A warning to manufacturers and sellers of mass produced articles

Manufacturers and sellers of certain mass produced articles (e.g. furniture, lamps and fabric designs) may either knowingly or unknowingly rely on section 52 of the Copyright, Designs and Patents Act 1988 (the “CDPA”) and the Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989 (the “Order”) to avoid infringing copyright in those articles.

Section 52 provides that where certain artistic works are mass produced (i.e. where more than 50 copies are made) then the term of copyright protection for that work is reduced dramatically from the life of the author plus 70 years down to 25 years from the end of the calendar year in which such articles are first marketed. The Order clarifies the scope of the application of section 52. Section 52 has allowed manufacturers and sellers to reproduce and sell such articles without the need for a licence from the author much sooner than they would have been able to with other copyright works.

The problem, as far as manufacturers and sellers are concerned, is that section 52 is to be repealed on 6 April 2020 thus bringing the UK into line with the law in the EU. The furniture industry has been lobbying for change because there is a perception that the UK does not properly protect the creative industries. Responses to the Government’s consultation relating to the repeal of section 52 pointed out that the UK was seen as an ideal home for cheap Chinese imports.

The key impacts of the repeal are as follows:

• Copyright in the original artistic work will be restored (to the original term of the life of the author plus 70 years) assuming that the author is still alive or we are still within 70 years of the author’s death; and
• Manufacturers and sellers will need to obtain a licence or assignment from the restored right holder of the artistic work.

There are planned transitional provisions, following commencement of the repeal, which would allow continued dealing with copies of such artistic works made or imported prior to the repeal commencing.

Action Points

Manufacturers, sellers and rights holders should make plans and take action now to ensure that their positions are protected well in advance of this repeal:

• Manufacturers and sellers of mass produced articles who currently rely on section 52 should:
  • Consider which articles that they produce that may need to be licensed once the repeal commences; and
  • Consider purchasing or licensing the rights to use such copyrights now from the future restored right holder as prices may be, at this stage, relatively low (given the 5 year period until the rights are restored).
• Equally, if you are a future restored right holder you may consider approaching manufacturers and sellers of your works to licence or sell that future right to them.

Underlying all of this is a consideration of whether the specific products amount to an ‘artistic work’, and if you wish to discuss any of the issues raised in this article please contact Simon Miles, Charlie White or any member of the Edwin Coe Intellectual Property team.

If you aren’t receiving our legal updates directly to your mailbox, please sign up now