The Main Effect of the Repeal
Section 52 of the Copyright, Designs and Patents Act 1988 (‘CDPA’) was a legal provision that dealt with artistic works that have been applied to an article (e.g. a logo that is an artistic work which is applied to a t-shirt) and where more than 50 copies of that artistic work on articles have been produced. This provision limited copyright protection for these artistic works as applied to articles to 25 years from the date they were first marketed. On 28 July 2016 this section was repealed.
The decision to repeal section 52 was prompted by the outcome of the European case Flos v Semeraro. Based on this decision, the UK government determined that section 52 was not compatible with the European Copyright Term Directive and should be repealed.
When section 52 was in force, the duration of copyright protection for artistic works covered by that provision was shorter than the term for other artistic works, which is 70 years after the death of the creator.
The section 52 repeal means that new artistic works applied to articles that are produced in large numbers (more than 50 copies) are granted the same term of protection as other artistic works.
Further, artistic works in which copyright has (or would have) expired under the old section 52 regime will now be granted the new term of life of the creator plus 70 years protection instead.
For example, under the old regime if more than 50 copies of an artistic work (as applied to an article) had been produced and it was first marketed in 2015 then copyright protection for the production of this artistic work on articles would have expired in 2040. Instead, copyright protection for such a work even as applied to mass-produced articles will now expire 70 years after the death of the creator. Accordingly, if the creator of such an artistic work passed away in 2015, copyright will expire in 2085.
What Types of Works are Affected?
Under section 4 CDPA, there are three types of artistic works that attract copyright protection:
- Graphic works, photographs, sculptures and collages;
- A work of architecture being a building or a model for a building; and
- A work of artistic craftsmanship.
What Does This Change for Rights Holders?
If you own the copyright in artistic works that have been applied to articles of which more than 50 copies have been produced then the copyright in such works will now attract the new term of life of the creator plus 70 years protection.
Now that these artistic works are protected by the longer duration, copyright owners should consider whether the copyright works in their portfolio are being exploited without permission by unauthorised third parties. Of course, in many instances it is likely than many artistic works like logos that have been applied to goods will also be protected as a registered trade mark, by the laws of passing off or under design law. However, it is worth considering whether you can now leverage the copyright protection against unauthorised third parties both in scenarios where claiming copyright infringement would be in addition to claiming trade mark, passing off and/or design infringement, and in scenarios where other IP enforcement options would not be as suitable as alleging copyright infringement.
You may also wish to review your current licences with any manufacturers/publishers to produce articles that may be affected by the repeal and revise them where necessary (for more on this see point 1 below).
What Does This Change for Manufacturers/Publishers?
From 28 July 2016, a manufacturer/publisher may not make or import new copies of artistic works as applied to articles unless:
- They were contracted to do so before 16:30 on 28 October 2015. Those parties that contracted to make/import such articles after that deadline must have sold or destroyed all such articles by 28 July 2016. If parties were contracted to make/import such articles before 28 October 2015 then they will have until 28 January 2017 to sell or destroy those articles;
- A new permission/licence has been granted by the rights holder after 28 July 2016; or
- An exception applies.
Accordingly, you should assess if you need to make any changes to your business model and product range and obtain legal advice where necessary. You may wish to consider the following:
- Identify existing works you are using which are now protected by copyright after the section 52 repeal, determine if licences are available for copies to be made and negotiate these where necessary;
- Remove specific items from the product range if no agreement can be found with the relevant rights holders;
- Review any existing licences to check how the repeal of section 52 impacts on the terms of the licence (see point 1 above); and/or
Take legal advice on whether any copyright exceptions could apply when making or using new or existing copies.
It is also worth noting that publishers will be required to secure licences when printing 2D copies (e.g. 2D images) of works of artistic craftsmanship unless an exception applies.
From 28 January 2017 you may not deal with any replicas or unauthorised copies that were made in reliance of the shorter term of protection provided by section 52. By this date, all such items must:
- Be sold or destroyed;
- Have permission from the rights holder to use the works in question; or
- Rely on an exception.
Possession of an article after this date will not necessarily be an infringement of copyright, although possession may become an infringement if done so while acting in the course of a business.