Go with the Flos? AIPPI debates copyright in industrially exploited designs

The IPKat is indebted to the industrious pen of Annabelle Maddison (Bristows) for this report on last night's meeting of the UK cell of the Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI) on the theme of "Section 52: Should it stay or should it go?"  The Section 52 in question belongs to the Copyright Designs and Patents Act 1988 (CDPA) and it limits the term of copyright protection for industrially exploited artistic designs to just 25 years.  While this provision is due to be repealed by the current Enterprise and Regulatory Reform Bill, there are those who feel that it is harmless or even beneficial and that we can grow to love it if we only understand its true meaning and significance.   This is what Annabelle (who has earned herself a katpat for her efforts) writes:

"If you want it cheap – Buy British!

The words which head this report are not quite what I was expecting to be presented with in support of the repealing of section 52 of the Copyright Designs and Patents Act 1988 -- but I shall come back to this point ... 

Yesterday night, the Rt Hon. Professor Sir Robin Jacob chaired a debate (organised by the AIPPI) between Prof. Lionel Bently (Herchel Smith Professor of Intellectual Property at the University of Cambridge) and Dr Reinhard Oertli (Meyerlustenberger Lachenal, Switzerland) on the repealing of section 52 – should it stay, or should it go?

The Flos ruling shed much
light on EU design policy

You could be forgiven for missing the British government’s decision to repeal section 52 of the CDPA. It has somewhat been under the radar [one might suggest that, given the manner in which it is being done and the lack of consultation, the intention was that you should indeed miss it] but repealed section 52 will be -- by the Enterprise and Regulatory Reform Bill -- and, when that happens, there will be no further limitation of copyright protection for industrially exploited designs to 25 years. Why? Because following the decision of the Court of Justice of the European Union in Case C-169/08 Flos v Semeraro, the government considers section 52 to be in conflict with the Copyright Term Directive, which harmonised the term of copyright protection in the EU to life of the author plus 70 years.

"Just who are you calling
ill-conceived?" 

Prof. Bently presented his argument that repeal of section 52 is “ill-considered, undesirable and ill-conceived”. Acknowledging that section 52 is far from perfect (relying on statutory instrument to define terms and containing difficult to justify exceptions, for example) nevertheless, it achieves its objective: harmonisation of the protection for designs. Removing this limitation quite obviously causes issues for manufacturers (and consumers) of replica products, but Prof. Bently raised two further concerns. First, those making use of images of design articles could now find themselves under increasing threat of infringement proceedings (there being no fair dealing defence). Dismissed by some in the audience, this was raised as a very real problem by one attendee with first hand-experience of such threats. Secondly, the use in new works of motifs from the existing corpus, the so-called “follow-on design”. The protection of “any original part” offered by copyright law will arguably make this impossible (conversely, existing design law allows such use, so long as it creates a different overall impression on the informed user).

Even if Flos is right (which Prof. Bently argued strongly it was not), by Article 17 of the Design Directive, Member States retain the right to regulate the breadth of protection afforded to designs by virtue of national copyright laws. Even Dr Oertli did not argue that the repeal of section 52 was required by Flos. Instead, his argument was based on Article 2 of the Berne Convention and, specifically, on the inclusion of “works of applied art” as literary and artistic works.

Out-of-the-box
ideas bear thinking about

The conclusion from the evening? Section 52 does not necessarily need to be repealed on the basis of Flos, but that does not mean that this is not a good opportunity for consultation as to the best way to ensure that the relationship between copyright and design law remains fit for purpose. Opinion from the floor was fairly unanimous in this regard. Is there an argument for a perpetual copyright with a change in the test for infringement after a certain number of years? [Credit for this out-of-the-box thinking goes to Sir Robin]. As for buying British...I shall be taking on board the advice of Dr Oertli and, rather than spending her hard-earned cash on well-made Italian replicas of iconic design pieces, will instead be embracing the original designs of emerging British designers – eager to pay off their student loans!"