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.
The UK Intellectual Property Office (IPO) has issued guidance (Designs Practice Notice 1/16) relating to the protection conferred by Registered Designs in the UK in light of a much-publicised recent decision of the UK Supreme Court (in PMS International Limited v Magmatic Limited, otherwise known as the Trunki decision).
The Trunki decision emphasised, among other points, that the scope of protection afforded to a Registered Design is determined by the representations used in the original application. In particular, a wide range of means of representation (pencil drawings, black and white line drawings, photographs or computer-generated graphic images, e.g. images generated by Computer Assisted Design (CAD) software) are open to applicants, who may choose whichever format they consider the most accurate means for representing the features of the design for which protection is sought. The particular choice of representation is, therefore, crucially important.
In particular, the Supreme Court has reinforced the teaching of existing case law (such as Procter & Gamble Co v Reckitt Benckiser (UK) Ltd) that certain representation formats (such as black and white line drawings) are intended to protect the shape of a product, while alternative formats are intended to protect both shape and other features (such as colour, surface decoration or texture). It is therefore still advisable to submit black and white line drawings when seeking the widest scope of protection for the shape of a product. However, the Trunki decision has muddied the waters somewhat by also suggesting that the minimalist representation of a design (for example, a lack of surface decoration or ornamentation shown in a line drawing) can itself be considered a positive feature of that design. The implication is that if a registered design is interpreted as being ‘minimalist’, an intensely decorated product having the same shape may not be found to infringe the registered design. Unfortunately, the Courts have not provided guidance as to when a simple drawing will be interpreted as an attempt to protect only the shape of a product and when it will be interpreted as an attempt to protect both the shape and a minimalist design.
Nevertheless, the Supreme Court decision has clarified that the scope of protection afforded to line drawings and that afforded to greyscale representations (such as CAD illustrations), of the same product, can be different. In particular, the tonal variation of greyscale images or any other apparently incidental features (such as shading or light reflections) may be interpreted as claiming more than just the shape of the product. For example, in the Trunki case, the tonal variation was interpreted to claim use of two contrasting colours, one represented as grey and one represented as black. It is therefore advisable to avoid use of such computer generated images when protection of only the shape of a product is sought.
In general, the advice is clear that applicants should carefully consider which representations, and which formats, are most appropriate when illustrating a registered design application. If protection of shape only is sought, it is still advisable to file simple black and white line drawings with no shading or tonal contrast. In addition, it is possible to include written limitations or disclaimers in UK registered design applications. Judicious use of disclaimers (such as “protection is sought for the shape and contours alone”) can therefore also be advisable.
The UK IPO also permits ‘multiple’ registered design applications in respect of any number of individual designs (and there are significant cost benefits in submitting a ‘multiple’ application rather than several ‘single’ applications). While it is not possible to use a combination of representation formats in the context of one single design, different formats may be used for each design in a ‘multiple’ application. Accordingly, where possible, it may be advisable to file a ‘multiple’ application containing several designs for each product, each design illustrating the product using a different format. This may lead to the widest possible scope of protection and would also provide the applicant with a choice as to which designs to enforce if necessary. Clients should contact any of our attorneys for specific advice regarding the design protection of particular products.