Laying down the law
Intellectual property lawyer Gary Daniel with Blake, Cassels & Graydon LLP in Toronto says the law doesn’t classify copying a design as counterfeit, but rather infringing. “Counterfeit is where somebody is both slavishly copying something and trying to mislead the consumer into believing the product comes from the original source.”
He acknowledges weighing the costs of taking legal action is a definite concern, but adds having a lawyer send a demand letter is sometimes enough to get people to stop what they’re doing or risk an expensive lawsuit.
Still, he says in a one-off or custom-design situation where there is copyright infringement, taking legal action can benefit the designer to some extent.
“Sometimes it’s worth [suing] to send a message to the community that you will enforce your copyright,” Daniel says. “The amount you spend may be greater than the amount that is at risk. Also, although you will never know how much it saves you by someone deciding to not copy your design, I think it’s important to remember that you do have copyright in your design and you want to be known as a person who monitors the marketplace and will take appropriate action. I think if you take a long-term view, it is potentially an effective strategy.”
JVC executive director Phyllis Richard says few complaints have been made to the organization, and points to the fact people have to defend their own intellectual property rights as a possible explanation.”¨ If a complaint were laid, Richard says JVC would treat it as any other and follow up with the designer allegedly copying another’s work.
“We would ask them for an explanation, but we cannot enforce the law. Like in consumer complaints, sometimes we get responses and sometimes we don’t, but we would certainly [look into it].”
Richard says that although JVC’s code of ethics doesn’t specifically mention copyright infringement, it does state members “shall be cognizant of and conduct themselves according to the laws of Canada and any other country in which they do business.” With the apparent pervasiveness of the problem, however, she notes perhaps greater attention ought to be drawn to it.
“It would be worth exploring how to make copyright infringement stand out more so that industry members recognize that copying somebody else’s work is against JVC’s code of ethics,” she said.
Although the prevalent attitude is still one of acceptance, Canadian designer Hera Arkarakas says she takes steps to minimize the damage. In addition to trademarking her logo, Arkarakas says her first line of defence is to create an entire collection, rather than simply a few pieces. Branding is also critical. The combination, she says, brings prestige to a line and creates a ‘designer philosophy’ that retailers can appreciate.
“You’re always going to have someone who is making something similar to what you’re doing, but if a prominent retailer wants to carry a brand or a designer’s look, you’re hoping they’re going to go with you because you have a whole collection as opposed to one piece knocked off here and there,” Arkarakas says.
The other part of the equation is ensuring quality, which in the case of most knock-offs, is quite low. Pieces are also usually lighter to keep prices down.
“A retailer might be able to get one of my rings or necklaces from a Joe Schmo manufacturer that’s knocked it off, but I protect myself with a whole collection with our standard of quality and attention to detail,” she says. “It might look like mine, but take a good look at it.”
