Unregistered design right in style of jeans held to be infringed
G-Star has been broadly successful in its action against Rhodi Limited and others (together, 'Rhodi') for secondary infringement of its UK unregistered design rights in its iconic three-panel jeans, the 'Arc Pant' (G-Star Raw CV v Rhodi Limited ( EWHC 216 (Ch), February 6 2015)). The design for the Arc Pant features an asymmetric tapered leg that 'turns' around the leg, resulting from the use of twisted side seams and inseams, creating a 3D effect around the knee with an 'anti-fit' effect. However, G-Star was unable to show that the third and sixth defendants had played any part in the infringement, as the third defendant is a dormant company and the sixth defendant is the parent company of a trading group that does not itself trade. Further, it was unable to show that the seventh and eighth defendants (former directors of the corporate defendants) had participated in a common design so as to render them liable as joint tortfeasors for the design right infringement.
The designs at issue were those developed by G-Star in 2007/2008 for the Arc Pant. Prior to the 2015 proceedings, a number of the same defendants had entered into a 2011 settlement agreement with G-Star, in relation to Rhodi's sale in 2010 of a number of styles of jeans alleged to infringe the Arc Pant design. Under this agreement, G-Star had recourse to a bank guarantee in the event it was able to demonstrate that its rights had been infringed. In February 2013 G-Star made a claim under the bank guarantee. It separately issued proceedings for infringement in respect of a number of Rhodi's other jean styles.
G-Star relied on the following features of the Arc Pant design:
- the shape of each of the legs (the shape of the legs in the most capacious arrangement that the arrangement of their fabric allows);
- the shape of a third pattern piece, tapering towards its top, along the length of the inside leg;
- an accentuated knee portion, serving to emphasise the bent knee which results from the use of the third pattern piece together with the other two pattern pieces;
- a foreshortened back panel, resulting from an additional seam; and
- the twisted leg configuration, created by combining different pattern parts together to create a leg which bends at the knee inwards and backwards, and turns around the leg when worn to create a 'corkscrew' effect.
As Rhodi's products had all been manufactured outside the United Kingdom, G-Star had to rely on secondary infringement, on the basis of Rhodi's importing, stocking for commercial purposes and offering for sale (and sale) of infringing articles in the United Kingdom (Section 227 of the Copyright Designs and Patents Act 1988).
The judge emphasised the differences between the threshold test for subsistence of registered and unregistered design right, relying on Frayling Furniture v Premier Upholstery Ltd ( 22(5) IPD 22051) and "The Modern Law of Copyright and Designs" (Laddie, Prescott and Vitoria, 4th Edition). For an unregistered design to qualify for protection, it merely has to be not commonplace at the date it was created. There is no need to show that the design is novel or has individual character. The judge cited Mummery LJ's comment that the purpose of the limited protection afforded to unregistered designs is to prevent unfair misappropriation of the time, skill and effort expended by the original creator of the design (Farmers Build Ltd v Carrier Bulk Handling Materials Ltd ( RPC 461)). It was therefore not possible to run a 'squeeze argument' that the scope of protection for the elements of the Arc Pant should be reduced due to the presence of similar designs in the design corpus. Instead, to challenge subsistence of unregistered design right, the defendant has to show that any identical or closely similar prior art exists in such numbers and is sufficiently well-known to make the design commonplace – a handful of designs in the prior art is not enough. In any event, the defendants did not allege that the Arc Pant design was commonplace.
Spearman J adopted Lewison J's summary of the law on unregistered designs (Virgin Atlantic Airways v Premium Aircraft ( EWHC 26 (Pat))). In finding that unregistered design right subsisted in the Arc Pant design, the judge placed great weight on the evidence of the G-Star designer, and the design history, from the genesis of the design brief to details of her approach to overcoming a manufacturing constraint relating to the manner in which the panel pieces would all be sown together, to avoid all the pieces of fabric meeting at a single point. It was clear that there were other ways of solving this problem and that there was no functional need to replicate the G-Star approach.
In analysing whether Rhodi's products were made exactly or substantially to the Arc Pant design (and therefore infringed), the judge relied on expert evidence that:
- the 3D shape of the Arc Pant was 'ground-breaking' and had 'fundamental originality' (to lead to the suspicion that a person using a similar 3D shape was likely to have copied the Arc Pant);
- even if Rhodi arrived at the concept of the 3D shape independently of the Arc Pant, achieving the shape using flat panels of fabric would not be straightforward, as there are countless variations as to the shape and numbers of the panels which could be used, how the pattern shape could be cut and the pieces arranged; and
- it was unlikely Rhodi could have created the pattern pieces for its products (which were 'virtually identical' to the Arc Pant) without access to the Arc Pant.
The judge held that the similarities between the Arc Pant and the Rhodi products were "striking".
The judge held that the defendants had not provided a satisfactory explanation as to their design processes and the nature of the materials provided to manufacturers by way of design brief, sketches and samples. The judge did not believe that provision of a high-level description of the general design elements required would result in the third-party manufacturer producing jeans which were exactly or substantially the same as the Arc Pant design. On the evidence, it was also likely that someone at Rhodi had a pair of Arc Pants which were likely to have been used as a basis for the Rhodi products. There were also significant gaps in the design history presented to the court (as well as in Rhodi's disclosure), giving rise to an inference of copying. No evidence was available from Rhodi's designers, and this contrasted unfavourably with the clear G-Star narrative provided by its designer and in-house counsel. Given the past dealings between the parties, the judge noted he would have expected Rhodi to take care to preserve evidence of an independent design process and this failure to do so led the judge to be sceptical as to Rhodi's good faith. The judge therefore held that the similarities between the Arc Pant and Rhodi's products arose from copying. He also held that the first, second, fourth and fifth defendants had requisite knowledge or belief that the Rhodi products were infringing (as it should have been apparent that the products were made substantially to the G-Star designs and that copying had taken place and relevant team members had knowledge of the 2010 proceedings).
G-Star was unable to establish a common design on the part of the individual defendants to commit secondary infringement as it was unable to show their involvement in the clothing business other than at a very high level, detached from the day-to-day operation of the business.
Anna Blest, Clifford Chance LLP, London
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