Copyright Act 1976. The question of whether use is fair is determined on the facts of each case, however the general principle is that the use must add to society or be "transformative". The US system therefore allows for works of fashion to be more easily protected than in the UK, and for registration, enabling designers to publically stake a claim in their designs. However it also permits a broader use of protected works before such use is deemed infringing.

The Innovative Design Protection Act, more commonly known as the "Fashion Bill", was originally introduced to Congress in 2006, however 2012 saw its sixth, and likely final, failure to make law, meaning that legislative change in the US is unlikely any time soon.

Perfumes

If all "intellectual creations" were protected by copyright in the UK an example of a product that might benefit from protection is perfume – a global multi-billion dollar industry. While trade mark law and passing off may serve to protect a perfume's name and packaging (and even use of descriptors of the scent) it is not currently possible, in the UK, for fashion houses to protect the perfume itself.

In other jurisdictions perfumes are already protected by copyright. In 2006, in Lancome Parfums v Kecofa BV, the Dutch Supreme Court held that Trésor by Lancôme was protected by copyright (see Copyright in the Courts: Perfume as Artistic Expression?). Dutch copyright law, which like French law follows a civil law tradition, therefore protects original works which bear the stamp of the author's personality. For a creation to qualify as a protected work, it suffices that it be expressed in a manner "perceptible to the senses". In this case, the Dutch Supreme Court concluded that while a perfume's scent was "too fleeting and variable and dependent on the environment," to be protected by copyright, the liquid making up the perfume was "sufficiently concrete and stable" to be considered a work. Since the liquid satisfies the perception requirement under Dutch law and perfume is a creative composition, it may be protected by copyright.

In the same year, the French Cour de cassation held that perfume could not be protected by copyright as it was not sufficiently creative. In Bsiri-Barbir v Haarman & Reimer, the Cour de cassation ruled that perfumes are not eligible for protection under French copyright law because they "are a product of the application of purely technical knowledge and lack, therefore a discernible association with the individual personalities of their creators." The court was of the view that perfume makers were artisans, or craftsmen, rather than artists. It is ironic that in France a work is not protected if it is a work of craftsmanship whereas in the UK designers must try to demonstrate exactly the opposite. The Cour de cassation has since confirmed, in Beaute Prestige Int'l v. Senteur Mazal, that French copyright does not protect perfumes.

Notwithstanding the inconsistencies surrounding the protection of perfume, fashion houses would find it easier to use copyright to protect works of fashion if the requirement that a copyright work fall within one of the eight categories set out at s.1 CDPA were abolished. This would be a radical change to copyright law in the UK, but it is a change which is currently a real possibility.

In the UK, the political climate and the application of recent CJEU case law combine to create the potential for copyright law to change dramatically. If a judge were to confirm that, following Infopaq, any work which is the author's own intellectual creation is protected under English law this would open the door for fashion designers to argue that shoes, hats, clothes, perfume and make-up should all be protected by copyright. It seems fair, given the creative and original nature of works produced by the fashion industry, that copyright should extend in some form to protect fashion. It is up to the fashion industry to mould that argument in its favor and to maximize the opportunity presented by the current uncertainty surrounding the definition of a copyright work.

To stay ahead of the game in fashion, the law in the UK needs to be updated; otherwise the UK's young designers and fledgling businesses may choose to launch in more favorable jurisdictions.