This case, G-Star Raw v Rhodi and others ([2015] EWHC 216), concerned the design of jeans. G-Star brought the action for infringement of design right in its ARC pant against Rhodi - the owner of the "Voi" brand of jeans.

Despite copying being considered to be endemic in the fashion industry, this is the first High Court designs case concerning fashion for a significant period of time.

To some extent, the outcome turned on its facts, but the detailed judgment of Richard Spearman QC, sitting as a deputy judge of the High Court, provides useful guidance on how to assess UK unregistered design right infringement, and highlights the importance of proper evidence and full disclosure when copying is alleged.

G-Star succeeded in proving that all nine of Rhodi's styles infringe its design rights and that four of the Rhodi companies were liable for those infringements.

Background

G-Star is one of Europe's leading denim fashion brands. Its designers created a design of jeans with emphasised, stretched, bent (3-D) knees with an 'anti-fit' effect, an extreme amount of fabric around the knee, and moving away from G-Star's successful earlier, modular, Elwood design from the mid-1990s. The new design, the 'Arc Pant', was first made available to the public in 2008. One of its designers, Rixt van der Tol, gave evidence, and was described by Rhodi's expert as an "amazing woman" and "very, very inspiring".

G-Star alleged that various Rhodi styles were made to the design of the Arc Pant and, as such, infringed its UK unregistered design rights. The position taken by Rhodi will feel familiar to owners of design rights when they approach alleged infringers. Rhodi contended that their styles were created "without reference to the Arc Pant" and that they were "just following general fashion trends in the denim market, and to the extent that their styles have similarities to the Arc Pant this is due to them sharing generic features which had ... become common".

G-Star's design rights

G-Star gave detailed evidence of how its designs were created, and such evidence was described as "clear, compelling and supported by ... contemporary documents, including original pattern pieces which were produced for inspection in court". The court relied on this evidence to find that design rights subsisted in the ARC design, and that G-Star owned those design rights. G-Star claimed its designs by reference to the Arc Pant itself, although it did set out in its pleading various aspects of the design on which it focused for the infringement case.

Copying

The judge considered the reversed burden of proof on copying, as set out in Designers Guild v Russell Williams:

"if the plaintiff demonstrates sufficient similarity, not in the works as a whole but in the features claimed to have been copied, and establishes that the defendant had prior access to the copyright work, the burden passes to the defendant to satisfy the judge that, despite the similarities, they did not result from copying."

The judge held that the burden was indeed reversed in this case, and that Rhodi did not succeed in discharging the burden in their favour for numerous reasons. These included a lack of evidence from those who allegedly designed Rhodi's styles (except one employee, who was " bad at drawing" and "communicated his design ideas with samples ... produced by other manufacturers"), and "glaring gaps" in Rhodi's disclosure, some of which caused the judge to be "very sceptical about the Defendants' good faith".

The judge provided useful guidance on the standards expected of defendants in proving their defence: he "expected the Defendants to take care to preserve a full paper trail of the alleged independent design process". Expert evidence was considered important; the judge found G-Star's expert evidence to be "clear, credible and balanced" and helpful in providing "coherent and persuasive" analysis as to why Rhodi must have copied.

Knowledge

Rhodi's products were manufactured overseas, so the case concerned secondary infringement. G-Star therefore had to prove either actual knowledge on the part of Rhodi that their styles comprised infringing articles or that, objectively, Rhodi had "reason to believe that this was so".

The correct approach to the latter was first set out in LA Gear v Hi-Tech, which was cited by Mann J in Nouveau Fabrics v Voyage Decoration, who added "'reason to believe' requires more than 'reason to suspect', and it requires an evaluation of all factors known to the defendant in order to see whether he fulfils the test."

The judge found that Rhodi were well aware that G-Star claimed subsistence and ownership of design rights in the Arc Pant from earlier proceedings between the parties. Notwithstanding that these proceedings only identified rights in the 'whole' Arc pant, this was not relevant to the question of Rhodi's knowledge.

In any event, it was clear that the alleged infringements were made substantially to the design of both the Arc pant both as a whole and the various aspects when comparing the Arc pant to the Rhodi designs; and Rhodi had the opportunity to do this as they had at least one sample of an Arc pant. This led to at least a 'reason to believe'.

Whose knowledge is relevant? That of those people within the defendant organisations to whom the tasks of designing, arranging manufacture, ordering and marketing were delegated, and such people were held to know that the Rhodi products were infringing articles.

When Rhodi attempted to blame the factories, the judge held that it would be

"an unfortunate result ... if a person who is aware of the risk that his mode of conducting business may result in copying other people's designs could escape liability for infringement 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 had occurred".

As this is a common answer given to an allegation of infringement, it will be encouraging for designers to see a steer from the court as to how such arguments will be given short shrift.

Were the Rhodi styles made substantially to the Arc Pant designs?

Rhodi argued that, as the rights were claimed by reference to the actual article, they should be very narrowly construed. They appeared to attempt a squeeze argument, but this was flatly rejected by the judge. The argument was that the design corpus at the time of the alleged infringements shared features of the Arc Pant, and the scope of protection for the rights in issue should therefore be reduced.

The basis of the rejection was Frayling Furniture v Premier Upholstery, as dealt with by Laddie Prescott and Vitoria in The Modern Law of Copyright and Designs:

"The squeeze argument has a lot of force where one item of prior art can destroy the registration. It has far less force in the field of unregistered design right ... A handful of roughly similar designs in the prior art is not enough ... the only types of squeeze based on prior art which will work ... rely on commonplace prior designs".

Commonplace was originally pleaded by Rhodi in this case, but abandoned well before trial.

Rhodi's expert argued that he had found "use of the style ideas of which the design aspects are examples, both before late 2007 [the date of design of the Arc pant] and afterwards". He suggested that these would assist the court to "compare and assess the significance of the similarities between these other uses and the ARC Pant".

His evidence largely dealt with where these "style ideas" had been used elsewhere, and in relation to the differences between G-Star's Arc Pant design and Rhodi's styles, he said that "it is only when I closely looked at the work of Estelle Moore and other people that I realised, actually, you know, there are differences that I can spot".

Separately, the judge found the evidence of Estelle Moore (a fact witness for Rhodi who attempted to compare the shapes of the G-Star and Rhodi styles) to be "simply, and significantly, wrong ... misleading and unreliable". In addition to the fact that Rhodi's expert could only see the differences between the Arc Pant and the Rhodi styles when relying on such misleading evidence, the judge criticised him for looking at the pleaded designs at too high a level of generality when comparing them to the design corpus.

Finally, he was found to have put some points a little too strongly; for example, he said that Rhodi's design of a third pattern piece along the inside leg was "not doing the same ergonomic job [as the equivalent section of the Arc Pant] and its purpose is purely aesthetic".

However, when shown the respective pattern pieces in isolation and asked which was which, in cross examination, he got them the wrong way round. As a result, the judge questioned the reliability of his evidence. The whole treatment of Rhodi's evidence serves as an important reminder to parties to litigation to ensure that evidence is checked thoroughly for accuracy and unsupportable assertions before it is filed.

On the legal assessment, the judge conducted a detailed analysis of the infringement test, and how it differed to the corresponding copyright test. G-Star argued that although there is a conceptual difference between the test for infringement of copyright and that of infringement of design right, the reasoning concerning substantiality and copyright works is helpful in design right cases.

G-Star pointed to C&H Engineering v F Klucznic, which held that "original has the same meaning for design right as it does for copyright". NLA v Marks and Spencer held that it is that quality of originality which is relevant when determining the question of substantiality and the combination of the CJEU cases of Infopaq and Football Dataco that state that the "notion of the author's own intellectual creation refers to the criterion of originality". As such, if the original skill and labour or the intellectual creation of the author has been taken, infringement will follow.

Rhodi disagreed with this analysis, saying that the correct approach is to adopt a strict test, "which recognises that there is a fuzzy penumbra to the scope of protection of a design by recognising that insubstantial changes to a design will not mean that there is no infringement. Insubstantial changes are those which will not be taken to be significant by the person assessing the design."

Overall, the judge held that whatever way you looked at it, "the substantial reproduction of the shape and configuration of the Arc Pant Designs and, indeed, the Arc Pant, is evident from comparing [the photographs of each]". He held that "any changes are insubstantial, in that they will not be significant in the eyes of consumers to whom the designs are directed."

The judge's guidance on substantiality was as follows:

"provided the claimant identifies correctly the part(s) of his design which he claims to have been taken exactly or substantially, he will obtain protection against unfair misappropriation of the time, skill and effort that he has expended on creating that design. In those circumstances, no purpose is likely to be served by investigating the extent to which other aspects of his design are also 'original'. Conversely, if he pleads his design right case too widely, that may cause the claim to fail even if it might have succeeded if it had been advanced on a narrower basis, and the day will not be saved by saying that there are some aspects within the claimed right that are 'original'".

In this case, the judge found that a large amount of the detail of G-Star's designs had been replicated by Rhodi.

He concluded that the difference between copyright and design right in this respect was that "The question of 'part' comes in at the stage of subsistence of the right, rather than at the stage of infringement”.

The full judgment can be found here. 

Wragge Lawrence Graham & Co represented G-Star.