This article is written by Zoya Mehta, pursuing Diploma in US Intellectual Property Law and Paralegal Studies from Lawsikho.
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Fashion is a medium through which art transcends into our wardrobes. It is a form of art that thrives on new creations and ideas of designers. The intellectual property laws grant exclusivity and ownership to the creator for gaining economic and moral benefits. Furthermore, these laws provide remedies against fashion knock-offs and counterfeits, which is becoming a serious threat for designers. Having said this, let us examine how far is the existing legislation able to permeate through the fashion industry to protect the intellectual property of fashion designs.
Intellectual property (IP) law is grounded in incentive theory, giving exclusivity to the creator, enabling them to profit from their work, incentivizing the creator to create more work. The fashion industry has been described by many scholars as IP’s “negative space” areas where creation and innovation thrive without significant protection from IP law. “Many areas of creation function in the absence of intellectual property protection. A smaller group—those residing in IP’s negative space—are enhanced by that absence. Recent case studies have explored a number of these areas, which include such diverse industries as fashion, cuisine, magic tricks, stand-up comedy, typefaces, open-source software, sports, wikis, academic science, jam bands, hip hop mixtapes, and even roller derby pseudonyms.” (Rosenblatt 2010, 319-320)
Fashion designers and their IP tussle
It is a usual thing to hear about buying the first copy of some well-known designer of the fashion industry at much cheaper rates. Delhi’s Gaffar Market, Bangalore’s Brigade Road, Mumbai’s Linking Road, and Kolkata’s Vardhman market are places where one can find top-notch designers’ first and second copies at a minuscule price compared to the actual design article. Plagiarism in this industry exists between the designers as well, where there are many instances of one big design house copying the designs of another big design house. In 2017, Rohit Bal was the first designer to get copyright over his entire collection, and later, many prominent designers followed.
With this scenario, many questions arise regarding the standing of IP Laws in India in the context of fashion designs. Designers who create a design for economic leverage are at a loss when the design becomes common due to copying. Why don’t designers protect their designs through intellectual property laws? Do Indian intellectual property laws offer any protection to the fashion industry? If yes, then to what extent? And, why aren’t the designers finding incentives to protect their designs? I will be discussing all these questions in this article.
Understanding the law
Fashion designs can be copyrighted under two laws in India, the Copyright Act, 1957 as ‘creative works’ and the Design Act, 2000 as designs. Primarily, there are two aspects of clothes designs, which can be protected through these laws. Firstly the drawings/colour combinations on the garment can be protected as ‘artwork’ under the Copyright Act. Secondly, the shape of the garment attributing to its distinctive fabric and couture can be protected under the Design Act. In India, the Copyright Act, 1957 doesn’t make registration of artwork mandatory. Another vital aspect of the design is its logo. The Trademark Act in India allows protection to the logos, which become constituent of designer clothing and accessories.
Understanding the state of affairs in detail from the perspective of the Copyright Act, Section 15 makes things all the vaguer. It is a special provision regarding copyright in designs stating that copyright shall not subsist under this Act if registered under the Design Act. The Act makes it apparent that design registration and copyright over an article cannot co-exist. This restricts the tenure of the design to ten years, which can be further extended for five years. Section 15(2) of the Copyright Act. 1957 restricts the copyrightable limits based on production quantities of the design. The moment the production of the fashion article exceeds 50 units, the copyright would stop subsisting. If the designer wants to reproduce the article beyond 50 units, they would need to register the design under the Design Act to protect its copyright.
It is not contested that the moral rights of the copyright holder do not get affected. Section 22 of the Copyright Act, 1957, grants full authorship/ownership of their original artistic work for lifetime plus 60 years. Having said this, another aspect is about the improvisations on original works. The fashion industry thrives on improvisations of existing styles of clothes. Many big names in the fashion industry get inspiration from the existing designs.
For analyzing the Design Act, 2000, with reference to fashion designs, Section 11 and Section 22 are vital. Copyright emerges from Section 11 of the Design Act, 2000, where design is protected/copyrighted for 10 years on registration, which shall be extended for 5 more years if applied before the expiry of the copyright period. Section 22 prohibits piracy of a registered design by making it unlawful to use the registered design or any fraudulent or obvious imitation unless consent is obtained from the registered proprietor. Further, the section also prohibits imports of pirated designs for the purpose of sale. Furthermore, the Third Schedule of the Design Rules, 2001, mentions particular classes of articles under which various designs would be registered. Under these rules, “Articles of clothes and haberdashery” fall in class 02. One very big limitation of the Design Act is that the design proposed to be filed needs to be unique and novel.
The boundaries of IP protection in the fashion industry are very fuzzy and difficult to comprehend. There exists an overlap between the Copyright Act 1957 and the Design Act 2000 in establishing and protecting the intellectual property of fashion designs.
A question arose in Rajesh Masrani v. Tahiliani Designs Pvt Limited (2008 PTC (38) 251 (Del.)) whether patterns printed on fabrics qualify as artistic work or not and can these be protected under the Copyright Act and the Design Act? The present case was an appeal against the single judge interim injunction granted in favour of Tahiliani Designs, where Rajesh Masrani was prohibited from producing, selling, or advertising similar fabric. There were very cogent arguments raised by the defendant-appellant worthy of discussion. The first argument was that the garments and drawings were not ‘artistic works’ for the purpose of copyright protection, and the second argument was that the drawings are required to be registered as designs as per Section 15(2) of the Copyright Act. The Delhi High Court opined that such designs come under the ambit of copyright protection if produced below 50 in number and if not produced for commercial use, implying that the objective of creating a work is decisive for qualifying it to be copyright worthy. The fashion brand of Tarun Tahiliani created only 20 such pieces with the specific design due to which protection was granted, and printing, selling, or advertising of a similar design was prohibited.
Section 2(d) of the Design Act, 2000, while elaborating on the definition of a “design,” excludes any artistic work defined under Section 2 (c) of Copyright Act, 1957. The cross reading of these sections from these two acts defines the boundaries of intellectual property where artistic work is excluded from the design aspects. Design aspects require mandatory registration under the Design Act to protect against infringements.
The UK Copyrights Designs and Patent Act 1988 protects drawings and graphic works on an item and 2-D items such as textiles during the lifetime of the owner and 70 years thereafter. Similarly, in the US, fabric prints are protected for a term spanning the life of a designer plus 70 years thereafter. Another form of IPR in the US, which is protected, as Design patents are “ornamental designs of a functional object,” such as ornamental designs on watches, mobile phones, jewellery, etc. The term of protection for design patents is 14 years and they are rarely granted to garments. The European Union grants three years of protection to fashion designs and creators can apply for an extension of up to 25 years.
A garment design comprises two elements- artistic design element and usability element. In order to be copyrightable, the original design elements must be separable from the useful nature of the article. An illustrative case, as cited in (Scruggs 2007, 124), is Masquerade Novelty. In Masquerade Novelty, at issue were “nose masks” designed to resemble the noses of a pig, elephant, or parrot. The district court held that the masks were “useful articles” that could not be protected under copyright law. The Third Circuit reversed this ruling, reasoning that “the only utilitarian function of the nose masks is in their portrayal of animal noses.”
IP predicament for the fashion industry
It’s a catch 22 situation for designers to seek design patents for their apparel for reasons which are apparent if the ground reality is considered. Firstly, the design patent applied for registration should qualify as distinct from the prior art already existing. Secondly, the fashion life cycle is very small and by the time the design patent is obtained, the fashion styles change. It is a very big de-motivator for the designers. This makes the fashion industry susceptible to piracy and plagiarism. Fashion designers invest their time and money to create designs, and the fruits of their labour dissipate into the hands of copycat designers. The pain of the designer is further aggravated if they decide to file infringement suits against knock-off designers due to the high litigation costs, energy, and time they would need to invest. By the time the court concludes a case, the fashion style would have changed and it wouldn’t offer any benefit to the designer. Moreover, the pecuniary damages granted by the court do not exceed more than 50,000 rupees.
On the contrary, Kal Raustiala & Christopher Sprigman argued that copycat designers benefit the fashion industry by pushing the fashion cycle forward by creating trends incentivizing the fashion houses to create the next big fashion trend. They termed this as the “piracy paradox.” The fashion industry is very dynamic. We all know that fashion trends get exhausted when everybody starts wearing similarly styled clothes. Knock-off/copycat designers help to make the design common quickly by flooding its respective market with counterfeits. For a designer, the sooner the trend ends, the better it gets for them to bring new trends into the market, ultimately leading to people demanding a new style of clothing, bringing economic gains for the designers.
We can very well conclude that the IP laws do not protect the design as a whole since most fashion apparel is deemed functional. Instead, IP laws protect the rare elements of the garment design that are physically and conceptually separable from the garment’s function. For example, fabric, patterns, sketches, graphics, logos, etc. The IP of a fashion design exists through these various ingredients and not for the design as a whole.
We have seen an increase in IP litigation due to the designer not being able to get credit for the article she creates without being able to exploit his work. The design labels like H&M, Zara, Levis, Uniqlo, and the like should be proactive to file for registration of their designs if the design is new or original, as they produce in bulk quantities. Designers who produce under 50 in quantity should also register their designs under copyright law.
Intellectual property protection promotes innovation. Without the protection of IP, there is no incentive for the creator to create novel artwork or designs. Creativity and innovation are indicators of a healthy society. The fashion industry is in need of a sui generis protection of its IP similar to the proposed fashion bill in the US to protect the rights of designers. There is a need for comprehensive fashion law. If policymakers are not keen enough to bring separate legislation categorically dealing with fashion law, they can at least initiate amendments in the existing legal mechanisms to make them more conducive to the fashion industry.
- 2008 PTC (38) 251 (Del.)
- Masquerade Novelty Inc. v. Unique Indus., 912 F.2d 663 (3d Cir. 1990).
- Rosenblatt, Elizabeth L. “A Theory of IP’s Negative Space.” Colum. JL & Arts 34 (2010): 317.
- Scruggs, Brandon. “Should fashion design be copyrightable?” Nw. J. Tech. & Intell. Prop. 6 (2007): 122.
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