Whilst counterfeits are easily recognizable, the issue is the line between inspiration and knock-offs in the fashion industry. In this article, designers and IP lawyers differ on where this line should be drawn. I shall analyse these views and propose where IP law could draw the line.
Is IP needed here? Theoretically, IP rewards “true” designers and encourages others to “build freely upon the ideas and information conveyed by IP-protected material.” [1] However, it is difficult justifying IP in reality as it seems to obstruct innovation and the advancement of knowledge. Although copyrighted designs are disclosed, copyright hinders it being disseminated widely in an industry where inspiration is paramount.
Yet, all designers need to be protected against knock-offs. Total abolishment of IP abolishes any incentive to develop new ideas. Such protection is necessary for all designers, even those of high-end designs. Although their products are luxury goods and unaffordable by the average person anyway, exclusivity is required to maintain prestige.
Thus, the question is not whether IP law is needed but where IP law draws the line, ensuring fairness for creators and aspiring designers.
I disagree with Drapeau that “inspiration” connotes “something novel”. “Novel” means something totally new. The implication is an extremely high threshold for a defendant to deny infringement, having to prove a revolutionary design while inspired by an already-existing one. This is logically unfathomable.
Rocchi’s view that intellectual theft involves intent is wrong as one can be liable for sub-conscious copying. [2] Whilst this may seem unfair, one must consider the aim is to protect the copyright owner and not to punish the infringer. Sub-conscious copying may be a consideration in awarding of remedies but the fact remains that he has infringed copyright.
In ascertaining infringement for counterfeiting, conscious and sub-conscious copying for knock-offs, it is a question of fact whether the alleged infringing work is substantially the same as the original work. [3] This is theoretically simple and finds support from the article. However, if fashion works are inspired from previous works, what defines “original work”? For example, Nike invented synthetic fibre clothing called dri-fit. Adidas made some amendments and sold their own version, Clima-cool. If X was sued for knocking-off Clima-cool, would “substantial part” be determined by comparing X’s work to Clima-cool or the amendments Adidas made to Dri-fit? Admittedly, it is tedious to trace every particular design’s history and industry experts may need to testify, increasing litigation costs, but to truly reflect the nature of the fashion industry, this has to be considered.
My submission is this approach:
the reasonable consumer must be able to recognize the shape or appearance of the original work in the alleged infringing work;
only if (1) is satisfied, does the court proceed:
to gauge whether there was ‘substantial’ copying by comparing the alleged infringing work to what is ‘truly original’
This may not be perfect but there is no denying the line is unclear even amongst industry experts and designers. IP law must address this uncertainty given the opportunity.
[1] David Vaver, “Canada’s Intellectual Property Framework: A Comparative Overview”, Intellectual Property Journal, Feb 2004
[2] Francis Day & Hunter Ltd v. Bron [1963] Ch 587 and Boutin v. Bilodeau [1994] 2 SCR 754.
[3] The exact phrase in S. 3 Copyright Act is “substantial part”. This explanation was given in Francis Day & Hunter Ltd v. Bron [1963] Ch 587