Question of the Week
Hello, my name is Amaze Oma, founder of The Mma Fashion Line. Five years ago, I had an idea to add a new design to our summer collection. I named the design ‘Dove Neck’. After 4 months of drawing up styles and dresses of ‘Dove Neck’, my attention was drawn to an identical design by Lara’s Fashion House. Because of the jeopardizing effect this could have on our new design, we quickly contacted Lara’s Fashion House to desist from using and even releasing the design.
Surprisingly, Lara’s Fashion House disagreed, claiming that they could use it as they pleased. According to them, no fashion designer or tailor could rightly claim original creation of any styles and that if Lara’s Fashion House didn’t use it another tailor would definitely use it. They described our original as “mere recognition on paper”. This is bad news and it’s going to be a serious drawback to my summer launch. I don’t even know how Lara’s Fashion House got hold of our Dove Neck design. A friend told me I should have registered the design. But I didn’t know about these things. I regret not doing so. Please help me. Don’t tell me all my hard work and effort to protect my design is all a waste. My summer launch is at the verge of jeopardy. Do I have a chance? Please help me!
Answer
Fashion designs qualify as artistic works under the Nigerian Copyright Act. Consequently, they are eligible for copyright protection. But because ‘Dove Neck’ is not only an artistic work but a model or pattern intended to be multiplied by an industrial process, copyright protection does not extend to such use.
What do originality and definite medium of expression really mean?
Originality and expression of this originality in a definite medium are vital for copyright protection. Section 1(2) of the Copyright Act requires both in any work of copyright.
To enjoy copyright, Dove Neck need not have been registered. What is essential is that the design is original and fixed in a definite medium of expression.
For The Mma Fashion Line, originality means you must have expended sufficient efforts in making the Dove Neck design unique in order to give it an original character. Apart from originality, you must have fixed the design in a definite medium of expression. This means you must have expressed your original design in any definite form from which it can be perceived.
Therefore, since you created the design originally and it has been expressed by applying it to a dress, your design meets the two requirements. Even if you only had a mere recognition on your sketchbook and somebody stole it and used it in any way, including publication in any medium, it would still have resulted in copyright infringement. Hand-drawn design sketches or sketches produced by Computer-Aided Design (CAD) technology may be protected by copyright.
Having said that, copyright protection does not extend to artistic works if, at the time the designs were made, they were intended by the author to be used as a model or pattern to be multiplied by any industrial process.
Intellectual property is broadly divided into copyright and industrial property. This is why once a work of copyright is industrially applied, copyright protection does not apply anymore. At this point, industrial property does.
This is why section 1(3) of the Copyright Act does not extend copyright protection to artistic works if at the time they were made, they were “intended by the author to be used as a model or pattern to be multiplied by any industrial process.”
Therefore, as long as you intended to use Dove Neck as a model or pattern to be multiplied by any industrial process for The Mma Fashion Line, copyright does not apply. Yes, the Copyright Act practically killed the joy of fashion designers with this restriction. This is why as a fashion designer, you must look beyond copyright for protection.
By registering Dove Neck as an industrial design, you enjoy protection, regardless of mass production.
According to the Patents and Designs Act, a design is simply a combination of lines or colours or both, and any 3-dimensional form, whether or not associated with colours. Before a design can be registrable under the Act, it must be new and it must not be contrary to public order or morality {section 13(1)(a) and (b) of the Act}.
Based on the requirements above, if before application for registration, the ‘Dove Neck’ design has been revealed or made available to the public, by description or use, it shall not qualify as a new design. Unless you were oblivious of ‘Dove Neck’ design’s availability to the public, and you are able to prove this to the satisfaction of the Registrar of Patents and Designs, you may have lost your design. Also, exhibition of your design in an officially recognized fashion exhibition does not amount to “making [it] available to the public”, as long as the registration for industrial design is made not more than 6 months after the exhibition.
Since you didn’t reveal your ‘Dove Neck’ design to the public nor participate in an exhibition, it is eligible for registration as an industrial design, subject to newness.
Therefore, an industrial-design registration is the safest option for protecting your new models and patterns for fashion designs. It’s not automatic as copyright is, but it’s worth the investment.
As a last port of call, you may consider registering the brand name and logo as trademark and incorporate it into all your designs.
While an industrial-design registration protects the 3-D design, trademark protects your brand—name, logo, etc. This is what leading brands like Luis Vuitton, Gucci, Ralph Lauren, and others do. With trademark protection, you are not only protecting your market but also making yourself qualified to obtain legal remedy under the Trademarks Act should any person infringe on your trademark.
The option of copyright would have been available to you but for the reason that you intend to mass-produce your ‘Dove Neck’ as a model or pattern at the time of creation. This negates a copyright under the Copyright Act.
Although advanced measures for the protection of fashion designs exist in some foreign jurisdictions, sadly it is not same for Nigeria. In Nigeria, industrial design and trademark are your best bet.
Consider contacting an IP lawyer or law firm for professional advice and assistance.
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