*Reminder: section 52 CDPA repeal - stock depletion deadline imminent - 28 January 2017*
We published back in April 2016 (click here) about the transitional provisions in relation to the repeal of section 52 of the Copyright Designs and Patents Act 1988 (CDPA) and it is now time to remind you again that following the repeal, which came into force 28 July 2016, all existing stock (produced or acquired under a contract entered into before 28 October 2015) must be depleted (sold or destroyed) by 28 January 2017.
As a quick re-cap, copyright protects original literary, dramatic and artistic works. Section 52 applied to artistic copyright works that had been industrially exploited, i.e. more than 50 copies made, and limited their protection to 25 years, so businesses were free to copy industrially manufactured artistic works at the end of the 25 year period without infringing. Post-repeal however, any artistic work, whether 2D or 3D, which qualifies for protection, will benefit from the full term of copyright protection of the life of the creator plus 70 years and not just the limited 25 years after first marketing. Artistic works that had been industrially exploited but whose 25 year term of copyright had expired under section 52, will resume the remainder of the complete lifetime plus a 70 year term at the point at which the old 25 year term had expired. However, the law does not affect acts done in relation to the work in the past.
From 28 January 2017, it will not be possible to deal with any replicas or unauthorised copies of industrially manufactured artistic works made in reliance on the repealed section 52. By this date all articles must be depleted (sold or destroyed), have permission/a licence from the copyright owner or rely on an exception. After this date, simple possession of an article, such as having a copyright-protected table in your house, will not be in breach of copyright, although it will be if acting in the course of business.
Artistic works
The definition of artistic works is set out in section 4 of the CDPA. An artistic work is:
- a graphic work, photograph, sculpture or collage, irrespective or artistic quality;
- a work of architecture being a building or a model for a building; or
- a work of artistic craftsmanship.
It is the "works of artistic craftsmanship" that are most likely to be affected by the repeal. Rather unhelpfully, however, there is no statutory definition of a "work of artistic craftsmanship". It is therefore up to the UK courts to determine what should be classified as a copyright-protected work of artistic craftsmanship, but there have been few cases on this subject.
The UK Intellectual Property Office (IPO) has set out a useful list of the limited case law on the issue of artistic craftsmanship in its Guidance for affected individuals, organisations and businesses, although these cases were all very fact-specific. Examples from case law include:
- a lady's dress which did not constitute a work of artistic craftsmanship;
- a baby's cape which did not constitute a work of artistic craftsmanship because its purpose was to protect the baby and was not a work of art;and
- a patchwork bedspread which did not display the necessary level of creativity to be a work of artistic craftsmanship.
Some commentators have also suggested that the more constrained the designer is by functional considerations, the less likely the work will be to qualify as a work of artistic craftsmanship. In principle, a work designed to be mass-produced (rather than a one-off or limited run) can be a work of artistic craftsmanship, although specifically designing for the purpose of mass-producing may indicate that it is not a genuine work of artistic craftsmanship.
Even though limited, the UK case law has provided us with various criteria to use as a basis to determine whether a work should be considered a work of artistic craftsmanship:
- It is not enough for a work of art, e.g. a chair, to look attractive to qualify as a work of artistic craftsmanship.
- A work of artistic craftsmanship requires artistic quality and craftsmanship. The latter presupposes special training, skill and knowledge. Users of artistic works have classified silversmiths, potters, woodworkers and hand-embroiders as craftsmen. Artistic means it should have a real artistic or aesthetic quality and must be a work of art or fine art.
- Whether an article is artistic must be determined through evidence e.g. evidence of intention of the creator, evidence from members of the public, expert evidence, evidence of previous artistic portfolio, and the level of aesthetic appeal.
- it is important to assess to what extent the work's artistic expression is constrained by functional considerations - the more constrained the designer is by functional considerations, the less likely it is to fall into the artistic works camp.
Would modifying 3D copies avoid infringement?
There are no concrete rules on how much a product needs to be modified to make it acceptable. The test in law is whether a "substantial part" of the work has been taken and this test is based on quality and not quantity. Designers can still take inspiration from previous articles but always be aware that the law is designed to prevent slavish copies of artistic works. It is worth noting that not all 3D works will necessarily be protected by copyright in the first place but designers must always consider design rights and trade marks that may also be relevant.
2D copies, photos, images
Publishers whose books or magazines contain images/photos of works of artistic craftsmanship will require a licence from the rights-holder, unless they can reply on a copyright exception.
Copyright exceptions
Some potentially useful exceptions that affected parties may be able to rely on (subject to the facts of each specific case) are as follows:
Publishers and museums
- Criticism and review - a publisher and museums may be able to rely on this where there is genuine criticism and review of artistic works in a book or article (provided there is "sufficient acknowledgment");
- Quotation - where extracts or quotations for published works may be made e.g. as illustration (provided the use of the copy is "fair", which depends on the individual facts of the case and the purpose of the use).
Educational institutions
- Education - general fair dealing for teaching (provided it is not for commercial purposes and is illustrating a point).
Photographers, film makers and broadcasters
- Incidental inclusion - this would cover a photo or a film of a sitting room with a chair in the room (provided the chair was a work of artistic craftsmanship). It would not cover a photo of that chair where the chair was the main subject of the photo or a book with a series of photos of the chair or where the main focus of the book or photo was the chair.
Students or academics
Research and private study - a student can make a copy of an artistic work e.g. image of a copyright-protected vase, if that is part of an article in a journal (provided it is for the purposes of non-commercial research or private study).
Comment
As from 28 January 2017, as it will no longer be possible to deal with any replicas or unauthorised copies of industrially manufactured artistic works made in reliance on section 52, it is vital for businesses to:
- Identify existing articles which are copyright protected and determine whether any licences are available to make copies and if necessary negotiate new terms;
- Remove specific articles from a product range if necessary;
- Review existing licences to ascertain whether the repeal impacts on any of the terms of the licences; and/or
- Consider whether any copyright exceptions could apply when making or using new or existing copies.
Copyright owners also need to monitor their copyright-protected articles to ensure they are not being infringed and if they are, they should consider whether they want to negotiate a suitable licence.
As a result of this repeal it is possible that prices in industrially manufactured artistic works may increase and we may also see a surge in litigation between businesses in this area, in particular, to determine whether a particular article can be labelled a "work of artistic craftsmanship".
Whether you are a copyright owner, or a business or individual dealing in copies, we recommend that you review the IPO guidance. If in doubt, please seek legal advice from us as soon as possible and we can discuss the options for your business.