Spotlight on UK Design Law: Part 3 – ‘Overlap between copyright and designs’

The UKIPO recognises that there is a lack of clarity on the extent of overlap between copyright and design law, and how they should co-exist. In particular, the Call for Views notes the uncertainty as to which designs should be considered original “works of artistic craftsmanship”, which qualify for a significantly longer term of protection than even the most generous of design rights.

By way of context, UK copyright has traditionally only protected 2-dimensional artistic works except where they could be properly categorised as ‘sculptures’, ‘works of architecture’ or ‘works of artistic craftsmanship’. Until recently, UK courts had typically required an element of artistic quality in addition to “originality” in order for copyright to arise in 3-dimensional works of artistic craftsmanship. In addition, there was previously a provision in copyright law (s.52 of the Copyright, Designs and Patents Act 1998, “CDPA”) which significantly reduced the term of copyright protection for mass-produced works from the life of the author plus 70 years, down to 25 years from first marketing. The repeal of Section 52 revived previously expired UK copyright in many mass-produced works of craftsmanship, notably furniture.

The scope of copyright in 3-dimensional works grew further when the Court of Justice of the European Union (CJEU) handed down its decision in the landmark ruling of Cofemel. It found that the only requirement for copyright protection to arise was for the work to be original (in the sense of representing an expression of the author’s own intellectual creation) and – crucially – Member States were not permitted to impose additional criteria (such as artistic quality or merit) through their national laws.

As Cofemel was decided before Exit Day, UK courts are required to apply domestic law in conformity with its principles as part of retained EU law. The UK courts’ traditional approach of expressly requiring an element of ‘artistry’ for copyright protection of 3-dimensional works therefore seems at odds with the CJEU’s latest guidance. The subsequent UK case of Response Clothing v Edinburgh Woollen Mill (reported by Law-Now here) acknowledged the principles laid out in Cofemel, but did not fully reconcile or clarify the UK position. This has left considerable uncertainty for designers in sectors falling in the “grey area” between copyright and designs.

Our view: We would call for clarity from the UK courts on whether and how they intend to apply the CDPA in complete conformity with the guiding principles set out in Cofemel post-Brexit, that is, to grant copyright protection to “works of artistic craftsmanship” (and indeed other types of “original” works) regardless of aesthetic appeal and based solely upon a requirement of “originality”.

• We agree that, while some products will benefit from being eligible for both copyright and design protection, a clearer distinction between them would simplify the system.
• If UK copyright protection in 3-dimensional works arises regardless of any artistic character or merit, this effectively creates an additional “quasi design right” of author’s life plus 70 years. This would undoubtedly benefit many businesses whose three-dimensional designs may be regarded as mainly functional and not artistic.
• We would call for a policy review of whether the distinction between designs and copyright works should turn on the question of ‘aesthetic appeal’ given how subjective that concept is. This depends on the Government’s view on whether creativity and design innovation should be rewarded differently depending on whether a work is perceived by others as ‘aesthetic’, irrespective of the author’s objective or the degree of originality. This is important when the term of protection differs so significantly between the two regimes.
• The above is coupled with a lack of clarity on whether the UK courts will grant copyright protection to foreign works that only benefit from design protection – but not copyright – in their country of origin (i.e. whether such copyright protection would be denied on the basis of Article 2(7) of the Berne Convention). A clear policy statement on this issue would be welcomed.

Reviewing the UK designs framework – UKIPO’s Call for Views

The legal protection of design rights in the UK is no picnic. As IP practitioners and design businesses will be all too well aware, UK design law comprises a myriad of IP rights, both registered and unregistered, protecting different types of designs and with a varying scope and term of protection. This framework has been further complicated by the introduction of new UK “spin off” design rights post-Brexit, and other changes to the legal landscape. It is no surprise, therefore, that the sheer complexity of design law is often cited by design businesses (particularly those without legal representation) as a key reason for not taking full advantage of the protection that is available to them. The UKIPO is alive to the need for simplification of the system, and the opportunities presented by Brexit to re-shape domestic design law for the future.

Between January and March 2022, the UKIPO ran a ‘Call for Views’ consultation on the reform of the UK designs framework. It invited submissions from design industry stakeholders and IP professionals on possible improvements to the current system. The consultation has now closed, and we will monitor and report on further developments as they arise.

Over the next few weeks, CMS will be exploring some of the topics covered by the consultation, and will be considering the key themes that are likely to emerge as the focus of further discussion. Please get in touch if any of these issues directly affect your business and you’d like to discuss them in confidence with our Designs team.

To view the articles in this series, click here: Part 1; Part 2; Part 4; Part 5; Part 6; Part 7