Copyright protection on fashion design

In August 2018, the Taiwan Intellectual Property Court sided with the fashion industry in a copyright infringement lawsuit by holding that the overall style, colour, image and layout of the plaintiff’s designer handbags can reflect the author’s aesthetics and are works of art protected by copyright. This judgment substantially expanded the scope of copyright protection from the separate design elements, such as the patterns, zippers and devices, to the product itself.

In the 1990s, fashion design could not be protected by copyright because the court divided a work of art into two categories: ‘work of art made by handicraft’ and ‘work of art made by mechanical mass production’. The court opined that ‘work of art made by mechanical mass production’ cannot be protected by copyright since the artwork is made by machine and cannot reflect the author’s characteristics and aesthetics. Such opinion has been criticised by the public since such interpretation of the copyright law cannot protect the authors who create the design of the work but reproduce their works by mechanical mass production.

In 2003, the Supreme Court changed the court’s traditional legal opinion and held that whether the work of art can be protected by copyright should be determined on whether the work can fulfil the creativeness requirement under the copyright law, but not how the work is made. Ever since, whether the work of art is made by mechanical mass production is not a consideration for the court to determine the grant of copyright protection. However, ‘utility’ became another issue for the product of fashion design to be protected by copyright.

In the opinion letter issued by the Taiwan Intellectual Property Office (TIPO) with respect to the interpretation of the copyright law in 2009, TIPO indicated that: ‘The three-dimensional apparel is not a work and cannot be protected by copyright. As to the designs such as the devices and patterns constituted by the lines and colours on the apparel, if they possess creativeness, they may belong to the work of art protected by the copyright law.’ In another opinion letter issued by TIPO in 2014, TIPO indicated that ‘regarding the apparels and accessories such as bags, leather products, clothes and pants, if they are products that merely possess utility… they are not the works under the copyright law. As such, the “style” of these products cannot be protected by the copyright law.’ The court expressed similar opinion in a judgment made by the Taipei District Court in 2014. Although the court in the decision recognised that the ‘shape and lines formed and created’ by the combination of the zipper and the handbag itself has expressed the author’s idea of design, demonstrated the visual beauty, originality and independent creativeness that should be the work of art protected by copyright, the court still held that ‘the handbag itself cannot be protected because it possesses utility’.

According to the above administrative opinions and court judgment, although the design elements contained in the fashion products, such as patterns, zippers and devices, may be protected, the product itself in which the design resides or is incorporated is not eligible for protection because the fashion product itself possesses utility.

The result of this interpretation and application of the copyright law is that the fashion industry has to seek alternative solutions to protect the entirety of the designer’s products, for example, trade mark, design patent and unfair competition. However, compared with copyright protection, the alternative remedies have the following demerits.

Trade mark

In practice, it is difficult to register the fashion products as trade marks since the applicants have to prove that such products have established the distinctiveness for trade mark.

Design patent

The term of the protection of the design patent is 12 years after the filing date, which is much shorter than the term of copyright protection (50 years after the death of the author). Besides, the design has to be novel at the time of filing – prior disclosure may destroy its novelty and cause the design patent to be invalid. Further, there is no criminal liability for patent infringement so the patentee cannot take criminal actions against infringers. A criminal action is usually more effective and economic than a civil action, as a remedy.

Unfair competition

In practice it is not easy to establish an unfair competition claim for infringement of the well-known feature of products or a claim for substantial plagiarism. The plaintiffs will have to prove the high level of distinctiveness of the appearance of their products, which is always an obstacle for enforcement. Likewise, there is no criminal liability for unfair competition claims.

The above dilemma came to a turning point in a first instance judgment made by the IP court in August 2018, as mentioned in the beginning of this article. In the case, a well-known fashion company filed a copyright infringement lawsuit against the defendant for selling handbags that were almost identical to the plaintiff’s designer handbags. The IP court held that the overall style, colour, image and layout of the plaintiff’s designer handbags are expressions of their authors’ aesthetic concepts and ideas, and are eligible to be protected under the copyright law, despite the defendant arguing that the designer handbags possess utility and lack creativeness.

This judgment sets forth a precedent that, in addition to the design elements (eg, patterns, zippers or devices) on a fashion product, as long as the creativeness requirement under the copyright law is fulfilled, the fashion product itself can also be protected by copyright as a work of art, even if the product itself is useful and possesses utility.

Both parties have appealed the decision. If the first instance judgment is sustained, the fashion industry will have a more economic and effective weapon against knock-offs of their products. Further developments of this case deserve further attention.