One of the enduring myths among graphic designers (among others) seems to be that you only need to change something a certain number of times or a certain percentage to be able to avoid a copyright problem

A recent case in the Federal Court serves as a reminder that approaching copyright issues in this way will only land you in strife

The case – brought by the swimwear designer Seafolly against a company trading as "City Beach" – involved three designs all up: two were flower designs printed onto fabric and one an embroidered pattern with smocking and shirring (a process whereby the cloth is gathered together to form a decorative element to a garment)

Interesting evidence included:

  • a senior buyer for City Beach admitted in cross-examination to having bought swimwear with the three designs in issue from Seafolly;
  • internal emails indicated that City Beach – in dialogue with its designers – referred to at least one of the City Beach designs as a "Seafolly knockoff";
  • the City Beach designers stated to City Beach in an email relating to one of the designs that "We have developed this print referring to the picture you sent us and using similar flowers and colours"; and
  • in another email (relating to the embroidered pattern) the instruction from City Beach was for "[a]ll pattern details to stay the same as original and also the colour of the surface thread – off white".

The person in charge of the process at City Beach also made the fatal copyright error of defining the issue (at least in relation to one print) as being whether or not the copied design was "sufficiently different" [our emphasis] to the original. Instead, the legal test is always whether or not a "substantial part" has been copied. In other words, you have to look at what is the same or similar, rather than what is different

Applying the real test, the Court had no trouble finding that, despite the differences between the Seafolly and City Beach print designs, the similarities were such that the City Beach designs reproduced a "substantial part" of the Seafolly designs. For these two designs, the court looked at similarities such as the placement of the flowers, shading, colourings, how much background was showing through, and perspective. These were all matters of choice for the designer, and the similarities between the Seafolly and City Beach designs were not merely the result of common sources or commonplace ideas. In other words, while floral and rose prints were a "popular trend" at the time, and while anyone is free to pick up on "trends", in this case, City Beach had gone much further than that and had copied important and distinctive parts of Seafolly's works

For lawyers, particularly interesting aspects of the case relate to two issues raised by City Beach in relation to the embroidered design. City Beach argued that this design was not protected by copyright at all and that, if it is, then there was a defence available to it because the smocking and shirring meant that the design was a "corresponding design" that had been "industrially applied" (and that if Seafolly wanted to protect this, it should have registered that design under the Designs Act.) On the first of these issues, the court found that the design was indeed protected by copyright, as it was "the product of labour, skill and effort, together with a process of trial and error, on the part of the Seafolly designers". In this respect, the case is a reminder that even very simple designs can be protected by copyright

The court also rejected City Beach's defence that this design – being comprised of smocking and shirring – was a "corresponding design" that had been "industrially applied" to the garments and that therefore Seafolly could not take action under the Copyright Act. In particular, the court noted that "the garment was not made in the shape or configuration of the artistic work". Rather, the design was only one constituent element of the garment, and therefore not a "corresponding design"

Seafolly asked for damages of some $823,000 – made up of roughly $310,000 compensation (including for damage to reputation), $300,000 for additional damages for the flagrancy of the infringements and some $212,000 for "conversion" (for items already sold). The court awarded $250,000, refusing to award the conversion damages, stating that the award of the other damages was sufficient

The judgement – with photos so you can compare the designs yourself – is available here: http://www.austlii.edu.au/au/cases/cth/FCA/2014/321.html If you need advice on copyright or design issues – whether in relation to graphic art, design or otherwise – contact copyright lawyer Adam Simpson or Ian McDonald (Special Counsel) at Simpsons Solicitors.