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Alex J.
Alex J., Solicitor
Category: Law
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Experience:  Solicitors 2 years plus PQE
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I am an emerging fashion brand trading for 2.5 years and have

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I am an emerging fashion brand trading for 2.5 years and have recently asked a lady who provides an alterations service for me to cut some patterns for me. One item was adapted from her design which I agreed to pay her an exclusivity fee for. All other items are my design, which I briefed her on. She has now produced the patterns but still wants the exclusivity fee due to her explaination as follows -
Basically, as I have engineered the pattern as an independent designer I technically own the copyright of the pattern. For a fee I can sell you the copyright so you become the legal owner and obtain exclusivity. Fashion copyright lasts for 25 years and doesn’t need to be officially registered with an authority but good documentation (copy of invoice, sign over, copy of pattern etc.) needs to be kept at the head office of the copyright owner in case proof is needed at a later date to take legal action. The finished garment is covered by ‘design rights’ rather than copyright which is a bit looser in description. After paying an agreed fee for the copyright of the pattern we just need a brief note on headed paper stating the transfer of ownership, which we both sign. Then it’s all officialJ.
I dispute this as the garments are my design and my company holds the design rights to them. She doesn't hold any copyright over them or the patterns. Please advise.
Please advise
Submitted: 2 years ago.
Category: Law
Expert:  Alex J. replied 2 years ago.
Hi,
Thank you for your question and welcome.
My name is ***** ***** I will assist you.
Are your designs "Registered Designs" with the Intellectual Property Office?
Is she claiming copyright in the "other items" effectively?
Kind regards
AJ
Customer: replied 2 years ago.
Hi AJ
The designs aren't registered but I believe I have unregistered design rights in fashion. I have already paid her an exclusivity fee for the item that I adapted from her design.
She is asking for the same exclusivity fee for my designs that she has cut a pattern for. She claims that she now owns the copyright for the patterns as she cut the patterns for the designs. This is her explanation to me quoted from an email sent to me-
"Basically, as I have engineered the pattern as an independent designer I technically own the copyright of the pattern. For a fee I can sell you the copyright so you become the legal owner and obtain exclusivity. Fashion copyright lasts for 25 years and doesn’t need to be officially registered with an authority but good documentation (copy of invoice, sign over, copy of pattern etc.) needs to be kept at the head office of the copyright owner in case proof is needed at a later date to take legal action. The finished garment is covered by ‘design rights’ rather than copyright which is a bit looser in description. After paying an agreed fee for the copyright of the pattern we just need a brief note on headed paper stating the transfer of ownership, which we both sign. Then it’s all officialJ." end quote.
Despite her explanation & with my limited IP knowledge I believe I own the design rights. By contracting her to cut a pattern as a service to my business does not assign her copyright of my designs or the pattern to make the garment from. The designs and patterns remain the property of my company.
Please advise
Expert:  Alex J. replied 2 years ago.
Hi,
Thank you.
I believe you are correct - I would note unregistered designs are still protected by copyright. If you look under the Copyright Designs and Patent Act 1988 the first owner of any copyright is the author - for this type of work the author (S.9) is whoever made the arrangements to bring the work together.
This circumstance would fall under "commissioned works"
- First scenario, is you paid hear to use one of her designs but ultimately commissioned her to create a pattern from that design - it would be assumed for you to take the benefit of the service she has provided (at your request) you at the very least have an exclusive, irrevocable licence to use the pattern;
- Second scenario - she is using designs made by you to create patterns at your request. Again this is a commissioned work and it would be implied that in order for you to take the benefit of the service she is providing you would take ownership or at least an irrevocable exclusive license (which is as good as ownership).
https://www.gov.uk/ownership-of-copyright-works - Please see this Government guidance.
The problem with any IP dispute is they come down to a matter of fact - when I say "I believe you are correct" above, it is because what ever I say cannot stop her from bringing a claim, that is entirely her prerogative whether her claim is baseless or not.
You need to focus first on ensuring you take delivery of the patterns you have paid her to create. Then you have to decide whether you want to call her bluff and say:
1. You were the owner of the designs;
2. She was commissioned to provide you with a service and thus no further is due for you to be able to take benefit of that service.
You can then say you will take all action available to you, including injunctive relief, if she attempts to deny or infringe your ownership of the same.
I look forward to hearing from you.
Kind regards
AJ
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