Goodbye Section 52? Proposed copyright extension for industrially produced designs

The iconic Eames chair
will it soon be protected by copyright?

What is art? What is design? Are the two different? Where is the overlap?

These are important and difficult questions which have plagued lawyers, judges and legislators in many jurisdictions not least the United Kingdom. There is currently a Bill passing through the UK parliament which will shake up the current UK approach to copyright for some designs and brings the UK system more in line with the approach taken in the rest of Europe.

Currently section 52 of the Copyright Designs and Patents Act 1988 (CDPA) limits the effective term* of copyright protection to ‘the end of the period of 25 years from the end of the calendar year in which such articles are first marketed’. This limited 25 year copyright term applies where an artistic work has been exploited (by the copyright owner) by making the artistic work by an ‘industrial process’ and marketing the artistic work in the UK or elsewhere.

A number of the gaping holes in section 52 were filled by the snappily titled Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989. This clarified that an ‘industrial process’ means either (1) the artistic work is manufactured more than 50 times or (2) it consists of ‘goods manufactured in lengths or pieces, not being hand-made goods’. So most furniture, lamps, storm trooper helmets etc are out unless...

...even if made by an industrial process, some items can slip through the section 52 net and get the full copyright term of protection. These special items are: works of sculpture, wall plaques, medals and medallions or printed matter primarily of a literary or artistic character. Unsurprisingly most of the legal battles have been over whether a particular design is a ‘sculpture’. But such battles may no longer be necessary.

[* Technically, the copyright term is not limited but the ability to take action against infringers is removed which is effectively the same thing subject to limited circumstances which are discussed in more detail here.]

The plan is simple: revoke section 52 (see clause 55 of the proposed bill).

How will this work in practice?

In particular what will happen to works which were out of copyright protection is not clear from the bill. There are likely to be some transitional provisions and these works will ultimately be protected by the copyright regime.

Who benefits?

To qualify for the extended term of protection, a work must be artistic in the first place. There is a lot of talk about how British designers will benefit but this will not apply across the board. Some designs may not qualify as not all designs are necessarily artistic. The definition of art in the CDPA is fairly broad but nevertheless restricted to more traditional notions of art. The area most of these items are likely to fall within is a "work of artistic craftsmanship" which unlike paintings etc is not explicitly a work “irrespective of artistic quality”.

Some designs have become iconic over time but were not necessarily always recognised as artistic. The definition of what is artistic has always involved a great deal of subjectivity and unfortunately judicial rulings on what is art may be unavoidable. There are problems and not everyone will benefit. Nevertheless, if the bill is passed it will be another item in the designer’s IP arsenal. Whilst it may not be the huge boost to British business that it is hyped up to be, it will put the UK on a more equal footing with the rest of Europe.

The people who lose out are those that manufacture ‘replicas’. They can choose to move sufficiently far away from the original to not be copying a ‘substantial part’ (a risky strategy) or take advantage of the transitional provisions to sell off existing stock and move business operations to Estonia or Romania (the only other two EU countries to restrict the term of protection for designs).


Is it necessary?


Do we really need more copyright protection? This is a complicated question but there has been a significant disparity in the protection afforded to designers and musicians, writers etc and no real justification for such a major difference in approach. The change may be good for British industry and it will definitely keep some British lawyers busy. Quite apart from subsistence and infringement issues, there are going to be questions over ownership; if the bill is passed those designers who were commissioned (rather than employed) will suddenly own the resurrected copyright in design – not the company which is exploiting the rights and may have to negotiate an expensive licence.

You can track the passage of the bill here.