April 29, 2016

On 21 April 2016, the Intellectual Property Office released guidance (found here) concerning the repeal of section 52 of the Copyright, Designs and Patents Act 1988.

Background

Section 52 CDPA limits the term of copyright protection for industrially exploited artistic designs to 25 years. The section applies where articles that amount to copies of an artistic work are made by an “industrial process” – i.e. where more than 50 copies are made – and marketed for sale. On the expiry of 25 years from the end of the year in which the articles were first marketed, copies of such works can be freely made without infringing copyright.

The purpose of the repeal is to bring the term of protection of such works into line with other artistic works, which are protected for the lifetime of the creator plus 70 years. As a result, some artistic works which had fallen out of copyright will resume their protection for the remainder of the lifetime plus 70 year term from the point at which the old 25 year term expired.

The repeal was mooted by Government following the CJEU decision in Flos v Semeraro (commentary here), amid concerns that section 52 conflicts with the Term Directive (2006/116/EC). The initial consultation took place in 2014, but the Commencement Order was revoked following a judicial review challenge. A further consultation took place in October 2015.

Works affected

Works most likely to be affected by the repeal are “works of artistic craftsmanship”.

There is no statutory definition of such a work. As noted in the guidance, without a formal definition, it is for the courts to determine what constitutes a work of artistic craftsmanship.

Whilst there is only limited case law on this subject (and hence a degree of uncertainty as to how the term is to be applied), there are two notable cases. The first is Hensher Ltd v Restawile (1975, House of Lords) in which a prototype of a mass-produced sofa failed to meet the requirements for artistic craftsmanship. The Law Lords each gave different reasons for reaching this conclusion. In Lucasfilm v Ainsworth (2012, Supreme Court) the Star Wars stormtrooper helmet was not considered to be artistic but instead was a functional prop.

What is clear is that the work must have both elements of “artistic quality” and also be made with “craftsmanship”. Artistic quality is to be based on evidence and must be assessed in the light of functional constraints. The fact that a work may look attractive is not enough for a work to be considered to be artistic. Although mass-production is not a bar to a work being categorised as one of artistic craftsmanship, as stated in the guidance, it “may cast doubt on whether it is truly one of artistic craftsmanship“.

Timing

The repeal was to come into force last week but has now been delayed until 28 July 2016. The key timelines that now flow from the repeal are as follows:

• From 28 July 2016, it will be an infringement to make or import new copies of industrially manufactured artistic works unless they were contracted before 16.30 on 28 October 2015 (being the date on which the IPO’s consultation document was published); the rights holder’s permission has been obtained; or a copyright exception applies.
• From 28 January 2017, it will be an infringement to deal with any replicas or unauthorised copies of industrially manufactured artistic works made in reliance on section 52 CDPA (subject to permission from the rights holder to continue their trading or reliance on a copyright exception).

Simple possession of an article after this date will not be a breach of copyright, although the guidance notes that “possession may become an infringement if done so while acting in the course of business“.

What does this mean for your enforcement strategy?

This change in the law affords better protection to designers of artistic works that fell within the scope of section 52 CDPA. However, in reality the effect of the repeal may not be as wide ranging as some commentators have suggested given the narrow category of works that meet the requirement of artistic craftsmanship. By way of example, it is not necessarily the case that all “iconic” designs will receive the enhanced protection.

Manufacturers and retailers that may be affected should begin to consider whether the articles they produce and deal with are caught by the changes. Where articles are replicas or unauthorised copies made in reliance of section 52 CDPA, businesses will need to ensure that they have taken appropriate steps by the stated timelines.

For more information, please contact us.