Repeal of s. 52 on hold – good news for sellers of replicas

The government recently revoked the Commencement Order (Enterprise and Regulatory Reform Act 2013) which implemented the repeal of the Copyright, Designs and Patents Act 1988, s 52 (CDPA 1988). John Coldham, a director at Wragge Lawrence Graham & Co, takes a closer look at this development.

By way of background, what is the reasoning behind the repeal of CDPA 1988, s 52?

The repeal of CDPA 1988, s 52 was brought in by statute—by the Enterprise and Regulatory Reform Act 2013, s 74. The rationale for the repeal was that UK law was incompatible with the EU following the Court of Justice of the European Union’s decision in Flos v Semeraro: C-168/09 [2011] All ER (D) 208 (Jan). The purpose of the repeal was to align the period of copyright protection across all artistic works and to eradicate inconsistencies between the term of protection afforded by copyright in different member states. CDPA 1988, s 52 provides that artistic works which are exploited by an industrial process (that is, more than 50 articles being produced) have their copyright protection limited to a duration of 25 years (ie in line with the maximum available for registered designs). This period of protection is significantly less than the duration of protection afforded to other artistic works, which is the period of the author’s life, plus 70 years. The repeal is a success for designers of iconic products, who will have their proprietary rights extended, enabling them to prevent other manufacturers making lookalike products and selling them for a fraction of the price.

What did the commencement order say about the repeal of CDPA 1988, s 52?

Following a consultation in the Autumn of 2014, the government responded in February 2015. Given that the repeal would cause quite a change to the businesses currently selling legitimate lookalikes of classic products, the response (and resulting commencement order) provided that it would not come into force until April 2020 to allow time for such businesses to adjust. The transitional arrangements were designed such that they would not make replica products already in existence into infringing articles and to enable retailers, who have been legitimately selling lookalikes of artistic works that fall outside of their period of protection, to phase out their existing stock. The Commencement (Enterprise and Regulatory Reform Act 2013 (Commencement No.8 and Saving Provisions) (Revocation) Order 2015, SI 2015/1558 was passed to give effect to the repeal. It specifically provided that any products that were already on the market before the repeal came into effect would be capable of being traded freely after April 2020—the ban would only cover new products imported or made after that date.

Why has the Commencement Order been revoked?

At the end of July 2015, the Intellectual Property Office (IPO) announced that it was revoking the commencement order, and as such putting the repeal on ice. Full reasons for revoking the repeal’s commencement date have not been given, except to say that it followed a judicial review of the transitional arrangements. No great detail has been provided on the claim for judicial review, other than that the compatibility of the commencement order with EU law has been challenged. In light of this claim, the government announced on 23 July 2015 that careful consideration of the claim has led them to revoke the commencement order.

What next steps are the government likely to take in order to repeal s 52?

The IPO has said that it would consult on revised transitional arrangements in light of the legal challenge it received, and that a further announcement will be made at the time of the consultation, although it has not given any indication as to when this is likely to be. Once this consultation is concluded, it is likely that a new date for the repeal will be set, which will almost certainly be at least five years from the date of the response to the consultation.

Who benefits from CDPA 1988, s 52 remaining in force longer than expected?

This of course is welcoming news for manufacturers and retailers of products inspired by iconic artistic works, who can now be assured that their business model is likely to survive beyond April 2020, although exactly how long beyond this date is yet to be determined. What does appear to be certain from the government’s announcement is that CDPA 1988, s 52 has not escaped its fate and the repeal is still set to happen, it’s just a case of how and most importantly, when?

Interviewed by Alex Heshmaty.

This article is republished with kind permission of WIPIT’s sister site, Lexis®PSL IP & IT. For a free trial click here.

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