Copyright has never been a particularly effective way to protect three-dimensional, mass-produced items. An upcoming change in copyright law, however, will significantly extend the duration of any copyright protection that may exist. This change is likely to prove a deterrent, particularly for smaller manufacturers, from producing items based on a prior design.
The development of the law of designs in the UK followed a tortuous path for the first 150 years. Parliament concluded that a different form of protection was appropriate where industrially-produced items were concerned (as opposed to the protection for artistic works, through copyright); so, the first Registered Designs Act was passed and an exclusion for mass-produced items became a feature of copyright legislation.
Currently, sections 51-53 Copyright Designs and Patents Act 1988 (CDPA) attempt to maintain this separation, in the following ways:
- with the exceptions of artistic works andtypefaces, it is not an infringement of copyright in a design to make an article according to that design, or to copy an article made to that design (s51);
- copyright for industrially-made products lasts only 25 years (s52), rather than for 70 years after the death of the creator, as is otherwise the case for copyright; and
- copyright in an artistic work is not infringedby doing anything permitted under licence or assignment from the owner of a registered design relating to that work (s53).
How is the position changing?
Reacting to the Court of Justice of the European Union’s (CJEU) 2011 decision in FlosCase C-168/09, Parliament has now repealed s52 with effect from 28 July 2016. In Flos, concerning replicas of the classic Arco lamp, the CJEU reviewed Article 17 of the Designs Directive 98/71, entitled “Relationship to copyright” which provides that:
“A design protected by a design right registered in or in respect of a Member State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was created or fixed in any form. The extent to which, and the conditions under which, such a protection is conferred, including the level of originality required, shall be determined by each Member State.”
The Court held that Member States have no choice. If a work has been registered as a design, and also meets the national criteria for copyright protection, then even once the design registration has lapsed or expired the work will continue to be protected by copyright. This was justified as part of the EU’s progressive attempts to harmonise intellectual property protection, given that copyright itself is not harmonised.
The repeal of s52 CDPA has itself been hotly contested, with the government’s original proposal as to when the repeal would come into effect abandoned after judicial review proceedings were brought by copyright owners. The repeal will now take effect on 28 July 2016, although manufacturers of replica goods have until 28 January 2017 to sell off their remaining stock – or face the consequences, in the form of proceedings for infringement of copyright.
What are the prospects of success for claims based on breach of copyright?
Copyright in the UK has never been generous to three dimensional works which are not wholly artistic in nature. The House of Lords first considered household furniture in 1976 in Hensher v Restawhile and had no reservations in ruling that copyright did not subsist. The works concerned were simply not artistic enough to come within the only relevant category, that of works of artistic craftsmanship. As the Court held: “no doubt many customers bought the furniture because they thought it looked nice as well as being comfortable, but looking nice appears to me to fall considerably short of having artistic appeal“.
Lord Simon and Viscount Dilhorne challenged whether an industrially produced work could properly be called a work of craftsmanship, irrespective of any artistry: “even though [craftsmanship] cannot be confined to handicraft, it at least presupposes special training, skill and knowledge for its production … [it] implies a manifestation of pride in sound workmanship“.
Only one other case has reached the highest court: Lucasfilms v Ainsworth, heard by the Supreme Court in 2012. This concerned works whose craftsmanship was less open to debate – the costumes made for characters in the first Star Wars films. Nevertheless, copyright was held not to subsist. The works neither were sculptures nor displayed artistic craftsmanship, since they had not been made with an intention that they should appeal as a work of art.
One area which illustrates the uncertainties involved is classic furniture designs. The courts agree that where functional objects are concerned, for copyright to subsist the maker must have had the intention that the work be viewed as artistic. Fame as a designer acquired later cannot, therefore, confer copyright on a work which when first made was intended primarily to be sold for use. The House of Lords’ doubts as to the craftsmanship involved in making modern sofas may apply even more strongly when items incorporating electrical components and executable only by industrial fabrication techniques are concerned.
What does this mean for manufacturers?
As Parliament has long-intended, the primary protection afforded to industrially-produced items is through the design rights or registered designs regimes. There is still an overlap with copyright, which may be invoked where those regimes do not afford sufficient protection, particularly with the longer length of copyright protection following the imminent repeal of s52 CDPA. Actions brought for breach of copyright may not be particularly likely to succeed in respect of any but the most artistic, least functional tems, but uncertainty over precisely where the line will be drawn may well be enough to keep many smaller enterprises off the market.