Eliza Beatrice graduated two years ago from Parsons, The New School for Design, a top fashion school in New York. Upon graduating she returned to her home city London with a view to gaining experience in the industry. She spent two years working in Savile Row alongside world renowned tailors. Eliza’s dream has always been to establish her own fashion line and to open a boutique. Armed with experience and enthusiasm she decides the time has come to go it alone.
Over the years Eliza has perfected a unique design of stitched flowers, she uses this design on all her products. This design makes her products stand out and identify them as her designs.
Eliza decides to trade under her full name Eliza Beatrice. She commissions a graphic designer to stylise her name and to incorporate into it a unique flower design.
To start off with Eliza plans to work mainly on a commission only basis offering bespoke designs. She has also set up a website to sell products in small quantities on a limited edition basis.
Whilst working in Savile Row, Eliza built up an enviable list of contacts. Word has gotten around that she is in business and Eliza receives a phone call from a Middle Eastern princess. She advises that she is visiting London next month and would like a bespoke dress made for her to wear to an Alice in Wonderland themed tea party. The princess discusses colours and fabrics, but leaves the design process to Eliza.
This opportunity is the big break Eliza needs to get her business off the ground. She first makes a prototype of the three quarter length frock style dress in blue silk, and adds lace detailing to it. She spends many hours perfecting the design. Once she is satisfied she asks a colleague to sketch the design, in order that she can send it to the princess for her approval.
The next day the Princess contacts Eliza and tells her that she has fallen in love with the dress and gives Eliza the go ahead to make the dress. The commission of the dress is confirmed and Eliza sets about making the dress. The hemline of the dress has her characteristic stitching of the flowers.
Two days before the princess was due to arrive in London, Eliza gets a telephone call from the Princess’ aide, she is informed that due to an important last minute royal engagement the princess is no longer coming to London. The princess pays for the dress and it is left with Eliza.
Eliza takes the dress to her Notting Hill Studio and hangs it on a rack with other items.
Some months later a professional contact of Eliza’s- Tom, informs her that a buyer for upmarket high street fashion chain ÂBealiesÂ is looking to put together a collection of own brand clothes from designers across the capital in order to promote British talent. Tom asks Eliza whether she would be interested in a meeting with the buyer. Eliza agrees and arranges a meeting at her Notting Hill studio. Eliza shows the buyer a collection of recent pieces that she has designed. The buyer seemed disinterested in the items presented to her. Just as the meeting came to an end, the Alice in Wonderland themed dress that Eliza had produced for the princess caught the buyer’s eye. She examined it and exclaimed that it was perfect to add to their collection. She asked Eliza whether 150 of these dresses could be manufactured in order for them to be sold under the label ÂEliza Beatrice for BealiesÂ.
Eliza advises the buyer that she would like some time to consider the proposal. Later that afternoon Eliza receives a phone call from Felipo an old friend of hers advising that he is on a short business trip to London and asked if she would like to meet for a coffee. Felipo is a practising solicitor working in-house for an Italian fashion house. Over coffee Eliza discusses her boutique and the recent request from the buyer from Bealies. Felipo asks whether she has considered the intellectual property issues. Eliza explains that she has not really given much thought to this as she has been too busy trying to get her business off the ground. Felipo is alarmed to hear this and takes it upon himself to educate Eliza on the importance of intellectual property considerations for a fashion designer such as herself.
Eliza Beatrice has decided to use her own name to trade. Felipo advises her that she may able to register the combination for her fashion line. Her name along with the representation of the unique flower design is distinctive.
Felipo advises Eliza that she needs to consider registering a number of trade marks:
Â Her name ÂEliza BeatriceÂ
Â Representation of the unique flower design
Â characteristic stitching of the flowers.
Felipo explained to Eliza that of all the potential trade marks the most interesting is the characteristic stitching of the flowers that she incorporates into her designs. He explains that the characteristic stitching of the flowers may be capable of being registered as a trade mark if it distinguishes Eliza’s products form other similar products. If she seeks trademark protection for the characteristic stitching of the flowers on its own or in conjunction with a dress shape, it will only be capable of being registered as a trade mark if it does not consist exclusively of a shape which:
Â results from the nature of the dress itself
Â is necessary to obtain a technical result
Â Gives substantial value to the hat
In light of the proposal by Bealies Felipo advises Eliza that it is important to consider the ownership of the design in question.
Ownership Stage 1
Felipo discusses the scenario where creativity comes not from Eliza but from her customer Â the princess.
If the princess had approached Eliza with the exact specifications for the dress and had already decided upon every single detail, e.g. the style of the dress, the sleeves, the neckline, the colour and the length of the dress etc, then the question would be who owns the rights in the finished dress? Felipo explained to Eliza that this will largely be dependent on the quality of the finished article and to a lesser extent the amount of contribution by each person to the design of the finished dress.
Felipo advised Eliza that legal battles are common place in the fashion industry and in order to avoid a costly and unpredictable legal case to determine ownership of the dress by arguing who contributed what to the finished dress and to prevent confusion after the relationship comes to an end, it is important that both parties’ get a legal agreement drawn up in order to set out the situation.
It is important to address the following issues in the legal agreement:
Â Clarification of Ownership of the rights in the design of the finished dress
Â An understanding as to whether the dress can be copied by Eliza and sold, or whether rights in the design can be used or transferred by Eliza to other clients.
Â Possible limitations on future sales (such as price, quantity and target market).
Â Whether either party can submit the finished product for entry in a competition or display it in an exhibition or fashion show etc.
Â Identification of the distinguishing characteristics to be included in all subsequent reproductions of the design (for example, the unique flower stitching on the hemline).
Ownership Stage 2
Normal practice for Eliza is to make an initial sample/prototype of the dress.
The creation of the dress in this way will give rise to unregistered design rights. If Eliza’s designs are deemed as Âworks of artistic craftsmanshipÂ then copyright protection will also subsist in the design.
If Eliza decides to produce the design in a significant quantity then the length of protection will be reduced.
Eliza asked a colleague of hers to sketch the design of the dress to send to the princess for approval. Eliza did not officially commission her colleague to sketch the design and she did not pay him for the said sketches. In this situation as the sketches are deemed Âartistic works, her colleague owns the copyright in the sketches. Therefore Eliza may need to seek legal advice in order to get a licence to use his sketches to show to prospective clients or to display the sketches on her website. Felipo advised her that in future she needs to ensure that a legal agreement is drawn up to ensure that she can use the sketches in the future.
After a very productive catch up with Felipo, Eliza realised the importance of intellectual property and sought his assistance on the points he advised her upon.
A month later Eliza decided to take up Bealies proposal, and 150 dresses were manufactured. They were a sell out. Eliza’s Alice in Wonderland themed dress was the talk of the season amongst prominent fashion circles. The dress was featured in Vogue and a host of other influential fashion publications.
Following this exposure Eliza was dismayed to learn that her dress had been copied. She sought advice from Felipo and asked him whether she can object. Felipo advised that as her dress is now more than three years old and that she had failed to register the design, the unregistered Community design right will not be available to her if the dress was Âmade available to the publicÂ during that period.