However, when it comes to the designs of three dimensional items or products, the protection given by UK copyright law becomes dependant on the product being an “artistic work” rather than a simple industrial design, which should be protected under design law. The protection offered by design law is different in many ways from copyright protection and lasts for a shorter period of time, giving a maximum period of protection of 15 to 25 years, depending on the nature of the design and whether or not a registered design has been secured.
Copyright however can protect product designs if they are regarded as ‘artistic works’ as defined in the Copyright Designs and Patents Act 1988. That definition of an artistic work includes works that are sculptures, models and “works of artistic craftsmanship”. Copyright protection is a valuable defence against copying and therefore where it applies it will be used to enforce rights.
Over the years, there have therefore been several cases in which copyright was claimed in product designs based on the contention that the design in question was an ‘artistic work’. These cases related to products such as a Frisbee, Star Wars Storm Trooper’s Helmet design and chair designs. The vast majority of these cases failed. The cases are largely decided on their own facts, but it is clear that a sculpture is a work of intrinsic artistic merit rather than simply something made to appeal commercially. Likewise, the Supreme Court (formerly the House of Lords) in the United Kingdom stated that for a product design to be a work of artistic craftsmanship it had to be both a craft item and artistic. Many commercial products do not meet this test, which goes beyond the question of a design having merit as a design and into the question of it having aesthetic value.
This distinction is about to become more important. In a policy decision to equalise the duration of protection in the context of an “artistic work” sold as a product into the market with that of a purely design based work protected by registered designs, the copyright in a product design based on an ‘artistic work’ was reduced to 25 years if more than 50 products were made to the design on a commercial scale.
Copyright normally lasts for the lifetime of the creator plus 70 years. As a result, this reduction, while understandable, severely limited the duration of rights where products were exploited on any significant scale.
Some designers in other European countries like Germany have in recent years complained that as a result of this legislation there is no protection in the United Kingdom for iconic designs which have a sustained commercial value once 25 years have elapsed. Many such designs do have protection from copying under the copyright law that applies in other countries in Europe for the full period of copyright protection. As a result, copies which would be infringing copies of works protected by copyright under the law of (for example) Germany could be lawfully sold in the United Kingdom and then exported and sold anywhere else in the European Union based on ‘the goods in free circulation’ rules.
The UK government was persuaded that these designers from other European countries had a point and undertook a consultation in the United Kingdom. The result of the consultation is that the law is about to be changed and the ’25 years and gone’ rule abolished. This therefore will give artistic works the full duration of their copyright protection whether they have been reproduced on an industrial scale or not.
So from 26 July 2016 the ’25 year and gone’ rule no longer applies from that date, except for products made and imported before 29 October 2015, in which case the deadline is extended to 28 January 2017.
The copyright period will have been restored to the full term of the life of the creator plus 70 years, so that many of these iconic designs have the possibility of being once again subject to copyright protection, even if under the previous rules that protection had lapsed. This would be because the creator is still alive or 70 years has not passed since the creator died.
However, it still means that for those designs to have copyright protection in the UK they must be regarded as being ‘artistic works’. The “25 years and gone” rule may have been abolished, but the fundamental qualification for the protection of three dimensional designs by copyright remains. And as mentioned above, the track record of enforcing copyright in product designs based on defining any given design as an ‘artistic work’ has proved extremely difficult in the UK if not, in practical terms, almost impossible.
That state of affairs currently remains the law as to copyright and artistic works, particularly works of artistic craftsmanship. Whether the courts – perhaps after a reference to the European courts while that is still possible – will start to accept more product designs as qualifying for copyright protection as ‘artistic works’, only time will tell. In the past the definition has been very narrow.
Will the changes give more of these iconic designs copyright protection in the UK? I think that it is likely to take several years for the law to develop. An iconic design’s owner would have to show that that particular product design was an artistic work (and given we are talking about products sold to the public such as items of craft furniture, probably a work of artistic craftsmanship) in the UK and under the UK law tests. They would also have to show then that the product had been unlawfully copied and put on the market to be able to prevent that product being sold into the rest of the European Union. As the law stands in the UK, there will be a very limited number of product designs where that will have any chance of being successful. Later, it may be possible that the interpretation of ‘artistic works’ gets better defined now that litigation to expand that definition by case law would be more worthwhile, with result that allow more and more of these iconic product designs to be protected in the UK.
So from 26 July 2016 or (depending on the circumstances) 28 January 2017, any business selling copies of products made which are copies of a classic design, particularly perhaps a European design whose owners have been waiting in the wings for the change in the law to take effect, will need to assess whether that design might be regarded as an artistic work in the UK and as a result of that, whether dealing in products made to that design will now be a copyright infringement. In that case, the business might seek a licence or choose to stop selling the products based on a judgement of the danger.
We are already talking to a number of our clients who sell design items and products to assess whether they have any need to be concerned. We would be more than happy to discuss these matters with you and provide you with the advice that you need.
For further help or information please contact John Sykes
Please note this information is provided by way of example and may not be complete and is certainly not intended to constitute legal advice. You should take bespoke advice for your circumstances.