The copyright term for most works is the life of the creator plus 70 years following their death. However, section 52 Copyright, Designs and Patents Act 1988 (“CDPA 1988”) has provided for a reduced term in the case of artistic works which have been ‘made by an industrial process’ (i.e. where more than 50 copies have been made to the design) and marketed, in the UK or elsewhere.
In such circumstances, the normal period of copyright protection is reduced to just 25 years from the date when products to the design were first marketed. The rationale for the reduced term is that the period of protection should be the same as that available for registered designs.
Effect of the repeal
Initially raised in the European Court in Flos v Semeraro (Case C-169/08), and then the subject of a judicial review challenge, the UK Government has concluded that the provisions of s.52 run contrary to EU copyright law, which demands a minimum period of protection for copyright works. It was therefore tasked with harmonising UK with European copyright law, and ultimately decided to repeal s.52.
Most industrial designs are not protected by copyright. It is only where the creation of the design has involved a high degree of artistic merit and skill, will copyright be available. In respect of such artistic designs, the repeal of s.52 will have an immediate impact on those businesses that have taken advantage of the reduced term under s.52, by reproducing or distributing the designs after the expiry of the 25 year period. Such sectors would no doubt cover the likes of the furniture manufacture where companies have made and sold products manufactured to the design of a third party created more than 25 years ago.
As stated above ‘artistic works’ where more than 50 copies have been made and marketed will be affected by the repeal. The definition of ‘artistic work’ (contained in s.4 CDPA 1988) includes graphic works, photographs, sculptures, collages, works of architecture being a building or a model for a building, and works of artistic craftsmanship.
The Government guidance suggests that works of ‘artistic craftsmanship’ are most likely to be affected. Whilst there is no statutory definition of ‘artistic craftsmanship’ in CDPA 1988, the guidance offers some indication as to what constitutes ‘artistic craftsmanship,’ and suggests, for example, that for a work to have ‘artistic craftsmanship’:
- it is insufficient that a work (such as a piece of furniture) look attractive to qualify as a work of artistic craftsmanship;
- “craftsmanship” presupposes special training, skill and knowledge for production;
- “artistic” means it will have a real artistic or aesthetic quality and must be a work of art or fine art.
Timing of the repeal
Although the repeal of s.52 was originally going to allow for a five-year transitional period, coming into effect in or around April 2020, the transitional period has now been significantly reduced to just nine months. This means the repeal of s.52 will now occur on 28 July 2016(the “Transitional Period”).
However, there will be a further six month ‘depletion’ period, ending on 28 January 2017 (as explained below) to deal with the rundown of affected stock (the “Depletion Period”).
Effect of the transitional period
The repeal will not have retroactive effect. Businesses dealing in the manufacturing and sale of copied industrially made works which have been marketed for more than 25 years up to 28 July 2016 (i.e. before the repeal comes into effect) will not find that those acts can form the basis of an infringement action.
However, from 29 July 2016, these same works will resume copyright protection for the remainder of the creator’s lifetime, and for 70 years after their death. Therefore, in respect of these same designs, these acts of copying, manufacturing and selling could form the basis for an infringement of copyright claim.
The Government guidance provides the following example:
‘Person “W” created an artistic work in 1980. In the same year, “W” manufactured 51 copies and sold them. “W” died in 2010. Under section 52, this work would only be protected by copyright until 2005. Following the change in law this work would be protected until 2080.’
As of 29 July 2016, permission will be necessary to replicate such artistic works, unless an exception exists under CDPA 1988, or it otherwise falls within the treatment of such works in the Depletion Period.
Effect of the depletion period
From 29 July 2016 until 28 January 2017, businesses may also benefit from a six month ‘depletion’ period following the repeal of s.52. “Depletion” contemplates the stock must be sold or destroyed.
However, there are specific rules as to who can benefit from the depletion period:
- parties who contracted to have copies created before 28 October 2015 (when the initial consultation took place) will have until 28 January 2017 to deplete their stock;
- parties who contracted to have copies created after 28 October 2015 but before 28 July 2016 (the repeal date) will have to deplete their stock by 28 July 2016;
- parties cannot contract to have works copied after 28 July 2016.
There are also some limited exceptions to the above, whereby stock will not need to be fully depleted if:
- it is being kept for strictly non-business purposes (e.g. for private use);
- permission of the copyright holder to replicate the artistic work has been sought and granted; or
- other exceptions under the CDPA 1988 apply, which allow for use of the copyright work.