Infringement of design right in jeansPrint publication
A recent High Court decision  has clarified the different tests for infringement of copyright and UK unregistered design right and considered the test for the “knowledge” of the defendant in claims for secondary infringement of UK unregistered design right.
The case concerned the design in a pair of jeans, depicted in the judgment, which can be accessed here. The claimant’s design shows an emphasised, stretched, “anti-fit” effect around the knee. When the claimant instituted proceedings for infringement of UK unregistered design right in the jeans, the defendant denied having copied the design, saying instead that it had been following “general fashion trends in the denim market”.
The judge considered that the similarities between the claimant’s design and the defendant’s design were striking. Where a claimant can, as here, demonstrate sufficient similarity in the features claimed to have been copied and that the defendant had prior access to the copyright work, the burden of proof is reversed. It is for the defendant to satisfy the judge that, despite the similarities, these did not result from copying.
The judge then noted the different tests for copyright infringement and that of UK unregistered design right: in the case of the former, there would be infringement if a substantial part of the work was copied; by contrast, in the case of UK unregistered design right, it was not the case that reproducing a substantial part of a design, without more, would constitute infringement. In the case of UK unregistered design right, there will only be infringement if the design is copied so as to produce articles exactly or substantially to the design.
The products in question were manufactured overseas, so the case was about “secondary infringement”. Secondary infringement involves commercial importation of or dealing in articles which the infringer knows or has reason to believe are infringing articles. Dealers who can establish that they did not know and had no reason to believe that design right subsisted in the relevant design may be ordered to pay damages not exceeding a reasonable royalty but will face no further liability. The Court held that the persons whose knowledge mattered for these purposes were those persons within the defendant organisation who were responsible for arranging and ordering the manufacture of the products. In the words of the Court it would be “unfortunate” if such person were able to escape liability “by giving general instructions to foreign manufacturers to produce articles similar to popular designs and then say that if those manufacturers choose to fulfil those instructions by copying other people’s designs that is not something that can be laid at his door if he has not looked to see whether copying has occurred”.
Overall, the judge found that there was substantial reproduction of the shape and configuration of the claimant’s design. Such alterations as there were were insubstantial, i.e. they would not be taken to be significant by the person assessing the design. Accordingly, judgment was given for the claimant.
The judge’s remarks on what is meant by knowledge of alleged secondary infringers is particularly relevant in the fashion/textiles industry where production is invariably carried out overseas and the products then imported in the UK for sale to consumers.
Also noteworthy is the judge’s emphasis on the importance of designers taking care to ensure a comprehensive paper trail to demonstrate an independent design process – the defendant in this case fell a long way short of the judge’s expectations in this regard.
 G-Star v Rhodi Ltd  EWHC 216 (Ch)