Battle of the Gilets

In December 2014, the United Kingdom’s Intellectual Property Enterprise Court hosted another win for fashion designers worldwide. 

Superdry, operating under the parent company DKH, and Animal, under its parent company Young, duked it out over their starkly similar… gilets? 

So, what exactly is a gilet and why should we care? 

A gilet is a fancy word for a jacket without sleeves – what we North Americans might call a “vest.” But why should we care? 

Under UK law, there are four types of design right protection: Community registered and unregistered design rights, UK registered design rights, and you guessed it, UK unregistered design rights.  In its claim against Animal, Superdry alleged that Animal’s “Glaisdale” gilet improperly infringed on its community and UK unregistered design for its “Academy” gilet. 

UK unregistered design rights are protected under the Copyrights, Designs, and Patents Act of 1988. Under the Act, the shape and/or the configuration of the article or part of the article is protected. When another design copies that design in a way that does not give a different overall impression, then the second design is considered an infringement on the original unregistered design rights.
Young valiantly, but unsuccessfully, argued that their gilet design was not an infringement of the Superdry design because it was “original” and “commonplace,” as is required by the Copyrights, Designs, and Patents Act of 1988. 

“Original” simply means that the design is new and not copied from another, but the analysis for whether or not a design is commonplace is much more hefty. Whether or not a design is commonplace is a determination to be made by the court and it involves the following multi-part test:

  1. A comparison between the design and those of other articles in the same field;
  2. Whether the design’s aspects are found only in the defendant’s design or in many other designs within the field; and
  3. An inquiry into whether the design was copied from the earlier article or developed

At first glance the two vests appear… well, identical. This causes trouble for both the first and second prongs of the commonplace test. The gilet design includes a vest made of a water resistant, weatherproof material while the hood is a grey cotton, sweatpant-material – for lack of a better description. Sure, gilets with hoods are common in the marketplace, but sweatshirt-style hoods on a weather-resistant body are rare. Coincidence? Unlikely.

Prong Three & The Fatal Admission 

Young posed the argument that because there were technical functions to the gilet’s design, they were commonplace. The court, however, did not buy that. Indeed, it stated that this argument had “no basis in law.” The court also rejected Young’s argument that because some parts of the design were insignificant to the article, they should not be considered as being an infringement. To no one’s surprise, the judge resisted that too. 

While all of these arguments were prime-cut hooey (that’s a legal term) in the eyes of the court, the blow that was most fatal to Young’s argument was its own admission that the design for its “Glaisdale” gilet was designed “by reference to” the Superdry “Academy” gilet. This completely destroyed the court’s third prong consideration under the commonplace test. 


Superdry’s Academy Gilet


Animal’s Glaisdal Gilet

The Intellectual Property Enterprise Court judge’s opinion responded to that admission, stating: “DKH’s design influenced H. Young [Animal] to some degree. I think the burden on DKH [Superdry] to show there was copying, somewhere on the scale from negligible to enough for infringement, has been satisfied by that admission.”

At the end of the day, the court was simply unsatisfied with Young’s arguments, finding in favor of Superdry. 

I thought you said we should care? 

We did. And you should. 

Fashion design is an integral part of our community’s culture. Fashion is identity. It is success. It is sweatpants and fur. It islabor and law. It touches so many aspects of our daily lives – what we watch on TV, what appears in print media, on social media – but it’s so strong that it actually dictates our lives. It deserves not only celebration, but also protection for those who pour their hearts and souls into design. Originality is the key to success when it comes to brands and without protection for it, dilution in the fashion industry is imminent. 

Superdry’s victory is a win for fashion designers everywhere. It is a win for everyone in the fashion law community – a glimmer of hope that other areas of fashion law will, one day, see a stance of solidarity with the justice system. We’re talking more than just copyright for design., but rather labor laws and environmental law. Let’s look at this win and get serious about fashion law. 

This is our second post from a series of posts from the 2018 Fashion Blog Competition at Southwestern Law School. This one is by the runner-up, Moria Desmarais.

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