On 21 April 2016, the Intellectual Property Office released guidance (found here) concerning the repeal of section 52 CDPA.
Section 52 CDPA limits the term of copyright protection for industrially exploited artistic designs to 25 years. The section applies where articles that amount to copies of an artistic work are made by an “industrial process” – i.e. where more than 50 copies are made – and marketed for sale. On the expiry of 25 years from when the articles were first marketed, copies of such works could be freely made without infringing copyright.
The purpose of the repeal is to bring the term of protection of such works into line with other artistic works, which are protected for the lifetime of the creator plus 70 years.
Works affected by the repeal are “works of artistic craftsmanship”.
In Lucasfilm v Ainsworth (2012, Supreme Court) the stormtrooper helmet from Star Wars was not considered to be artistic but instead was a functional prop.
It is crucial that the work has both artistic quality and craftsmanship. Artistic quality is to be based on evidence and such artistic quality must be assessed in the light of functional constraints. A work looking attractive is not enough for a work to be considered to be artistic. Although mass-production is not a bar to a work of “artistic craftsmanship”, as stated in the Guidance, it “may cast doubt on whether it is truly one of artistic craftsmanship“.
Designer and fashion items are more likely to be protected for longer under this change.
The repeal was to come into force last week but has now been delayed until 28 July 2016. The key timelines that now flow from the repeal are as follows:
• From 28 July 2016, it will be an infringement to make or import new copies of industrially manufactured artistic works unless they were contracted before 16.30 on 28 October 2015 (being the date on which the IPO’s consultation document was published); the right holder’s permission has been obtained; or a copyright exception applies.
• From 28 January 2017, it will be an infringement to deal with any replicas or unauthorised copies of industrially manufactured artistic works made in reliance on section 52 CDPA (subject to permission from the rights holder to continue their trading or reliance on a copyright exception).
Simple possession of an article after this date will not be a breach of copyright, although the guidance notes that “possession may become infringement acting in the course of business“.
What does this mean for your enforcement strategy?
This change in the law affords better protection to designers of artistic works
Manufacturers and retailers that may be affected should begin to consider whether the articles they produce and deal with are caught by the changes. Where articles that are works of artistic craftsmanship are replicas or unauthorised, rights owners should be able to secure further revenue or prevent exploitation.
How can INCOPRO help?
INCOPRO tracks for this type of infringement across the Internet and can deliver revenue returns to your business.
For more information, please contact Simon Baggs, CEO, INCOPRO.
0203 051 0495