Design Copyright Reform: The Hargreaves Process Bears Further Fruit?

In all the excitement about the (not very significant) changes to digital copyright law brought about by the Hargreaves process, commercially significant changes to UK Design Law have been overlooked.   UK Design law, which is highly confusing even to experts, did not originally form part of Hargreaves’ brief; however he felt that it could not be ignored and therefore published a recommendation that further work be carried out with a view to modernising it.  The Intellectual Property Office (IPO) did carry out such work and has now produced an impact assessment which will lead to the repeal of Section 52 of the Copyright and Designs Act and Patent Act of 1988.

Section 52 (which must have been considered compatible with EU law at the time) effectively limits the term of design rights to 25 years if an artistic work which is subject to copyright is then mass produced.  Section 52 is now to be abolished to “comply with EU Law” and because IPO believes that designers need to have more coherent and extensive rewards.  When this change will take place is not yet determined as the IPO is considering how long a grace period is appropriate.  The effect of the change will be retrospective in that design rights will be revived for those industrial designs based on copyright.  The length of protection becomes the life of the creator plus 70 years.

One rationale for the change is the judgment of the European Court of Justice on 27 January 2011 (the “Flos” case).  This case dealt with the importation from China and distribution in Italy of lamps which infringed the copyright in the well known Arco lamp which belongs to Flos but which had fallen into the public domain.  Italian law sought to provide a sort of grandfathering provision whereby the copiers work would continue to be protected for at least ten years.  This was struck down by the European Court of Justice as being too long a duration for the grace period.

Based on this judgment, the UK has decided to quickly follow suit and get rid of Section 52 and bring it in line with most of the rest of Europe – only Estonia and Romania have a similar law to Section 52.  What the change will mean in practice is that the UK will no longer be used as a staging post for importation of goods from the Far East, which once validly put on the market in the UK can be exported throughout the EU.

It has always been assumed that the scope of IP protection was a matter for the Member States.  This could only be the case in a common market which gave very different weight to the work of authors with the UK broadly favouring producers over authors and the continental systems taking the opposite position.  Indeed, a number of harmonising directives have been passed which allowed member states to take different positions on the scope of EU rights.  The provision which was relevant in the Flos case would on its face have allowed the Italian law to stand since it established the “extent” of rights.

In the event, the European Court decided that “extent” meant duration and as duration had been laid down in the directive, Italy was precluded from giving a grace period of 10 years.  On this rather questionable basis, legal advisers to the IPO have clearly taken the view that 70 years plus the life of the author must be the period of protection accorded to industrial designs based on a copyright and Section 52 has to go.

If IPO is right, Estonia and Romania will benefit, at least in the short term, as they will become the staging posts.  But at some point a proposed reform which has some political resonances may just come onto the radar of UK politicians who have to approve the abolition of Section 52 in Parliament.

This guide is for general information and interest only and should not be relied upon as providing specific legal advice. If you require any further information about the issues raised in this article please contact the author or call 020 7404 0606 and ask for your usual Goodman Derrick contact.