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Unregistered design & copyright in fashion

The John Kaldor and Lee Ann case shows it’s important to maintain documents created during the design process to defend copying allegations in unregistered design and copyright infringement claims.

The lack of clarity in John Kaldor’s claim when faced with solid evidence from Lee Ann that demonstrated independent design creation resulted in a failed claim for unregistered design and copyright infringement. This also meant that John Kaldor lost revenue to Lee Ann.

John Kaldor Fabricmaker v Lee Ann Fashions: The Facts

The John Kaldor Fabricmaker (JK) and Lee Ann Fashions (LA) case is about copyright and unregistered design rights for a fabric sold by Marks and Spencer. JK is a design house who designs and makes fabrics. LA is a fashion business who designs and makes garments.

LA released a dress sold by Marks and Spencer. JK noticed that the design of the dress’ fabric was remarkably similar to one of their designs.

However, previously JK had shown their design for a fabric to LA who had declined to use it for their dresses. LA then produced a design fabric that resembled JK’s design.

What should LA do to succeed against the infringement claims?

To win this case, LA must prove they had created the design themselves, independent of any indirect copying, conscious/subconscious influence, from the JK fabric that they had seen earlier.

LA must also prove that the similarities between the JK and LA design fabrics are commonplace, and therefore not protected under copyright.

John Kaldor’s fabric design
John Kaldor’s fabric design
Lee Ann's fabric design
Lee Ann’s fabric design

Why did LA win the case?

LA won the case because they fulfilled all requirements. They were able to:

  1. Prove they designed their fabric independently; and
  2. Show their designer’s evidence of earlier creations of similar design patterns.

LA’s designer had also documented her Photoshop design versions, which included six colour variants of her final design.

Why was JK’s claim unsuccessful?

JK lost this case for two key reasons:

  1. The list of similarities produced by JK was unclear and unconvincing to the Judges. The similarities that were recognised as copied were considered as commonplace.
  2. LA presented a very convincing case backed with strong evidence of independent design creation.

The similarities produced by JK were dismissed on the grounds of irrelevance and commonplace. The Judges accepted the evidence of independence creation by LA. JK relied on the list of similarities between the two design fabrics. Once dismissed, it was hard to recover from the loss.

How to protect your creations and safeguard your business?

Registered IP provides stronger protection against infringers. Gannons is one of the very few commercial specialist IP law firms to offer a dedicated in-house design filing practice.

This case highlights the importance of using good and specialist IP lawyers to handle a case in IPEC. We have the experience to successfully bring and defend IP claims. What’s more we know the tactics to deploy. If you appear likely to lose your case, we provide an honest opinion at the earliest opportunity.

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