The interplay between copyright and designs – government review of the repeal of section 52 CDPA

Briefing

In 2016 a quirk of UK copyright law was removed – section 52 of the Copyright Designs and Patents Act 1988 (CDPA). A Post-Implementation Review, conducted five years after the repeal, has just got underway with the UK government issuing a "call for views", open until 31 August 2021.

What has happened?

Section 52 had limited copyright protection to 25 years for artistic works which became industrially manufactured in an attempt at a consistent approach to the IP treatment of mass produced and functional articles. However, it was out of step with EU law and was repealed. The Review provides affected sectors with a timely opportunity to examine what has and hasn't worked following the repeal, and to consider whether reform of the UK's industrial copyright laws should go further.

If you rely on copyright in artistic works which might be mass produced – such as furniture, lighting, jewellery, ceramics and merchandise – you should consider responding to the call for views.

Why was section 52 introduced?

The history of section 52 reflects the UK's tortuous path over the last century in settling on appropriate IP protection for mass produced and functional articles. UK law is an unhappy mixture of scepticism that such articles deserve full copyright protection, a formalistic approach which has sought to categorise every type of copyright work into neat boxes, and the EU's looser test for copyright protection based on whether a work is the author's own intellectual creation.

UK copyright law has since 1911 followed a list-based approach, in which a particular work has to fit within a predefined category in order to attract copyright; namely literary, dramatic, musical or artistic. Artistic works were further subdivided into graphic works, photographs, sculptures, collages, architectural works and works of artistic craftsmanship. Each was entitled to a term of protection of the life of the creator plus (now) 70 years. There was separate protection for certain types of designs as registered designs, for a period of up to 25 years. The philosophy behind all this was that a work could attract copyright if sufficiently towards the "art" end of things, or instead be registerable as a design if attractive but destined for mass-production, but that was not how it worked out.

The way the laws were interpreted in the 20th century led to cases where lengthy copyright protection was claimed even for mundane articles or for which registered design protection had previously been enjoyed. The two most high profile concerned Lego bricks and the design of a car exhaust pipe (tailpipe), both of which had been manufactured and sold in huge numbers. In response, from 1989, a pair of provisions were introduced in the then-new CDPA, with the intention of limiting copyright protection in industrial designs:

section 51, which declared that it was not an infringement to make an article by copying a design document/model (unless the design document/model embodies an artistic work), and
section 52, which cut copyright protection for artistic works which became industrially manufactured to 25 years (subject to some limited exceptions).

And then repealed?

The idea that some artistic works could have their protection limited to 25 years was out of step with EU law, in particular the CJEU's 2011 decision in Flos. As a result of this decision – and faced with strong lobbying by industries affected by section 52, including creators of iconic furniture designs of which unlicensed copies were offered for sale much more cheaply once the 25 years had expired – the UK government repealed section 52 with effect from 31 December 2016. If you have an interest in the term of protection of copyright in mass-produced artistic works, you should consider responding to the call for views.

Is reform of section 51 now necessary?

The current call for views asks what the impact of the section 52 repeal has been. What it does not explicitly ask, but which is a question that increasingly needs to be addressed, is whether reform of only one part the CDPA's approach is enough or if section 51 should now be repealed, too.

In part, section 51 is open to criticism for going too far in depriving articles of enforceable copyright protection. This is because it effectively forces them to fall within one of two categories to be enforceable: a sculpture or a work of artistic craftsmanship. The courts have had considerable difficulty in applying the test for what falls within these two categories – a test which arguably involves aesthetic value considerations.

The greater threat to section 51 now is that it no longer accurately represents UK law because, ironically, of EU law. Despite Brexit, CJEU law dating from before 31 December 2020 remains part of UK law. EU law does not approach copyright protection using a list-based approach. Instead, the test first set out by the CJEU in Infopaq has increasingly been the measure by which the availability of copyright protection is decided: does the work form the author's own intellectual creation and is it an expression of that creation?

In Cofemel, which came out in 2019 before Brexit took effect and so forms part of UK law, the CJEU applied the author's own intellectual creation approach to an industrial design case over whether the design of some jeans attracted copyright. The effect of that decision is to throw considerable doubt onto the legality of tests which involve a consideration of aesthetic value, of section 51 and of the whole list-based approach (see our analysis of the Cofemel case here).

Already there has been at least one post-Brexit English court decision which has applied Cofemel. It is likely that the Cofemel approach will continue to be applied by the UK courts despite the wording of the CDPA and regardless that Brexit has now taken effect. The uncertainty this inevitably causes would best be resolved by a governmental review of section 51. We hope that the Review of the section 52 repeal will encourage a wider review of the UK's experiment with industrial copyright laws.