Tag Archives: copyright

Protection of clothing IP

Articles imagesA number of businesses in South Africa are related, directly or indirectly, to the design and manufacture of clothing, garments, apparel and fashion accessories. For these companies the issue of protection of Intellectual Property presents a number of challenges that other manufacturing sectors do not face.

Clothing design and manufacture is a rapid process, with even small labels being expected to launch relatively large product ranges on a seasonal basis. This makes blanket protection of products prohibitively expensive and places severe constraints on the forms of IP which can be used. For instance, clothing design generally occurs in a space where mass manufacture limits the available copyright that can be applied. The clothing industry is also a relatively mature technological space, which significantly limits the scope of protection which can be obtained. By the same token, however, a small difference from the prior art (such as a single distinguishing feature) can form the basis for a successful application.

With these issues in mind, there are still a number of avenues open for protection of IP in the clothing and fashion industries. Where a technological innovation is present that sufficiently differentiates an invention from the prior art, protection by means of patent may be used. Designers or manufacturers seeking to protect only the visual aspects of their products may instead rely on registered designs and trademarks.

Registered designs, like patents, are territorial in nature and require novelty. Here this means that the design itself must not form part of the state of the art prior to registration or release. Registered designs are also required to be original or not commonplace in the art, both of which can be broadly understood as meaning that the design must be the original work of the applicant.

Once granted, registered designs can provide a number of advantages for designers seeking to protect a product; as they are relatively cheap to lodge and can be rapidly used to provide protection. In addition, an applicant can register a design up to six months after it is released to the public. Registered designs can also be applied for a number of products common to the clothing industry; including the garments themselves, fabric patterns, and logos or visual designs applied to garments. Finally, registered designs can be applied to sets of items in certain circumstances.

While registered designs can protect the product itself, trademarks allow a designer or manufacturer to protect their brand. Here the purpose of a trademark is to protect a ‘mark’ (defined as any sign capable of graphical representation) for the purpose of distinguishing goods and services from one another. Trademarks are therefore required to be distinctive in relation to similar goods and services, and must be either in use or intended for use as a trademark.

Trademarks, once registered, have significant advantages over other forms of IP protection. They apply to the brand rather than a given product, and can serve to ward off competing services which would seek to capitalise on the brand’s reputation by means of mimicry or misrepresentation. A trademark, once filed, can also (theoretically) last for as long as it is renewed. Finally, trademarks may be applied concurrently with registered designs where logos are concerned. However, the registration of trademarks has significant time and cost implications.

Given the short lifespan of individual clothing designs when compared to the long lifespan of a brand or label, many existing fashion houses have chosen to simply forgo design protection in favour of trademarks. A careful mixture of approaches may still, however, yield the best results when judiciously applied. Patents may be considered for specific cases where critical technology is concerned, while registered designs may be applied more broadly to individual designs or sets of similar designs. Trademarks, in turn, may be used to protect the brand the products reside in, and may be augmented by other measures such as defensive company name registration.

In deciding the right mix of protection to use, the designer or owner should carefully weigh the time and cost of protection against the benefits it provides on a case-by-case basis.

For more information, please contact:

THOMAS GERARD SCHMIDT
Candidate Attorney
Department: Patents
Tel: +27 11 324 3031
Email: thomass@kisch-ip.com

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice. Errors and omissions excepted (E&OE).

 

PSL v Gidani: Some interesting copyright issues

The recent decision of the Gauteng High Court in the case of Premier Soccer League (PSL) v Gidani, a judgment of Judge Kgomo dated 28 February 2014, is fascinating.  The issue was whether Gidani, the operator of the National Lottery, had infringed the copyright that the PSL has in its football fixture lists – Gidani had, as part of a sports gambling offering,   reproduced the lists on its website and published them at petrol stations and retail outlets, without any licence from the PSL.

Copyright in football fixture lists! This was indeed the first major issue – does an area of law that protects music, art and film also protect fixture lists?  It certainly can. One of the categories of works protected by copyright is the‘literary work’. It’s something of a misnomer, because although this term does indeed cover works of literature, it also covers just about any other written work. The Copyright Act, for example, makes it clear that the expression includes mundane things like tables and compilations of data. And case law tells us that it covers a great deal more.

Back in 1964 a UK court in the case of Ladbroke v William Hill held that there was copyright in football pools coupons. In the South African case ofPayen v Bovic the court held that there was copyright in a numbering system for gaskets, and in the later case of Bosal v Grapnel the court held that there was copyright in a vehicle part numbering code.  Recently a South African court in the case of Board of Healthcare Funders (BHF) v Discovery held that there was copyright in a so-called ‘Practice Code Numbering System (PCNS)’, a compilation of numbers identifying all the medical practitioners in South Africa, and containing information like their addresses and bank details.  In this case BHF led evidence that a great deal of work went in to the creation of this system.

This leads us on to another important aspect of copyright law.  The Copyright Act says that it protects works that are ‘original’. But when is something original for copyright purposes? Must it be something that is clever or interesting, must it go even further and be ground-breaking? The conventional wisdom is that originality requires nothing of the sort, that it simply means that your work must be the result of your own labour and effort and that it must not be copied from another source. So the bar is quite low – it’s graft rather than creativity. Yet it is sometimes also said that copyright shouldn’t protect things that are totally trivial, and that there must be some objective requirement of merit. There seems to be a slight contradiction.

In the PSL case the court seemed to adopt the established ‘sweat of the brow test’. It certainly accepted the PSL’s contention that a great deal of effort went into the creation of the football fixture lists. Two employees of  the organisation had given evidence which showed, inter alia:  that they had a great deal of experience in football administration; that they compiled the lists with the aid of  a computer program; that they had to take into consideration all sorts of issues like blocking out certain dates including Fifa-sanctioned match days and  Cup days;  that they had to consult with various interested parties including  clubs and  broadcasters; that they had to make sure that fixtures weren’t too close to other matches; and  they had to consider things like floodlight availability and rugby fixtures (in cases of shared stadiums).

So the fixture lists enjoyed copyright. And there had been infringement because a substantial part had been reproduced. It appears that Gidani may have raised a defence that it had an implied licence to copy the fixture lists. That defence wasn’t pursued however. No surprise there, because it’s hard to see how it could have succeeded – the judgement shows that Gidani’s predecessor as operator of the lottery, Uthingo, did have a formal licence with the PSL, and that Gidani and the PSL had tried but failed to conclude a deal.  And in the case of BHF v Discovery the implied licence argument was rejected on the basis that it was highly unlikely that an organisation that charged its members a fee to use the PCNS system would allow Discovery, an ex-member which had at one stage been authorised to use the system, the right to continue using use it free of charge.

The second big issue was far more interesting. Gidani raised the defence that what it was doing was permitted in terms of section 16 of the Constitution, the right of freedom of expression. The judge was prepared to accept that constitutional rights can be considered in copyright cases, but he could hardly have done otherwise. In the famous case of SAB v Laugh-It-Off – where a satirist had copied the Black Label beer logo, changing the name to ‘Black Labour’ and adding wording that commented unfavourably on SAB’s labour practices – the Constitutional Court held that  the right of freedom of expression trumped the right of the trade mark owner to object to unauthorised use.  But the judge in the PSL case felt that the balancing of rights – freedom of expression (section 16) and property ownership (section 25) – was very different. Why?  Well, for starters the court in the Black Label case had been influenced by the fact that SAB had not suffered a ‘substantial economic detriment’, something that could not be said about the PSL. Second, this was clearly not a case of parody, social commentary or the imparting by the media of important information, but rather the unauthorized use of intellectual property for commercial purposes.

The judge said this:  ‘The defendant’s conduct is not a form of speech or expression identified for protection by the Constitution. On the contrary all indications or pointers point or lead to the appropriation of an intellectual property asset belonging to the plaintiff, not for purposes of parody or lampooning or for other social purposes, but instead for no purpose other than to generate commercial gain for itself.’  The judge also felt that the fact that the National Lottery benefits ‘good causes’ was of no consequence: ‘Even if its claim was true, there is no basis in law for supposed and/or self-determined “good causes” to serve as a basis to limit copyright recognition or otherwise excuse copyright infringement’.

Copyright owners can be very grateful that the freedom of expression defence did not succeed. Because if it had, it’s hard to see how copyright in literary works would have any future significance in South Africa.

For more information, please contact:

VANESSA FERGUSON
Head of Anti-Counterfeiting Department and Director
Department: Anti-Counterfeiting
Tel: +27 (0)11 324 3069
Email: vanessaf@dmkisch.com

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