The Protection of Fashion Designs Under Intellectual Property Law: A South African and Comparative Perspective on Copyright Design and Trademark Rights in the Fashion Industry.

Abstract

The fashion industry serves an intricate part in the economic sector globally and how individuals express their cultures and heritage across the whole wide world. However, the fundamental part of protection that fashion designs enjoy in terms of intellectual property rights is restricted and does not fulfil the expectations of the industry as a whole. This article seeks to critically assess the level of protection that fashion designs enjoy in terms of copyright law, design law, and trademark law, with a focus on the South African legal environment. The article evaluates the effectiveness of the current legal frameworks in protecting fashion designers from imitation and counterfeiting of fashion designs. The effectiveness of the current legal frameworks in protecting fashion designers from imitation and counterfeiting of fashion designs is also assessed. The decisions of the South African courts and other international courts are also analysed to assess the effectiveness of the current legal frameworks in protecting fashion designers from imitation and counterfeiting of fashion designs.

1. Introduction

Fashion is often considered a mere commodity consisting of clothing and personal expression. Fashion is a tremendously recognised globally industry that focuses solely on creativity, commerce, and culture. In South Africa, fashion is not only as a way to do business but also a way to express culture, heritage and identity as well as social issues. From the new generation of designers in Johannesburg to the established African fashion brands, creative expression within the fashion industry is flourishing. However, the industry has also faced the challenge of protecting fashion designs from imitation and counterfeiting.

While in other creative industries such as music, literature, or cinematography, intellectual property rights are not difficult to obtain, this is not the case for fashion designers. The problem lies in the fact that a piece of clothing is both a work of art and a functional object. Intellectual property law is not likely to afford strong protection to functional designs. This raises the question of the intellectual property rights of a fashion design.

In South Africa, intellectual property rights for designers are afforded through three major intellectual properties: copyright law, design law, and trademark law. These three laws afford designers some level of protection. However, they are not tailor-made for the unique requirements of the fashion design industry. As a result, designers often experience difficulties in preventing fast fashion companies or designers from using their designs.

The rise of fast fashion across the globe has exacerbated the problem. Fast fashion companies are able to manufacture designs from the runways of major designers and sell them to consumers before the designers have a chance to legally protect their work. This raises an important question of the adequacy of the current intellectual property law.

This research article seeks to address the question of the adequacy of the current intellectual property law in protecting the designs of fashion designers. The article will explore the current intellectual property law in South Africa and the international intellectual property law to evaluate the adequacy of the current law in protecting the designs of fashion designers. It will also evaluate the need for reform of the law to adequately cater to the requirements of the fashion design industry.[1]

         2. Background and Conceptual Framework

Intellectual property law promotes creativity by protecting the intellectual property owner’s rights for a specified period. Usually the fashion industry, this is done through trademark, design and copyright side of law. In the Republic South Africa, copyright is distinctively protected through the Copyright Act No. 98 of 1978. It covers all authentic artistic works such as paintings, sculptures and designs.[2] Fashion sketches and textile prints can be considered artistic works under this Act. However, clothing designs themselves are not protected under this Act when they have already been created as functional clothing items. This is an important difference between fashion as an artistic expression and fashion as a practical item.[3]

In South Africa, design protection is provided under the Designs Act 195 of 1993, which protects both aesthetic and functional designs. Aesthetic design protection is applicable for clothing, including visual elements of clothing such as shape, pattern, and ornamentation. A fashion designer can register his/her design and obtain exclusive rights over his/her designs’ appearance. However, this process can be costly, which often discourages many designers from pursuing design protection for their clothing designs.

Yet another relevant area where the law assists in the protection of fashion brands is trademark law. The Trade Marks Act 194 of 1993 is detrimental and still noticed to the protection of intellectual property. This act gives designers an opportunity to trademark the names of their company brands. This is particularly relevant to luxury brands.

In addition to the various national laws, international conventions also have a bearing on the law. The TRIPS Agreement is an international convention that outlines the minimum level of intellectual property protection to be accorded to members. This agreement seeks to create a universal intellectual property law. This is, however, not a law that addresses the law of fashion design.

Fashion design law is a fragmented area of law. This is because designers have to rely on various laws, each of which has its own limitation. This leads in discrepancies in the protection of intellectual property, more especially for upcoming designers who lack the resources to impose distinct their rights.

         3. Legal Analysis

The key legal issue that arises in relation to fashion design protection is that it is often difficult to distinguish between artistic expression and functional utility. As discussed above, copyright law protects artistic works but does not extend protection to utilitarian objects. Garments fall under this category.

In terms of copyright law in South Africa, copyright protection is only available for original artistic works. Sketches of garments or textile designs would qualify as artistic works; however, garments would qualify as utilitarian objects. Once the design is applied to garments that are meant for mass production, copyright protection would be restricted.

This is also in line with an international trend that has been followed globally. The courts have been very conservative in extending copyright protection for clothing designs on the basis that extending copyright protection would have an impact on free competition in the fashion industry.

If copyright protection were extended for clothing designs, it would mean that fashion designers would have exclusive rights over clothing silhouettes or clothing structures, which would have an impact on free competition in the fashion industry.

The design law attempts to address this issue by extending protection for the visual appearance of utilitarian products. Under the Designs Act, it is possible for designers to register designs for aesthetic purposes. This would mean that they would have exclusive rights over their designs, which would be new and original.

The process of design registration is also very cumbersome, as it requires disclosure of the design and payment of fees, which would be an issue for individual designers. Moreover, the period for which design protection is available is restricted, which would mean that, given the fast-changing fashion industry, it is likely that the design would no longer be commercially viable when it is legally possible for it to be enforced.

Another problem also emerges from the global expansion of fast fashion. Retail businesses also keep an eye on high fashion runways and produce popular designs at a relatively lower price. Although these are replicas of the original designs, these replicas often avoid direct trademark infringement by changing the logos or identifiers.

At such points, the designers often try to invoke the principle of trademark or trade dress infringement. Trade dress is the visual appearance of a product that suggests its origin. For instance, certain patterns, colors, or design elements are often considered identifiers of a particular brand.

However, the problem of establishing trade dress infringement is often difficult for the designers. The designers have to prove that the particular design element has acquired the status of distinctiveness and is associated with a particular brand. This problem is often difficult for new designers who have not yet achieved a high level of brand recognition.

This problem is further complicated by the emergence of new technologies. The expansion of digital fashion, online stores, and social media platforms has opened new avenues for design copying and infringement. For instance, the global spread of new designs occurs within minutes of the appearance of the new design on the runway show.

These issues demonstrate the shortcomings of the current intellectual property regime. The current laws are based on the traditional manufacturing industry and are not sufficient for the current fashion industry.

4. Case Law Discussion

Judicial decisions are also very important for the application of the current intellectual property laws in the fashion industry. There are some landmark cases that shows the complexities endured by the judiciary in applying of the current laws.

A detrimental case in South African intellectual property law in the realm of brand expression is the case of Laugh It Off Promotions CC v South African Breweries International (Finance) BV. This case analysed the right to expressing as freedom, in the importance of a T-shirt design that is a parody of the famous Black Label beer logo.[4] South African Breweries claimed that the parody of their mark amounts to infringement and dilution of their mark.[5] However, the Constitutional Court held that the right to freedom of expression includes the use of the parody. Even though, this case is not specifically relevant to the realm of fashion design, it is important to the realm of intellectual property in South Africa.

Another fundamental case in the hand of international intellectual property is the case of Star Athletica LLC v Varsity Brands Inc in the US Supreme Court.[6] This case examines the right to copyright the designs on cheerleading uniforms. The US Supreme Court held that the artistic part of the uniform is copyrightable if the designs can be separated from the functional part of the uniform.

Another important case in international intellectual property law is the Christian Louboutin SA v Yves Saint Laurent America Holding Inc case. This case centered on the issue of trademark protection in the design of Louboutin red sole shoes. The court ruled in the case that the red sole had the possibility of becoming a valid trademark when used in contrast to the rest of the shoe.

Such cases demonstrate the wide variety of legal solutions that are applied in fashion-related disputes. In many instances, these disputes involve balancing intellectual property rights with the need to preserve healthy competition in the fashion world.

5. Critical Analysis and Findings

As may be deduced from the foregoing analysis, fashion designs are still not fully protected under intellectual property laws. Although copyright, design, and trademark laws provide varying levels of protection, these are still limited and do not provide a complete solution that specifically caters to the fashion world.

From a legal perspective, fashion designers in South Africa are still in a position to enjoy varying levels of legal protection. Although the Designs Act provides substantial legal protection for fashion designs, access to registration may still be limited for young designers. Most young designers, especially in South Africa, operate in an informal or entrepreneurial environment, and legal registration may not always be a priority.

Additionally, copyright laws are also limited in their ability to provide legal protection, as they are often limited to textiles and fashion illustrations. As such, fashion designers may still face difficulties in protecting their work, as their final garment may still be easily copied.

Such legal limitations are also compounded by the advent of fast fashion, which allows multinational corporations to mass-produce new fashion designs. Young designers most probably do not have the financial wherewithal to take part in expensive intellectual property legal scrutinies. Although, one must also recognise that fashion, by its very nature, depends on creativity, reinterpretation, and cultural sharing. As such, over-protecting intellectual property may potentially stifle fashion creativity.

One possible solution to this problem might be the creation of a special legal regime of protection for fashion designs, similar to what has been proposed in other jurisdictions. This might offer a measure of protection for original designs while they remain at their most commercially relevant.

Intellectual property law might also be used to support the growth of domestic fashion industries in South Africa, and to promote African designers in the global market.

6. Conclusion

Fashion is a very specific industry that is at the intersection of creativity, culture, and commerce. It is an important part of the global economy, but the protection afforded to fashion designs is restricted and is governed by different aspects of intellectual property laws.

In South Africa, designers must protect their designs using copyright, design, and trademark laws. The laws stated are not appropriate for the way fashion design works. As an outcome, designers find it difficult to prevent copying or imitating their designs.

Judgments in South Africa and other parts of the world have demonstrated the difficulty in instilling intellectual property laws to the complexities of the fashion industry. The proportionality between protecting designers and maintaining a healthy competitive spirit is difficult.

As universal fashion continues to tremendously grow and change, so should the laws be surrounding it. It might be worth considering the potential for the creation of a special regime of protection for fashion designs, while still allowing for the dynamic and innovative nature of the industry to be preserved.

7. Reference(S)(OSCOLA)

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

Christian Louboutin SA v Yves Saint Laurent America Holding Inc 696 F 3d 206 (2d Cir 2012)

Copyright Act 98 of 1978 (South Africa)

Designs Act 195 of 1993 (South Africa)

Trade Marks Act 194 of 1993 (South Africa)

Laugh It Off Promotions CC v South African Breweries International (Finance) BV 2005 (8) BCLR 743 (CC)

Star Athletica LLC v Varsity Brands Inc 580 US 405 (2017)

Susan Scafidi Intellectual Property and Fashion Design (Edward Elgar Publishing 2018)

World Intellectual Property Organization Understanding Copyright (2023)

[1] Susan Scafidi Intellectual Property and Fashion Design (Edward Elgar Publishing 2018).

[2] Copyright Act 98 of 1978.

[3] World Intellectual Property Organization, Understanding Copyright (WIPO 2023).

[4] Laugh It Off Promotions CC v South African Breweries International (Finance) BV 2005 (8) BCLR 743 (CC).

[5] Ibid.

[6] Star Athletica LLC v Varsity Brands Inc 580 US 405 (2017).