“The Same, But Different”: Taking the idea and not infringing copyright

“The Same, But Different”: Taking the idea and not infringing copyright

Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCA 447

Elwood Clothing Pty Ltd (“Elwood”) took action against Cotton On Clothing Pty Ltd (“Cotton On”) alleging that Cotton On had infringed copyright in two computer design drawings for an Elwood New Deal T-shirt design and an Elwood Vintage Sport swing tag design (the “Design Drawings”).

Cotton On employees conceded during cross-examination that they were directed to create products with the same look and feel as the Elwood Design Drawings, yet different. Although the Elwood Design Drawings were considered to be original artistic works, the Court held that Cotton On had not copied a substantial part of the Design Drawings but instead had taken the idea/concept underlying the Design Drawings. Cotton On’s cross-claim that Elwood had made groundless threats of infringement was dismissed. Elwood have appealed the decision.


Elwood designs’, manufactures and sells clothing directed to the youth market. The first drawing the subject of the dispute, depicted the New Deal T-shirt design which Elwood applied to a men’s T-shirt (the “New Deal T-shirt design”). The second drawing depicted a design for swing tags (the “Vintage Sport swing tag design”) (the “Design Drawings”).

Elwood claimed that the Design Drawings were “artistic works”, specifically “drawings” under the Copyright Act 1968 (Cth) (“the Copyright Act”). Elwood further claimed that Cotton On had infringed Elwood’s copyright in the Design Drawings by reproducing a substantial part of those drawings in three of Cotton On’s T-shirt designs (the Tijuana, Kingston and Moscow shirts) and on a Vintage Tee swing tag.

Representations of the New Deal T-shirt design (as applied) and an example of one of the Cotton On T-shirt designs are shown below. Representations of the Elwood Vintage Sport swing tag design (as applied) and Cotton On’s Vintage Tee swing tag design are also shown below.

Cotton On v Elwood the t-shirts in question - Davies Collison Cave copyright lawyers

In its defence, Cotton On claimed that copyright did not subsist in Elwood’s Design Drawings and even if it did, that Cotton On had not infringed the copyright as it had not copied a substantial part of the Design Drawings. Cotton On also cross-claimed that the cease and desist letters sent to it by Elwood constituted groundless threats of infringement within the meaning of the Copyright Act.

There were three substantive legal questions to be determined by the Court:

  1. are arrangements of principally literary materials such as the Elwood Design Drawings capable of being “artistic works” under the Copyright Act?;
  2. if yes to 1, were the Design Drawings “original artistic works” and if so, what was the scope of protection for these works?; and
  3. if the Design drawings were original artistic works, had Cotton On reproduced a substantial part of the Elwood Design Drawings?

As a preliminary point, the Court noted that the primary difference between the Cotton On products and the Elwood Design Drawings was the content of the lettering. Based on the evidence led, the Court also observed that Cotton On’s “mantra, if not its business plan” was to create “the same, but different”. It was conceded by Cotton On employees that they were directed to create products, using the Elwood Design drawings inter alia for inspiration, with the same look and feel, yet different.


(a) The Elwood Design Drawings qualified for protection as “artistic works”

Under the Copyright Act “artistic work” means, among other things, “… a drawing … whether the work is of artistic quality or not”. A “drawing” is defined to include “a diagram, map, chart or plan”. However, the Copyright Act does not contain any further definition of “drawing”.

The Court considered that a “drawing” is a two dimensional work in which shapes and images are depicted by lines, and further accepted Justice Heerey’s view expressed in Woodtree Pty Ltd v Zheng (2007) 74 IPR 484 that the “essence of a drawing remains the concept of a representation of some pictorial line.”

The Elwood Design Drawings were arrangements of text with graphical elements in a particular pattern and not a representation of an object by a pictorial line.

The Court did not accept Cotton On’s assertion that Woodtree laid down a rule that a work comprising an arrangement of elements which are individually unprotectable cannot, in turn, be protected. The Court noted that whether a work will be recognised as an artistic work such as a drawing is highly fact specific. According to the Court the important principle in deciding whether a work is a drawing is whether the work can be said to have a visual (i.e. to be understood as a design) rather than a semiotic function (i.e. to be read as text communicating a message to the reader).

The Court held that the object of the Design Drawings was to convey a visual look and feel and they were not to be read, did not tell a story or give instructions. Rather, consumers would purchase the Elwood items because the selection and arrangement of the various elements (text, colour, shape and so on) were chosen to form an aesthetically pleasing visual “look and feel”.

The Design Drawings were therefore held to be “artistic works” and specifically “drawings” within the meaning of the Copyright Act.

(b) The Design Drawings were original artistic works

The Design Drawings were held to be sufficiently original to qualify for copyright protection. Elwood had applied some minimum level of skill and effort to make the Design Drawings and the Design Drawings originated from Elwood and had not been copied. In making this assessment, the Court took into account that Elwood had expended several weeks and significant effort in creating the Design Drawings.

(c) Copyright protects the expression of the idea and not the idea itself

Copyright protects the form in which an idea is expressed and not the underlying idea or concept itself. To take only the idea underlying a copyright work will not infringe copyright. While this principle is simply stated, it is not always easy to apply.

The Court considered that the idea underlying the New Deal T-Shirt design was the central logo surrounded by a V-shaped pattern of arched text, with numbers at the shoulder level. By defining the idea underlying the New Deal T-Shirt design as such, Elwood could not claim a monopoly overall designs with this general layout.

The underlying concept of the Vintage Sport swing tag design was considered to be a stylised logo and text running both horizontally and vertically. Similarly, copying this general layout would not infringe Elwood’s copyright but would amount to the taking of the unprotectible idea.

The Court determined that the monopolies claimed by Elwood must be identified more precisely to cover only a particular form of expression of the V-shaped pattern of arched text around a central logo and a particular swing tag design. The form of expression given to the underlying idea of the New Deal design was the selection and arrangement of the various design elements giving expression to the underlying idea, namely, the font and size of the text, the degree of the arc in the text, the relationship between the sizes of the elements, the precise size of the central logo and the ordering of the elements.

(d) A substantial part was not taken

Cotton On contended that there were only limited similarities between the Design drawings and the Cotton On T-shirts (referring specifically to the different words used, the different numbers, different central devices) and the Cotton On swing tag (referring specifically to the different words, the different fonts, colours and positioning).

The Court held that in the case of the New Deal design, the one integer which Cotton On had admittedly taken was the shape and form of the graphic. It was accepted that the shape and form of the graphic was an “essential or material” idea and underpinned the creation of the copyright work. However, the Court concluded that what was taken was the idea and not a substantial part of the work. In other words, Cotton On took and adapted the idea of the V shaped graphic and the placement of the text and the symbols within that V shaped graphic. It did not copy the text or the symbols on the New Deal print. Cotton On Tshirts did not have the same visual impression as the New Deal print. The Court also held that Cotton On had taken the form, shape and placement of the graphics on the Vintage Sport design and again this was considered to be the underlying concept of the work and not a substantial part of the form in which that idea was expressed.

(e) Elwood did not make groundless threats

The Court dismissed Cotton On’s CrossClaim that Elwood had made groundless threats to commence infringement proceedings. There had only been a short time between the threats being made and proceedings being commenced (one day in relation to the second cease and desist letter) and there was no evidence of any damage that flowed to Cotton On in the intervening time. The Court also cited authority that once proceedings are commenced, the threat to commence those proceedings has ceased.

Implications of the decision

  1. The case reiterates a fundamental principle of copyright law – copyright protects the form in which an idea is expressed, but not the idea underlying the copyright work.
  2. Whilst it is permissible to use the ideas of others to create your own copyright works or designs it will often be difficult to discern that what you are “borrowing” is only the idea underlying the work and not indeed a substantial part of the work.

Elwood was appealed the decision and the matter is heard by the Full Federal Court on 18 August, 2008. We await the full Federal Court’s decision.