On 28 July 2016, the repeal of section 52 of the Copyright
Designs and Patents Act 1988 (CDPA) comes into force, meaning some
artistic works will now fall back under copyright. It provides a
long-stop date of 28 January 2017 for the final stocks of products
that may now infringe copyright to be sold through or
What does section 52 CDPA do?
Section 52 CDPA limits the term of copyright protection for
artistic works which have been exploited by an industrial process
(that is, more than 50 articles being produced) to 25 years (i.e.
in line with the maximum available for registered designs). This is
significantly less than the duration for other artistic works,
which is the artist's life plus 70 years.
However, in order to align UK law with the CJEU's decision
in Flos v Semeraro, the Enterprise and Regulatory Reform
Act 2013 provides for section 52 to be repealed, bringing some such
works back into copyright protection.
What types of 'work' are likely to be affected?
Section 52 only limited protection for copyright for
"artistic works" that had been industrially produced.
Works of artistic craftsmanship and sculptures are the key
areas. These types of work are notoriously difficult to define, and
are construed pretty narrowly.
Will the repeal open the floodgates for designers (for instance,
of furniture) to bring claims where design rights are unavailable?
Considering the furniture example, it is generally considered that
most furniture designers looking at this route will prefer to claim
that their design is a "work of artistic craftsmanship",
rather than a sculpture. The Supreme Court considered the meaning
of "sculpture" in the Star Wars stormtrooper helmet case,
Lucasfilm v Ainsworth. While the concept of
"sculpture" can go beyond what one would normally expect
to be art, it cannot stray too far beyond what one would normally
understand the word "sculpture" to mean, and a helmet
would be too utilitarian to count.
However, in order to succeed in establishing a furniture design
as a work of artistic craftsmanship, the right owner will need to
claim that their design is both of high artistic quality, and a
work of craftsmanship. This presents some tricky hurdles. Something
may be artistic, for instance, but does it require particular
craftsmanship to make it? It is likely that only the most iconic
designs will qualify as works of artistic craftsmanship and so
benefit from the repeal.
Why is the repeal significant?
Section 52 had the tacit effect of making copyright no more
useful than registered design for the protection of the design of
products. As a result, it has rarely been relied upon in the
pursuit of copiers.
However, removing the 25-year limitation could give owners of
some designs dating back to the 1960s (or earlier) a new way to
pursue copyists where previously there were no rights they could
When will the repeal take effect?
It remained for the Government to set a date for the repeal to
A first consultation and resulting Commencement Order set a
repeal date of April 2020. Following a judicial review by owners of
iconic furniture, the Government repealed that Order in July 2015,
and started a new consultation. This resulted in a new Commencement
Order, with a repeal date of 28 July 2016, with all residual stocks
to be sold by 28 January 2017.
What is happening now?
Sellers of replicas appear to be taking no chances, with various
advertisements in newspapers advertising their products as the
"last chance to buy", as some old works where the
copyright had expired will "come back from the
If products were made before 28 October 2015 (or pursuant to a
contract entered into before that date), sellers have until 28
January 2017 to sell through or destroy their stock.
An interesting question came up following the first draft of the
second Commencement Order, which has now been resolved. On that
draft, mere "possession" in the course of business was
considered to be an infringement, so businesses that had previously
purchased replicas for their shops and restaurants (for instance)
could have been caught. However, Gowling WLG submitted comments on
the draft, and the UK IPO acknowledged the problem and clarified
the Order so that it does not cover mere possession. This should
remove risk for a number of businesses.
The repeal will also affect 2D images of protected products.
This could affect architects, CAD software producers and book
publishers, where they show images of iconic products. Depending on
the product protected, it may be that these organisations will now
need a licence.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The UK government has not yet invoked Article 50 of the Treaty on European Union (this is likely to happen by the end of March), and the UK's actual exit from the European Union is at least two years away.
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