For your ‘Must Do’ list – record your Design development history

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A recent case underscores the importance of keeping records of design development history so that a design can be traced back to its source.

The judgment in John Kaldor Fabricmaker UK Limited vs Lee Ann Fashions Limited [2014] EWHC 3779 (IPEC) is a good reminder to fashion houses to keep a clear record of how they create their patterns and to ensure that their in-house designers can trace the birth of the design to their own independent work. In an industry where patterns are often designed for a seasonal collection and it is common to dispense with registering the designs, a clear path to the creation of a pattern or print can be the decisive factor in countering a claim of copying by a competitor.

In this copyright and unregistered Community design right infringement case, decided by the Intellectual Property Enterprise Court, the factor on which the decision turned was the designer’s evidence of independent creation of the allegedly copied pattern. John Kaldor, a design house which makes and designs fabrics, claimed that their computer generated fabric print (see figure1) had been copied by the creation of the fabric print (see figure 2) designed by Lee Ann Fashions, a garment designer. John Kaldor had previously shown the print in question to Lee Ann during discussions for supplying the fabric to Lee Ann for a new line of clothing. Lee Ann subsequently supplied clothing using a similar pattern. John Kaldor initiated proceedings for infringement of their copyright and the unregistered Community Design right in their fabric pattern,

pattern, claiming that there was copying, directly or indirectly, of the whole or at the least a substantial part of their print.

After comparing the appearance of the two fabric patterns and considering other similar patterns in existence the court felt that there was a possibility of copying but was in some doubt as to whether Lee Ann’s pattern had indeed been copied or whether it had been created independently. The evidence of Lee Ann’s designer was particularly important to the decision of whether there was copying and, therefore, infringement. In this case the designer had maintained an archive of her earlier similar themed prints and could clearly show how she had arrived independently at the print in question. The claim of infringement did not succeed.

Figure 1                                   Figure 2

figure 1 figure 2

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