G-Star Raw jeans case cuts through unregistered design rights

John Coldham, director in the intellectual property team at Wragge Lawrence Graham & Co, points out that despite copying being considered to be endemic in the fashion industry, G-Star Raw v Rhodi is the first High Court designs case concerning fashion for some time and provides useful guidance on, among other things, the burden of proof of copying.

Original news

G-Star Raw Cv v Rhodi Ltd and others [2015] EWHC 216 (Ch), [2015] All ER (D) 113 (Feb)

The claimant clothing company brought proceedings against the defendants, alleging that they had been involved in infringement of the UK unregistered design rights in the design of a pair of jeans. The Chancery Division held that, on the evidence, the claim against the first, second, fourth and fifth defendants would succeed.

What was the background to this case?

The case concerned the design of jeans. G-Star brought the action for infringement of design right in its Arc pant against Rhodi (the owner of the ‘Voi’ brand of jeans).

G-Star is one of Europe’s leading denim fashion brands. Its designers created a jean design with emphasised, stretched, bent (3-D) knees with an ‘anti-fit’ effect, an extreme amount of fabric around the knee—a move away from G-Star’s successful Elwood design from the mid-1990s. G-Star alleged that various Rhodi styles were made to the design of the Arc Pant and, as such, infringed G-Star’s UK unregistered design rights. Rhodi contended that their styles were created ‘without reference to the Arc Pant’ and that they were ‘just following general fashion trends in the denim market, and to the extent that their styles have similarities to the Arc Pant this is due to them sharing generic features which had…become common’.

The trial took place in October 2014, with the judge, Richard Spearman QC, reserving judgment until February 2015. Four members of the Rhodi group of companies were found to have infringed G-Star’s design rights, in nine separate Voi styles of jeans.

How did the judge treat the evidence of the experts?

Expert evidence was considered important—the judge found G-Star’s expert evidence to be ‘clear, credible and balanced’ and helpful in providing ‘coherent and persuasive’ analysis as to why Rhodi must have copied.

Rhodi’s expert argued that he had found ‘use of the style ideas of which the design aspects are examples, both before late 2007 [the date of design of the Arc pant] and afterwards’. He suggested that these would assist the court to ‘compare and assess the significance of the similarities between these other uses and the Arc Pant’. His evidence largely dealt with where these ‘style ideas’ had been used elsewhere. In relation to the differences between G-Star’s Arc Pant design and Rhodi’s styles, he said that:

‘[..] it is only when I closely looked at the work of Estelle Moore and other people that I realised, actually, you know, there are differences that I can spot.’

Separately, the judge found the evidence of Estelle Moore (a fact witness for Rhodi who attempted to compare the shapes of the G-Star and Rhodi styles) to be ‘simply, and significantly, wrong…misleading and unreliable’. In addition to the fact that Rhodi’s expert could only see the differences between the Arc Pant and the Rhodi styles when relying on such misleading evidence, the judge criticised him for looking at the pleaded designs at too high a level of generality when comparing them to the design corpus.

Finally, Rhodi’s expert was found to have put some points a little too strongly—for example, he said that Rhodi’s design of a third pattern piece along the inside leg was ‘not doing the same ergonomic job [as the equivalent section of the Arc Pant] and its purpose is purely aesthetic’. However, when shown the respective pattern pieces in isolation and asked which was which, in cross examination, he got them the wrong way round. As a result, the judge questioned the reliability of his evidence.

Is this the right decision in terms of unregistered design right law, or do you think the outcome was heavily swayed by the conduct of the defendants?

The outcome was not swayed by the conduct of the defendants. However, it is clear that if the evidence of independent design does not stack up, a court is more likely to find for the claimant. While the outcome in this case to some extent turned on its facts, the detailed judgment provides useful guidance on how to assess UK unregistered design right infringement, and highlights the importance of proper evidence and full disclosure when copying is alleged.

What is the impact of this decision for the high-street fashion industry?

Despite copying being considered to be endemic in the fashion industry, this is the first High Court designs case concerning fashion for a significant period of time. Rhodi’s contention that any similarity between the Voi style and the Arc Pant was not copying, but rather was merely a result of Rhodi following general fashion trends, will feel familiar to owners of design rights when they approach alleged infringers. G-Star succeeded in proving that all nine of Rhodi’s styles infringed its design rights and that four of the Rhodi companies were liable for those infringements. The judgment sends a strong message to G-Star’s competitors that G-Star will not tolerate IP infringement. Other fashion brands may be encouraged to adopt G-Star’s assertive approach in protecting their IP rights.

Also, like many in the fashion industry, Rhodi’s products were manufactured overseas, so the case concerned secondary infringement. G-Star therefore had to prove either actual knowledge on the part of Rhodi that their styles comprised infringing articles or that, objectively, Rhodi had ‘reason to believe that this was so’. When Rhodi attempted to blame the factories, the judge said that it would be:

‘an unfortunate result…if a person who is aware of the risk that his mode of conducting business may result in copying other people's designs could escape liability for infringement by giving general instructions to foreign manufacturers to produce articles similar to popular designs and then say that if those manufacturers choose to fulfil those instructions by copying other people’s designs that is not something that can be laid at his door if he has not looked to see whether copying had occurred.’

As this is a common answer given to an allegation of infringement, it will be encouraging for designers to see a steer from the court as to how such arguments will be given short shrift.

What should lawyers take from this case?

The judge provided useful guidance on the standards expected of defendants in proving their defence:

‘[The judge] expected the Defendants to take care to preserve a full paper trail of the alleged independent design process.’

The judge considered the reversed burden of proof on copying, as set out in Designers Guild Ltd v Russell Williams (Textiles) Ltd (t/a Washington DC) (1998) IP & T Digest 9:

‘[…] if the plaintiff demonstrates sufficient similarity, not in the works as a whole but in the features claimed to have been copied, and establishes that the defendant had prior access to the copyright work, the burden passes to the defendant to satisfy the judge that, despite the similarities, they did not result from copying.’

The judge held that the burden was indeed reversed in this case, and that Rhodi did not succeed in discharging the burden in their favour for numerous reasons. These included a lack of evidence from those who allegedly designed Rhodi’s styles (except one employee, who was ‘bad at drawing’ and ‘communicated his design ideas with samples…produced by other manufacturers’), and ‘glaring gaps’ in Rhodi’s disclosure, some of which caused the judge to be ‘very sceptical about the Defendants’ good faith’. The judge’s treatment of Rhodi’s evidence serves as an important reminder to parties to litigation to ensure that evidence is checked thoroughly for accuracy and unsupportable assertions before it is filed.

Also, the judge conducted a detailed analysis of the infringement test and how it differed to the corresponding test for infringement of copyright. Overall, the judge held that whatever way you looked at it, ‘the substantial reproduction of the shape and configuration of the Arc Pant Designs and, indeed, the Arc Pant, is evident from comparing [the photographs of each]’. He held that ‘any changes are insubstantial, in that they will not be significant in the eyes of consumers to whom the designs are directed’.

The judge’s guidance on substantiality was as follows:

‘[…] provided the claimant identifies correctly the part(s) of his design which he claims to have been taken exactly or substantially, he will obtain protection against unfair misappropriation of the time, skill and effort that he has expended on creating that design. In those circumstances, no purpose is likely to be served by investigating the extent to which other aspects of his design are also “original”. Conversely, if he pleads his design right case too widely, that may cause the claim to fail even if it might have succeeded if it had been advanced on a narrower basis, and the day will not be saved by saying that there are some aspects within the claimed right that are “original”.’

John Coldham advises clients in relation to a variety of areas, from building brands and strengthening portfolios to litigation, and from small enforcement issues to complex multi-national disputes. John’s focus is on designs and brands law. The firm’s brands & designs team represented the claimant, G-Star.

Interviewed by Kate Beaumont.

This interview was originally published on WIPIT's sister website LexisPSL.

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