For designers in a fast moving field such as fashion, there is a fine line between following market trends and infringing a market leader’s copyright. A recent case in the Australian Federal Court demonstrates how easy it is to fall onto the wrong side of the line. The case was Seafolly Pty Ltd v Fewstone Pty Ltd (trading as City Beach)  FCA 321. The textile designs (pictured right) are reproduced from the reported case.
While there are similarities between the Seafolly English Rose design (Figure 1) and the City Beach Rosette print (Figure 2), the differences are also striking, particularly the irregular arrangement of the large roses in the Seafolly design compared to the straight lines of the City Beach design, the different technique used to depict the rose petals, the amount of detail in the leaves, and the different colours of the leaves.
The differences between Seafolly’s Covent Garden artwork (Figure 3) and City Beach’s Sienna artwork (Figure 4) are even more striking.
However, the Federal Court held that in both cases, City Beach had infringed copyright in the Seafolly artwork. It is doubtful whether the similarities between the two sets of artwork are so great that a Court would have found that copying was the most likely explanation if there had been no additional evidence. However, there was clear evidence that City Beach had provided samples and photographs of the relevant Seafolly garments to its designers, together with samples and photographs of City Beach’s own products, to indicate ‘the look or style of the prints that City Beach wanted developed’. The City Beach designer gave evidence that she had consciously tried to make her designs different from the Seafolly ones, but in the case of the Rosette print, City Beach’s instructions pushed the design closer towards the Seafolly English Rose design.
Neither of the two arguments raised by City Beach’s defence succeeded. The first relied on the established doctrine that copyright protects expression, not ideas. City Beach argued that at most it had taken only ideas or concepts from the Seafolly textiles (a mixture of large and small dark pink stylised roses with leaves on a black and white background (Rosette); a mixture of spiky stylised flowers in different colours with frond like leaves (Sienna) and not the expression of those ideas, where it would be possible to identify individual elements in each textile that were visually similar to each other. The second related argument was that City Beach had not reproduced a substantial part of the Seafolly textiles, in the sense that the objective similarity between each pair of textiles was not so strong that it was possible to still see the Seafolly artwork in the City Beach artwork.
In rejecting these arguments, the Court relied on a decision of the Full Federal Court in Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd  FCAFC 197 (23 December 2008) that the graphics on a Cotton On t-shirt reproduced a substantial part of the graphics on an Elwood t-shirt by copying the size, nature and placement of the individual graphic elements of the t-shirt, even though the individual elements on the Cotton On t-shirt did not visually resemble those on the Elwood t-shirt.
This is the most recent of a series of cases where the Federal Court has made it clear that it does not look kindly on companies that use their competitor’s graphic designs in any way, and that once it has been proved that a designer was given a copy of a competitor’s artwork, it will be very difficult to escape liability on the grounds argued by City Beach. Employers should give clear instructions to their employees that other firms’ products must not be provided or described to design staff, and that files of competitors’ designs must not be kept. After all, there are any number of out of copyright old-fashioned flower designs that City Beach could have used as inspiration for its new products.
Annette Rubinstein BA(Hons) LLB(Hons) is head of the commercial practice group. She has specialist expertise in competition and consumer law, confidentiality and trade secrets, and contract law. She negotiates and drafts agreements, and advises international clients on the adaptation of standard agreements to comply with Australian law. Annette is the author of the copyright chapter of the Law Handbook firstname.lastname@example.org