A recent Federal Court case examined the breach of copyright in fabric designs (in the case, the design being applied to quilt covers and pillow cases).  The Dempsey Group Pty Ltd(“Dempsey”), originally designed three unique fabric patterns, and hence owned copyright in those patterns.  Dempsey sold these products under its Morgan & Finch brand.  Spotlight used the same supplier in China as Dempsey and was shown samples of the designs owned by Dempsey.  Spotlight then used the Dempsey fabrics to create similarly designed and competitive products.  The three original Dempsey designs and the three copies by Spotlight are set out below.

Although viewed at a distance in this article, the two versions are certainly not identical, and there are significant differences.

The Court nonetheless found that Spotlight’s products breached Dempsey’s copyright in its fabric designs as Spotlight copied a substantial part of it.  About one of the products, the Court reasoned:

There are differences of detail, colouring and design between the products but, in my opinion, the KOO Jarvis product reproduces a substantial part of the Rimonaartistic work. As Dodds-Streeton J observed in Seafollyat [345], it is unnecessary that the two works bear an overall resemblance to each other nor is it appropriate to dissect the copyright work piecemeal and focus on the differences. If similarities are identified, the question is the qualitative significance of such similarities. Reproduction does not strictly require a complete and accurate correspondence to a “substantial part” of the work. The artistic quality of the Rimona work consists of the colour, layout and shaping of the designs in the centre and the colour, layout, structure and integers of the border, the cumulative effect of which created the desired “look and feel” sought by Ms Norris in designing the product. Whilst the bird motifs and floral background are absent from the central design of the KOO Jarvis product and the overall effect is not as “busy”, the use of teal as the dominant colour in the KOO Jarvis product and the similarity of the shaping of the designs in the centre and border design, structure and integers have sufficient objective similarity and qualitatively reproduced, in a material form, the look and feel of the Rimona product”.

Key take-aways from this case:

Once again, courts have blown away the myth of the 10% rule (change 10% of someone’s copyright and you are ok).  If a designer is using another artistic work as inspiration, that designer needs to apply their own creative effort to come up with something new and not recreate the look and feel of the original work;
It is important as soon as you are aware of someone else infringing your rights, put them on notice by way of a letter of demand (after which they will be allowed a short time to take advice and make a decision (in the end Spotlight undertook a recall). However, in this case the damages didn’t start to run until Dempsey had not just put Spotlight on notice but also provided some proof that they created the original artwork.  So ensure your internal records can quickly be marshalled to provide this; and
Emphasise with your factories that you own copyright in your works and insist that they not showcase those designs to other customers or potential customers.


© 2019 Julian Blanchard