Franchisor, Gary Fearns (trading as Auto-Paint International) was only partially successful in his various intellectual property claims against paint supplier Anglo-Dutch Paint and Chemical Company Ltd. The judgment has highlighted a trap for unwary copyright owners when commercially exploiting their designs.

Background

Gary Fearns sells paint for spraying cars via franchisees under the trade mark Auto-Paint. Anglo-Dutch admitted selling paint direct to Auto-Paint’s franchisees under the Auto-Paint brand. Gary Fearns claim was based on trade mark infringement, passing off, malicious falsehood, infringement of copyright and breach of contract. However the most interesting legal issue was whether the logo appearing on the paint tins enjoyed full or limited (i.e. 25 years for specified uses) copyright protection. Did section 52 of the Copyright Designs and Patents Act 1988 as applied by Schedule 1, paragraph 20 of the transitional provisions operate so as to limit the usual period of protection.

This section applies where "an artistic work has been exploited, by or with the licence of the copyright owner, by-

(a) making by an industrial process articles falling to be treated for the purposes of this Part as copies of the work, and

(b) marketing such articles, in the United Kingdom or elsewhere.

(2) After the end of the period of 25 years from the end of the calendar year in which such articles are first marketed, the work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work…"

It also provides that the Secretary of State may by order make provision—

"(a) as to the circumstances in which an article, or any description of article, is to be regarded for the purposes of this section as made by an industrial process;

(b) excluding from the operation of this section such articles of a primarily literary or artistic character as he thinks fit.

(6) In this section—…references to the marketing of an article are to its being sold or let for hire or offered or exposed for sale or hire."

The Secretary of State has by order specified exceptions to section 52. The Copyright (Industrial Process and Excluded Articles) (No.2) Order 1989 importantly "printed matter primarily of a literary or artistic character including book jackets, calendars, certificates, coupons, dress-making patterns, greeting cards, labels, leaflets, maps, plans, playing cards, postcards, stamps, trade advertisements, trade forms and cards, transfer and similar articles". There was no dispute that the selling of tins with Auto-Paint’s consent from about 1988 bearing the printed labels satisfied the industrial process and marketing requirements. These were initially stuck on labels with lithiographed tins coming later. There was also no dispute that the label in itself constituted printed matter. The dispute was whether the limitation on the copyright term should apply because what was marketed was a tin with printed matter/ the label affixed to it, not printed matter by itself. In other words, were "the articles" referred to in section 52 "printed matter primarily of a literately or artistic character".

Although the judge was presented with authority as to the meaning of the word "label" such as RA and A Bailey v Boccaccio and Pacific Wine Co Pty Ltd, he was not able to discern any prior guidance as to the primary question which was "whether the article to which the label was applied remained printed matter of a primarily literary or artistic character." So his was the first judicial decision on this question.

Outcome
In the judge’s view section 52 and its predecessor, section 10 of the Copyright Act 1956, are concerned with minimizing the overlap of copyright and registered design protection. "Printed matter of a primarily literary or artistic character" enjoys protection under the law of copyright. Such matter was excluded from registered design protection by the Registered Designs Rules 1995 which amended the Register Designs Act. Difficulties arise as much surface decoration on many articles is applied by printing. A printed artistic design on the surface of a tea pot should be eligible for registered protection and should not therefore have also obtained the automatic protection of copyright. Historically therefore if one gave the construction of "printed matter of a primarily literary or artistic character" too wide a construction this would correspondingly have reduced the chances of obtaining a registered design for such items as the example printed teapot. Accordingly the judge held that section 52 applied and so Auto Paint copyright infringement claim failed.

Comment

The key danger here is the narrow construction of the words "printed matter primarily of an artistic character". The judge noted that such matter enjoys "protection under the law of copyright, and [its] exclusion from design protection is presumably on the basis that additional protection is not necessary". Although this was the legal position when the Auto-Paint labels were created it is no longer, so the judge’s use of the present tense is somewhat misleading.

Since the 1949 Act was harmonized by the EU Designs Directive there is no such exclusion from UK registered design protection and there is now far greater potential overlap between these two rights. For example a greetings card company can now register one of its designs and rely upon the copyright in it for the full period and both may be infringed by a counterfeit card. However if it also licensed the use of its design on a label for a paint tin or a teapot then no commercial article (other than excluded articles) which incorporated a copy of it would infringe the copyright if 25 years had elapsed since it was so exploited. Note registered design protection also only lasts 25 years.

It therefore appears that section 52 has a broad scope and is a trap for the unwary. This highlights the need to take care with merchandising and licensing activities. The risk is that if you license the use of your artistic work on anything other than the items that are listed as excluded your copyright protection is severely restricted.