29th November 2019 - Jax Floro

The popularity of the t-shirt skyrocketed after Marlon Brandon wore one in “A Streetcar Named Desire”.

The modern t-shirt started out as slip-on undergarment and then leveled up to casual clothing because it was easily fitted, comfortable, and inexpensive.

Today, the humble “tee” has remained popular not only as casual wear but also as a form of personal expression to make statements and for advertising campaigns.

Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197

In Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd, the court examined copyright infringement in the context of clothing designs.

Elwood was a designer, manufacturer, and seller of clothing and clothing accessories. In 2008, Elwood filed a case of copyright infringement against Cotton On Clothing (CO).

The infringement case was concerned with Elwood’s “New Deal” T-shirt and the allegation that CO’s “Vintage Sport” swing tag T-shirt was “copying it”.

In the front of Elwood’s shirt, there was a representation of the word “Elwood” arced upwards below a pair of separated numbers, 9 and 6 and a stylised logo of a bull facing forward. At the back of the shirt, a cursive “Raging Bull” arced upwards with the numbers 9 and 6 joined and stylised in a large font. Another forward-facing bull logo featured below the numbers. The “Vintage Sport” swing tag T-Shirt did not contain the exact representations of the “New Deal” T-shirt but contained similar layout elements.

The primary judge in the case stated that under section10(1) of the Copyright Act 1968 (Cth) – Elwood’s design was considered an “artistic work” because it included a “drawing” but the arrangement or layout on the T-shirt was just an “idea” and not an artistic “expression” in which copyright subsists.

On appeal, the Full Federal Court reversed the primary judge’s ruling and held in favor of Elwood stating that the “layout, balancing, form, font, positioning, shaping and interrelationship of various elements” were included in the so-called artistic quality of the expression of the creative work. Accordingly, by replicating the layout, arrangement and style of Elwood’s designs, CO infringed Elywood’s copyright when it applied a similar layout to its “Vintage Sport” swing tag tee.

Fenty v Arcadia Group Brands Ltd t/a Topshop [2015] All ER (D) 157 (Jan)

In March 2012, Topshop started selling a tank top which showed an image of the popular international star Rihanna. The image was taken by a freelance photographer during a photoshoot creating the artwork for Rihanna’s music album. The freelance photographer owned the copyright in the image granted Topshop a license to use the image, but Rihanna did not.

The pop star started legal proceedings in the High Court of England and Wales and sued Topshop for “passing off” on the basis of her goodwill and reputation. She further claimed that due to her high profile in show business, people might surmise that she was promoting the tank top or was connected in it in some other way, therefore, she was entitled to payment of licensing fees.

The judge ruled in Rihanna’s favor, taking into consideration the substantial influence the star wielded over Topshop’s target market. “Passing off” protects goodwill and it prevents another person from representing that the goods or services are those of another. The misrepresentation to the public was that Rihanna had endorsed the sale of the tank top in Topshop.

Topshop appealed the ruling to no avail because the Court of Appeals upheld the High Court’s decision in favor of Rihanna and confirmed that Topshop’s unauthorised use of Rihanna’s image was misleading because it resulted in people believing that the star endorsed the product.

Lord Justice Kitchin observed, “a celebrity seeking to control the use of his or her image must therefore rely upon some other cause of action such as breach of contract, breach of confidence, infringement of copyright or, as in this case, passing off.” In sum, Rihanna had to rely on “passing off” rather than trade mark infringement to pursue her claim.

Lorna Jane and Lydia Jahnke

Lorna Jane is the brand name for activewear apparel range created by Lorna Jane Clarkson, an Australian fashion designer, entrepreneur and author. An fan of Lorna Jane claimed copyright infringement when Lorna Jane used her Instagram photo on a t-shirt without permission. That specific photo was the same one that the fan shared to Clarkson on Instagram.

The image shows a picture of the fan on the top of a hill with her arms outstretched to form a “Y”. The fan wanted compensation from Clarkson because the photo was commercialized without her authorization.

Copyright in a photo usually is owned by the person who took the photo. An interesting question is whether the fan owned the copyright in the photo because as she did not take the photo herself, she was not the photographer! She was in the photo! It is possible that she used an automatic timer function on her camera to take the photo.

The principle to observe here is that you should not use the work of another without the creator’s consent. When someone creates an original image, they will typically own the copyright in that image and you should seek permission to use the image.

Take away points:

The above cases illustrate that:

• Where you can’t rely on trade mark infringement to protect your intellectual property, there may be other causes of action such as breach of contract, breach of confidence, copyright infringement or passing off.
• Copyright infringement is possible in situations where the layout of an artwork is duplicated and applied to the garment.
• There can still be a breach of copyright notwithstanding the infringing material in not an identical copy.
• You should ask permission before you use another’s creation to avoid the risk and expense of legal proceedings.

 

Jaclyn-Mae Floro, BCompSc

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.au.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.