Rosie Clark

December 2013... The celebrated biker jean. Fashion conscious readers will know what I am talking about. For those that missed this 90’s fashion trend, “biker jeans” were designed by Dutch fashion house G-Star to combine fashion with the functionality of motocross trousers. G-Star named the jeans “Elwood”, paying homage to famous motorcycle rider, Mike Hailwood. The distinctive design features of the Elwood jean recently came under the scrutiny of the High Court when G-Star issued legal proceedings alleging that Jeanswest had infringed its copyright by copying the Elwood design.

The Elwood jean is said to have five distinctive features; oval shaped knee pads, horizontal stitching running across the back of each knee; the straight line of double stitching coming from the hip to the crotch diagonally across the front of the thigh of each leg; circle shaped stitching on the back of the jeans (the saddle pad); and heel guards at the rear of each leg.

In 2010 Jeanswest NZ imported a style of jeans named “Dean Biker Slim Straight”. The Dean Biker jean was remarkably similar to the Elwood Jean. It bore four of the five distinctive features, the only feature missing was the saddle pad. G-Star said that the coincidence of features, coupled with the similarity of their arrangement amounted to copyright infringement of the original Elwood design.

The Court had to address a number of issues, too many to cover in this column. However, the key questions were: did copyright exist in the Elwood designs, did G-Star own the copyright in the designs and if so, did Jeanswest’s Dean Biker jean infringe G-Star’s copyright?

Copyright exists in original works, such as literary works, musical works, films and artistic works including designs. The underlying design of the Elwood jean, including its five distinctive features was the artistic work in issue. A French designer, Pierre Morisset, created the original Elwood design. Mr Morisset gave evidence that the inspiration for the Elwood design came to him while in the South of France where he saw a motorcyclist whose clothes were soaked by rain. Justice Heath accepted that copyright existed in the underlying design of the Elwood jean.

At the time the Elwood jean was designed, Mr Morisset’s company was exclusively contracted by G-Star to provide freelance design services. The New Zealand Copyright Act provides that the author is the first owner of the copyright in the work. However, an exception applies to employers and those who commission the making of qualifying works. In this case, G-Star had commissioned Mr Morisset to produce the designs and therefore G-Star was the owner of the copyright.

Justice Heath then turned to consider whether Jeanswest had used G-Star’s Elwood design in its design process for the Dean Biker jean.

The Jeanswest employee who prepared the instructions for Dean Biker jean to be manufactured in China gave evidence in Court. A sample had been provided to the manufacturer together with measurement points based on a prior “Jeanswear” branded product. Notably, the instructions included a reference to removing the saddle which was the key feature of the Elwood jean which was not replicated on Jeanswest’s Dean Biker jean. Over the course of a few months the Jeanswest employee gave further instructions to the manufacturer to alter elements of the Jeanswest product to bring it back to the original sample including the thread and wash colour. Justice Heath was satisfied on the balance of probabilities that the Elwood jean was used as the original sample for the manufacturing of the Dean Biker jean.

Infringement occurs when an unauthorised copy is made and a substantial part of the copyright work has been copied. Justice Heath found that the similarity in appearance of the drawings of the original Elwood jean and the Dean Biker jean was significant and as a consequence, Jeanswest had infringed G-Star’s copyright. The Court issued an injunction restraining Jeanswest NZ from selling the Dean Biker jean in New Zealand.

To put this case in context, Jeanswest imported just 63 pairs of Dean Biker jeans into New Zealand. The numbers at stake were not significant and ultimately, the financial outcome of this case was also not significant. G-Star was awarded damages of just $325 and legal costs.

Despite the financial outcome, by bringing this dispute to Court G-Star has proved a point as it has successfully protected its rights in its signature design. Justice Heath’s decision should therefore also act as a deterrent to other retailers who might consider reproducing iconic designs for their own purposes.