This article was first published by Global Legal Post and the full article can be found online here.

Mark Lomas of law firm Ashfords considers the impacts on business of repealing section 52 of the Copyright, Designs and Patents Act 1988 ("CDPA").

The UK has recently repealed section 52 of the CDPA, which previously limited the term of copyright protection for industrially exploited artistic works to 25 years. Industrial exploitation is when at least 50 copies are made by an industrial process and commercially marketed.

The repeal of section 52 in late July 2016 extended copyright protection for such works. It now lasts for the life of the creator plus 70 years. The effect of the repeal is retrospective. So, for those industrially exploited artistic works whose copyright protection had expired under the 25 year rule, the copyright may have now been revived.

Manufacturers, importers and dealers beware

Revived copyright protection could have a major impact on any business acting in reliance of the copyright having ended. Manufacturers, importers, dealers and retailers of what they thought were lawfully copied works now have to be very careful. The counterpoint for rights owners and some master licensees is that there may now be significant value in the intellectual property of works that have been revived.

Works affected

‘Artistic works’ include ‘works of artistic craftsmanship.’ This is the most likely sub-category to be affected by the repeal. 3D works are more likely to be industrially manufactured than 2D works. Although there is no statutory definition for such works, the UK's Intellectual Property Office ("IPO") has published a non-binding guidance on the changes and on the limited case law. It is predictable that replica furniture and limited run designer products could be particularly affected. There are other categories of artistic work (but not all are industrially exploited). In addition to the usual graphic works (i.e. drawings, photographs etc.), a sculpture and a work of architecture are classified as artistic works. Every case will need close scrutiny as to what type of work it is and whether it has been industrially manufactured. There are also risks to be managed of publishing in 2D an image of a 3D affected work.

The IPO guidance is clear that in order to qualify as a ‘work of artistic craftsmanship’ there should be both artistic quality and craftsmanship. The artistic aspect needs an artistic or aesthetic quality plus some intention that it be a work of art. The craftsmanship aspect presumes special training, skill and/or knowledge in execution. In Hensher Ltd v Restawile Upholstery Ltd a prototype of a mass-produced sofa failed to meet the requirements for artistic craftsmanship. Although mass-production is not itself a bar to artistic craftsmanship, as noted in the guidance, it ‘may cast doubt on whether it is truly one of artistic craftsmanship.’ If an artistic expression is constrained by functional considerations, this may have a bearing on whether it can be described as a work of artistic craftsmanship. In Lucasfilm v Ainsworth the iconic Star Wars Stormtrooper helmet was not considered to be artistic but instead was deemed to be a functional prop, which demonstrates that artistic quality should be assessed in the light of its functional constraints.

Transitional provisions

Whilst section 52 was repealed on 28 July 2016, the government has introduced transitional provisions to allow affected businesses, organisations and individuals to adjust to the new legislative framework. These have been considerably foreshortened following an initial consultation, then a judicial review and a final consultation. Depending on the nature of the activity and whether a contract was in place, for what would be otherwise infringing activity, the dates impacting whether there is a saving period vary (so specialist advice is needed on this aspect). Key dates include: (a) publication of the consultation (16.30 UK time, 28 October 2015), (b) the date of the repeal (28 July 2016), and (c) the end of the transitional period (28 January 2017). Also, one has to check that there is no other exception or defence to an infringement claim in each case.

Implications

Those who have lawfully copied artistic works prior to the repeal of section 52 should consider whether they need to adjust to remain compliant. For those in the replica business, whether as a manufacturer, importer, dealer or retailer, this will be important. For example, businesses may need to consider whether new licences need to be negotiated and their advisors should look at the boilerplate provisions and the duration clause in any existing contract or licence. In serious cases, changes may be needed to business models or product ranges. Where copies are made in reliance of section 52, businesses will need to ensure that they have taken suitable steps by the deadlines outlined above and copyright owners will need to monitor their copyright protected works in the future to ensure they are not being infringed.