Only recently, a famous and well admired fashion designer, Toyin Lawani expressed her dismay, to the public at large via the Nations news site, about a copy designer who mass produced knock off designs of her work. Toyin Lawani merely expressed the fears of many other designers who expend time, money and effort to birth a fashion idea and bring same to reality, only to see knockoff designs in the streets shortly after. In an expressive and stimulating industry like the fashion industry, creativity should be encouraged and appreciated. Otherwise, competition in the market would be unfair and the market itself would favour persons who feed on other peoples work to make profit, to the detriment of an original.
This will stifle innovation, inspiration, creativity, excellence and advancement. Hence, by this article we seek to assuage these fears and to assure the interested reader that the law in Nigeria provides protection for creative works with an original character. Also, by following certain bedrock principles for the protection of creativity in business together with the application of sound legal engineering, there remain remedies available for infringements such as is often and likely to be complained of by fashion designers.
Firstly, a Fashion Design is copyrightable in Nigeria. By Section 1 of the Copyright Act, CAP C28 Laws of the Federation of Nigeria, 2004, an artistic work forms part of the works eligible for copyright provided sufficient effort has been expended on it to give it an Original character. Furthermore, by Section 51 of the Act, an artistic work includes drawings and plans; a Fashion Design will safely fit into that definition. Copyright by nature enables the Owner thereof to control the eligible work (the whole or substantial part of it) either in its Original form, which in this case is the design, or in any form which is recognizably derived from the original. In this article we shall refer to any form of the work recognizably derived from the original as a derivative work and the Original form of the work as the work.
The Owner may control the work and its derivative in the following ways: the reproduction of the work or its derivative in any material form; publishing the work or its derivative; inclusion of the work or its derivative in any cinematograph film; make any adaptation of the work or its derivative; do in relation to any adaptation of the work or its derivative any of the following – a reproduction, publishing or inclusion in a cinematograph film.
In exemplifying this provision of the law, any fashion design (which we earlier on termed a form of drawing or plan), will be the original form of the work which in itself is the copyright. Now with artistic craftsmanship, it is developed into more realizable and perceptive aesthetic expression in the form of fashion clothing. In this other form of fashion clothing, it becomes a derivative work. The custom within the Industry is for the Designer (who is the Owner of the copyright) to also be the craftsman and if not the craftsman, he or she, would be the supervisor of the crafts work. It would be recalled that the rights of the Owner cover also the derivative work. Thus, any work, which appears recognizable from the original design or its derivative, becomes an infringement of the copyright where it is done without prior permission from the owner of the copyright first sought and obtained.
Once an infringement is detected, the owner of the copyright has a claim in damages, injunction and for accounts with the proper forum being the Federal High Court within the State of infringement. Despite this, there remains a growing reluctance amongst Fashion designers to pursue an action against other designers who copy their work. Perhaps because of the utilitarian function of a clothing. However, and as mentioned earlier there remain certain extant principles applied by entities in creative businesses that afford protection for business innovations so that the originators safely enjoy the fruits of their labour. Some of these are applicable to the budding fashion industry in Nigeria. When properly applied, they easily ground actionable claims before the courts in Nigeria. They are to be applied to your Fashion Designing and clothing businesses. They are:
- CORDINATING AND SECURING YOUR WORK ENVIRONMENT:
The idea is to protect your ideas, methods and styles during the planning to manufacturing stage. This you can do in several ways:
- Take steps to protect your plans, drawings and patterns for instance by discussing them only with partners or trusted and loyal employees; working on them in sealed rooms and storing them securely and safely afterwards.
- Any such employee who works with you in the planning and designing stages should be made to sign a non-disclosure agreement, confidentiality agreement and a non-compete agreement.
- Employees should be tested and qualify, before granting them access to your design rooms.
- Secure your tailoring and manufacturing rooms so that only employees can gain access to your tailoring and manufacturing rooms.
- DO NOT allow your products out to the public until you are ready to offer them for sale.
- IF YOU DO NOT HAVE A BRAND, DEVELOP ONE.
- A brand here would include a label. This can be registered with the trademarks department under the Ministry of commerce and industry. This differentiates your clothing as an Original brand and can be distinguished from the counterfeit. It may not stop the mass production but it maintains the uniqueness and qualifies your clients. It also supports a claim in infringement of trademark.
- Register the label or brand and ensure it is affixed to all of your design products. Words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, are eligible for registration as trademarks.
- Specialize in your clothing. Either in gender, material used or in patterns. This way, your clothing patterns or characteristics are easily detectable and possibly any counterfeit competitor is easily realized. It also enhances reputation.
- BE WILLING TO DEAL WITH COPY DESIGNERS WHEN THEY ARE NOT FORMER EMPLOYEES AND ONLY AFTER PRIOR INVESTIGATION.
- It is almost impossible to avoid persons copying designs in todays Nigerian clothing market.
- Do not be averse to striking deals aimed at incorporating such persons into your business. So they gain from your enterprise without having to copy your designs. Already they compliment and affirm the quality of your work by remaking them. This turns the piracy paradox to your advantage. You benefit and increase goodwill. A valuable asset in your business
- Give allowance for the controlled reproduction of your work. This we call Mass Production control.
- KEEP A SALES RECORD AND CELEBRATE YOUR DESIGNS.
- Keep a personal customer list or record and reward them by knowing their dress desires and bearing them in mind during design.
- Inform your customers to notice and detect the difference in knock off designs.
- Have shows, such as a runway event or a closed exhibition, to open your designs in order to cause customer and public awareness of a new design. This makes it easier to attribute them to you.
- Invite your personal customers especially those in your list and honour them with prime seating positions, acknowledging them as part of your source of inspiration. Encourage them to purchase these designer clothings. These gives the designer sometime to recover some creation costs when your products are acquired in opening shows and before knock off designs show up in the market.
- ALWAYS THINK BIG AND OF EXPANDING.
If you are going to open a fashion design clothes company and intend to create original products, you should recognize that you come into the clothing and fashion industry with the edge and hence should function in higher operational levels and standards. Hence much of the persons we ordinarily call competition are actually at lower organizational levels than you are. So you can take up a consultants role or a supervisory role for young and budding entrepreneurial designers and earn some money along the way, especially where you have established yourself as a known designer. This way you also nuture talent while preserving your own unique brand.
- FINALLY AND MOST IMPORTANTLY, RETAIN A LAWYER.
Emphasis is placed on retaining a lawyer. The bulk of the work for persons, corporate and otherwise is selecting a lawyer in times of impending or necessary litigation. You gain an advantage when you already have a relationship with your lawyer. Your lawyer will advise you on various ways to ensure legal and enforceable means of protecting your clothing designs.
Comparatively, among other common-law jurisdictions and the European Union clothing is defined as a useful article that serves a utilitarian purpose and thus only qualified protection by copyrights is afforded the designer. It would be fair to assess the position taken by the courts in these countries but this would not be done here. Suffice it to mention however, that copyright is conferred on any work which is published in any country which is a party to any treaty obligation or international agreement in which Nigeria is also a party. Logically, this forms part of the reciprocal obligation given by parties to a treaty or an international agreement. Also, copyright is conferred by section 4 of the Act on any eligible work, made under the direction of the government, state or any prescribed international body
Secondly, trademarks protect the label and not the clothing itself. Any sign, or any combination of signs, capable of distinguishing the goods or services of one business from those of other businesses, shall be capable of constituting a trademark. The patents and Designs Act in Nigeria apply to invention and for industrial designs. These acts afford minimal protections for fashion designs generally hence the need for more creative legal solutions. For this to be achievable, it is urged that there be more awareness amongst designers and an implied collaboration with their lawyers.
Due to the need for exposition in Fashion law, this will be the beginning of a series of articles on this specialization of the law. By means of a comparative analysis, we shall endeavour to discuss the differences in laws within the Nigerian environment and other common law jurisdictions such as the USA and the UK.
Article written by Bankole Oyewole, Senior Associate with Creative Legal. Contributions by Justin Ige, Principal @ Creative Legal.