In 2016, the Copyright Designs and Patents Act 1988 (“CDPA”) was amended so as to extend the term of copyright protection for “industrially manufactured” artistic works, i.e. where more than 50 copies of the work have been made, from 25 years to life of the author plus 70 years or, if the author is unknown, 70 years from the end of the year in which the work was made or made available to the public. This brought the term of protection for industrially manufactured artistic works in line with other artistic works.
This means that expired copyright in industrially manufactured artistic works has been resurrected and can be asserted once more against third party use. The changes impact the 3D manufacture of copyright works as well as 2D representation of such works in publications and literature.
In practice, it is works of “artistic craftsmanship” which are most likely to be industrially manufactured and most likely to benefit from the change in the law. What constitutes a work of artistic craftsmanship is not defined by the legislation.
Unsurprisingly the changes have had serious ramifications. We have seen copyright owners of alleged works of artistic craftsmanship embarking on aggressive enforcement programs, whilst infringers have pushed back against claims that unlikely works (racing cars, for instance) are indeed works of “artistic craftsmanship”.
In this article, we consider the conclusions of the government’s 5 year post-implementation review, look at case-law which seeks to clarify what is meant by a work of artistic craftsmanship and consider real-world implications for both rights holders and alleged infringers who believe copyright owners are over-reaching.
Intellectual Property Office (“IPO”) post-implementation review
In December 2021, the IPO published their post-implementation review of the repeal of s.52 CDPA. The IPO sought feedback from a wide range of stakeholders and considered how the changes have impacted rights holders and users who could now be considered potential infringers. As expected, the key message from rights holders was that the changes had had a positive impact and “prevented the detrimental effect of […] poor-quality replicas being on the market”. This is not surprising as rights holders will obviously want the maximum time possible to exploit works which may have been replicated by third parties seeking to ride on the coat-tails of their earlier success.
In contrast, feedback from users highlighted some of the unintended negative consequences from the change. Representatives of the replica car industry, for example, reported that, on the presumed resurrection of their copyright, some car brands have taken action against businesses producing replica cars and parts, with some having gone out of business as a result. Likewise, some picture libraries and other cultural institutions have been forced to close or reduce their operations as photographic collections of presumed works of artistic craftsmanship are now considered to be infringing.
The IPO has acknowledged that without a clear definition of a “work of artistic craftsmanship”, the situation remains uncertain for rights holders and users. The IPO indicated that they may publish a definition of a work of artistic craftsmanship. If this happens, it would be a significant step and whilst any such definition would not be binding until it was applied by a court or incorporated into legislation, we would hope that it would nonetheless set out sensible criteria to enable rights holders and users to know where the line is likely to be drawn.
What is a work of artistic craftsmanship?
To understand what products are most likely to benefit from the repeal of s.52 CDPA, it is necessary to consider how the definition of a work of artistic craftsmanship has developed through case-law.
The leading UK case[1] says that a work must not only be a work of craftsmanship but it must also have aesthetic appeal. However, this has been contradicted by two pre-Brexit[2] decisions of the European Court of Justice (“CJEU”) (Cofemel[3] and Brompton Bicycle[4]) which indicated that aesthetic appeal was not relevant when assessing whether a design could be protected by copyright.
However, in 2020, when the Intellectual Property Enterprise Court (“IPEC”) was required to decide in Response Clothing[5] whether fabric with a wave design was a work of artistic craftsmanship, it avoided having to make a finding about whether the requirement for aesthetic appeal was now obsolete in light of the two CJEU decisions: “I need not go that far since I have found on the facts that the Wave Fabric does have aesthetic appeal. This part of the definition … is satisfied whether or not, in law, it is required.” The court further confirmed that “aesthetic appeal” can simply mean that the work appeals to potential customers.
Post Brexit[6], in 2022, the IPEC was required to consider for the purposes of a strike-out application whether the WaterRower rowing machine, which the court accepted had been recognised as an iconic design in the UK, was a work of artistic craftsmanship[7]. The infringer sought to argue that the WaterRower was both not artistic and not a work of craftsmanship insofar as it was “totally technical” with some “design choice” but no skill of a craftsman.
In considering “artistic”, the Judge indicated that relevant factors included the intention of the creator; if the creator intended the work to have an artistic purpose, even if that was not its primary purpose, that was relevant; recognition by others that the work is artistic; and that the visual appearance of the WaterRower was clearly popular insofar as customers had sought to acquire the product.
In considering “craftsmanship”, relevant factors included evidence that the creator was a craftsman (he studied naval architecture and built boats), had produced a high quality product, initially by hand, took pride in his work, was not a slavish copier or jobbing tradesman. It did not matter that manufacture of the product was now outsourced to others.
Turning to the infringer’s argument that the “technical and other constraints on the creator of the WaterRower “left no room for creative freedom or room so limited that the idea and its expression become indissociable””, the court did not agree. It held that the technical constraints did not seem to be of the type that force a designer to a single, defined outcome. Working within the technical constraints, the creator of the WaterRower was still able to exercise his own free and creative choices and design the WaterRower in such a way that it reflected his personality. In any event, the court confirmed that a work of artistic craftsmanship could still be useful.
The court in Waterrower again declined to resolve the inconsistency between the UK and CJEU positions on the requirement for aesthetic appeal. This was possible because, as in Response Clothing, the product in question was deemed to have aesthetic appeal. It is therefore likely to take a case in which the product in question does not have aesthetic appeal for the courts to make a finding on whether aesthetic appeal is still required.
Nonetheless, what is interesting about the Waterrower case is that it does appear to indicate that the UK courts remain open to the idea that technical or functional products can be protected as works of artistic craftsmanship.
This is good news for rights holders but will be met with alarm by businesses dealing in replica technical or functional products in the belief that the design rights in such products had long since expired. The ability to now claim copyright protection in such products potentially gives rise to a whole new swathe of claims.
Practical implications for rights holders
The repeal of s.52 CDPA has given many rights holders a second chance to enforce their copyright. We have seen a number of businesses commence a campaign to clear the market of products which they claim infringe their resurrected copyright. As the meaning of a work of artistic craftsmanship is still open to interpretation, the scope of works that the repeal of s.52 CDPA could apply to remains wide. The publicity generated by the changes has also opened right holders’ eyes to the potential to enforce copyright in works which perhaps would not have been considered before, for example technical or functional items. We therefore expect this to be a growth area for IP enforcement going forwards.
If a rights holder identifies a product that may benefit from resurrected copyright, the first step will be to consider whether the case law as it currently stands would support the argument that the product is a work of artistic craftsmanship. The next step is to determine whether the author of the work can be identified and whether the rights holder’s title to the work is good: it can be difficult to demonstrate chain of title in an old work. It is also worth considering the extent of third party use of the work and budget before embarking on an enforcement campaign as tackling widespread current use and policing future activity can be reasonably expensive. On the other hand, one successful test case against an infringer can sometimes be leveraged against other infringers in order to keep costs down.
Practical implications for potential infringers
Where an alleged infringer is faced with a claim for copyright infringement, a key counter-argument will likely be that copyright does not subsist in the work. In the absence of a clear definition of a work of artistic craftsmanship, there is clearly scope for argument on this point.
Moreover, given this ambiguity, infringers may also be able to argue that they did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates and therefore they are an “innocent infringer” pursuant to s.97 (1) CDPA. If successful, this argument would remove the infringer’s liability for damages.
What does the future hold?
At present, the landscape currently seems to be benefiting rights holders. If the IPO publishes a definition of a work of artistic craftsmanship, or the UK courts are required to grapple with the question of whether aesthetic appeal is still required for a work of artistic craftsmanship, we may get clearer guidance on what is and is not likely to be a work of artistic craftsmanship. This will inevitably be welcomed by replica businesses. We are watching this space with interest as we continue to help both rights holders and alleged infringers navigate their way through this complex and developing area.
[1] George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64
[2] These decisions are therefore binding on the UK courts
[3] Cofemel – Sociedade de Vestuário SA v G-Star Raw CV (Case C683/17)
[4] SI, Brompton Bicycle Ltd v Chedech/Get2Get (Case C-833/18) EU:C:2020:461 (11 June 2020)
[5] Response Clothing Limited v The Edinburgh Woollen Mill Limited ([2020] EWHC 148 (IPEC)
[6] By which time the UK courts, at least at the Court of Appeal level, are free to reach a different position to that taken by the CJEU
[7] Waterrower (UK) Ltd v Liking Ltd (t/a Topiom) [2022] EWHC 2084 (IPEC)
