Changes to Copyright Protection of Industrial Designs

Posted in Designs, UK Intellectual Property on by Admin

A recent change to UK legislation, coming into effect this summer, will significantly extend the duration of copyright protection provided for some industrially manufactured designs.

In particular, section 52 of the Copyright, Designs and Patents Act (CDPA) 1988 currently provides that industrially produced ‘artistic works’ (excluding films) only receive copyright protection for a period of 25 years after articles are first marketed. After the copyright has expired, anybody may copy the works in the UK without risk of infringement. Artistic works include graphics works, photographs, sculptures and works of artistic craftsmanship, and industrial production typically covers the manufacture of 50 or more copies of the article in question.

Legislation repealing section 52 was passed in 2013 but will first come into effect on 28 July 2016. Accordingly, the limitation on the copyright term of mass produced articles created on or after 28 July 2016 will no longer apply and such designs will be protected until 70 years after the creator’s death.

In addition, a six-month transition period will run until 28 January 2017. This means that copies made by third parties based on the present legislation must be sold, destroyed or authorised by the copyright holder by this date, otherwise such third parties will become liable for copyright infringement actions.

These changes to the legislation were apparently made in response to a decision of the Court of Justice of the European Union (in Flos SpA v Semeraro Casa e Famiglia SpA, otherwise known as Flos) concerning the lack of copyright protection given to industrial designs in Italy. In Flos, the CJEU ruled that under Article 17 of the Designs Directive, each EU member state must confer copyright protection on a registered design if it meets the requirements under which copyright protection is normally conferred. In addition, the Court ruled that the duration of the copyright must be in accordance with the Copyright Term Directive, which provides that copyright works are protected until 70 years after the author’s death. While only directly applicable to registered designs, the CJEU expressed the opinion that its reasoning may also extend to unregistered designs.

It has been noted that the repeal of section 52 may also be in line with the UK’s obligations under the Berne Convention for the Protection of Literary and Artistic Works, of which Article 2 specifies that works of applied art should receive copyright protection as “literary and artistic works”.

While this change to the legislation may be welcomed by industrial designers, it may raise problems for manufacturers of replica products who must now dispose of or seek authorisation for products affected by the change.

Nevertheless, the practical effects should be limited by the fact that section 51 of the CDPA remains in force. Section 51 ensures that copying the design of an article is not an infringement of copyright in any design document or model recording the design of that article in the UK unless it can be shown that the design is for an artistic work or typeface. The definition of artistic work in the UK is relatively narrow and many industrially produced items (for example, parts for cars or items of furniture) may effectively be excluded from protection by section 51. However, some articles whose copyright is restricted by section 51 may be protected or protectable by UK registered and/or unregistered design rights.

Clients who think they may be affected by these changes to the legislation should contact one of our attorneys for further advice.

Michael Ford