This is written by Srajika Gupta, pursuing a Diploma in Intellectual Property, Media, and Entertainment laws from lawsikho. This article has been edited by Dhruv Shah (associate, lawsikho) and by Ruchika Mohapatra  (associate, lawsikho).

Introduction

Copyright protection is available for a whole array of creative works, which also includes derivative works. A derivative work is usually based on a work that is already copyrighted. “In copyright law, the term “derivative works” is referred under Article 2(3) of the Berne Convention for the Protection of Literary and Artistic Works (1971) to the adaptations, translations, arrangements and similar alterations of preexisting works which are protected under Berne Convention as such without prejudice to the copyright in the preexisting works. A work consisting of annotations, elaborations, exaggerations, revisions, or other modifications which wholly represents an authentic and original work of authorship, is a “derivative work.”

However, this definition has come under court’s scrutiny by way of various case laws, which generally concludes that there must be substantial new material in a work to be considered for copyright as a derivative work and that it must have sufficient originality and creativity. 

Derivative works in fashion law mean creating a novel version or sequel design that incorporates core and protectable elements of the copyrighted design with certain unique elements. When it comes to the fashion and haute couture industry, these rights cover major ways in which a design would be passed off by the copyist. This is another major reason why copyright is such an important and  indispensable tool for the luxury goods industry.”Through this article, the author seeks to explore the copyright protection of derivative works in the fashion industry. 

Copyright protection of derivative works

There are two ways in which derivative works are protected under copyright law. 

1. Firstly, the derivative work is protected under the copyright of the original work. This means that the owner of original copyright work has also got rights to derivative work. Therefore, the owner of the copyright of original work can file a copyright infringement lawsuit against a person who creates derivative work without permission. 
2. Secondly, the derivative work itself is protected under copyright law. The creator of derivative work owns the copyright to the derivative work. This creator can either be the creator of original work or a person who has obtained a derivative work license from the person who owns the copyright of original work. 

However, if the original work is under the public domain, the derivative work will be eligible for copyright protection, but the original work wouldn’t be protected under copyright. When it comes to fashion designs, we first have to see what is copyrightable: sketches, colours, cuts and graphic designs etc. Sketches are afforded copyright protection. The copyrightable part of the sketch is the drawing and not the underlying idea. Colours are a part of trademark law, whereas the cuts under fashion designs are part of design law. However, Graphic designs are protectable under copyright law and the U.S. Supreme Court addressed this issue in the case of Star Athletica v Varsity Brands, stating that “two-dimensional designs appearing on the surface of [clothing]” including “combinations, positionings, and arrangements” of shapes, colours, lines, etc. are protectable by copyright.”

One more area where derivative work doesn’t come under the scrutiny of copyright infringement is the work of parody. Holding up a piece to criticism through parody, a hyped imitation of work for commercial comedic purposes or critiquing them falls under fair use doctrine when the parody is transformative in some kind of way. A derivative work that simply uses copyrighted names, concepts, characters and ideas cannot be passed off as parody, but a parody is actually that work that takes them and twists them in a way that makes the consumer gain an insight into the original. Often, that new understanding is present to add hysteria as to how the parody mocks the original. For instance, ‘Oh Hell Clothing’ made fun of ‘Yves Saint Laurent’ by initialising their letters into You’re So Vain’ in a jumper. Moreover, it is imperative to note that the transformed part of a work isn’t the only demarcating factor. There are other considerations that are taken in due regard when the court is introduced to a specific situation of alleged copyright infringement. 

1. The amount and substantiality of copyrighted work used in the derivative work- Quality and quantity are both relevant—in some cases, using even a tiny fraction of the original work can be taken too derivative to be deemed as fair use, if that forms the crux of the work or design.
2. Derivative’s effect on the marketing of the original work-  Fair use of a work shouldn’t hurt the original creator’s ability to profit from their work. In the case of fashion designs, the bar of creativity and innovation is low. Therefore, generally, the creation of derivative works is an appropriation since the derivative works satisfied the requirement of new as a fashion design. 

“‘Derivative’ means a work that appropriates certain design elements of a model design, but is nonetheless visually distinguishable to the average observer.” The derivative works take on a common design element and elevate and enrich it to a completely different stature. The constant evolution and creation through derivative works is what drives and thrives the fashion cycle.

3. Inspiration- There’s a fine line between inspiration and plagiarism. Plagiarism is imitating another person’s work and presenting it  as your own without giving due credit to the originator. Inspiration turns into imitation when the central idea or crux of the work is copied.

For instance,  an artist’s use of bold colours and geometric shapes gives you inspiration for your own work. Incorporating the same colour schemes and shapes in your designs would be taken as imitation, whereas interpreting these ideas in a different manner and subsequent application to your own work in novel ways would be termed as inspiration. The key to being inspired is that the design needs to be transformative, and your inspired work needs to be distinct from the core idea that constitutes the original artwork.

Sequel designs and copyright

By their inherent nature, the creation of a parody or a sequel of a copyright-protected work will require the reproduction of work, either partly or wholly. Generally, reproduction will lead to infringement if, firstly, the reproduction is created without the prior authorization and license of the copyright owner, and if, secondly, the reproduction as a whole or core and substantial part of it is disputed and in question. Substantiality of reproduction is still a vague concept and not readily quantifiable and depends on the facts of every situation. The accepted approach to the question of substantiality in the United Kingdom was laid out by the House of Lords in their judgement in the seminal case of Designers Guild v Williams (2000) which is that the question is largely one of impression and is determined by the importance of the part reproduced in relation to the original copyright work, meaning that quality is prioritized over quantity.

It is apparent that for a sequel or parody of a copyrighted work to operate or be recognizable, the distinctive and recognisable style or quality of the copyrighted work would necessarily have to be reproduced in the form of a sequel or parody. Hence, it is clear that wherever copyright law is relevant, a legally imperative part of the original work should certainly be taken up by a parody or sequel.

The other substantial point to take into account is the test for infringement in Designers Guild where sequels and parodies are considered is that the importance of the part taken is measured in relation to the original copyrighted work from where the defendant’s work is derived, and not the defendant’s work. Therefore, for infringement purposes, it is irrelevant that the defendant has worked with utmost diligence and turned around the original work into something transformative. Therefore, in spite of the fact that it may be apparently distinct from the original work, the parody or sequel would still be regarded as a clear infringement of the original.

Conclusion

Fashion designers should be given due regard like other artists. They should be rewarded for their immense creativity and receive recognition through IPR. Their work should be put in protection under copyright law like any other IP. However, because fashion is considered to be a utilitarian function, and because fashion trends are transient and short-lived in nature, fashion designers should be garnered copyright protection for a limited span rather than the legal duration sanctioned under copyright law, since the relevance of designs dies with the trends themselves.

The fashion industry is dependent upon the creation of trends and in turn, trends are dependent on copying.  The majority of the copies in the fashion industry are lower in price than the originals. But fashion designers are at par with artists. The cheap imitations cause significant losses to premium couture houses and also demerit their creativity and intellectual prowess in their field. Consumers relish the several options available when it comes to a brand name, specific design, and price, but this option shouldn’t be available at the cost of a designer’s creativity and innovation. Therefore, even in the case of derivative works and sequel designs, the fashion designers should tread carefully and not misappropriate another designer’s hard labours. There is a fine line between derivative work/sequels and imitations. The fashion industry is evolving and dynamic, and this fine line even gets finer on the brink. There is still a lot to be figured out in fashion law, and copyright infringement varies from case to case.  

References

1. https://abounaja.com/blogs/importance-of-derivative-works
2. https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2012-13/january_february/fashion-protecting-brands-law-designs/
3. https://www.finnegan.com/en/insights/articles/understanding-the-importance-of-derivative-works.html#:~:text=Section%20101%20of%20the%20Copyright,which%20a%20work%20may%20be
4. https://www.thefashionlaw.com/intellectual-property-rights-a-primer/
5. https://www.wipo.int/tk/en/resources/glossary.html#2
6.  https://www.legalzoom.com/articles/what-are-derivative-works-under-copyright-law

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