Is copyright riding to the rescue of designers?

The legal protection of designs for three dimensional objects is a complex area of UK law.

In order to ascertain whether such designs are protected requires an examination and understanding of registered and unregistered design law (both at EU and UK level) and copyright.  None of these rights are the same and all have different governing rules. Qualified legal experts struggle to understand the relevant laws, let alone designers with limited or no legal training.

However, a recent case heard in the Intellectual Property and Enterprise Court (Response Clothing Limited -v- Edinburgh Woollen Mill Limited [2020] EWHC 148 (IPEC)) has arguably made it easier for designers to be able to protect their designs for three dimensional items (e.g. for furniture, jewellery, ceramics and fashion items).

What was the legal position in the UK before the Response Clothing case?

Since 1988, creating a three dimensional version of the design for a product is not an infringement of the copyright in the underlying design document for that product, unless the product itself qualifies as an "artistic work".  This term includes "sculptures" and "works of artistic craftsmanship".

Moreover, a three dimensional product does not qualify for copyright protection, unless it is an artistic work, such as a sculpture, or a work of artistic craftmanship.

Case law had previously interpreted the terms "sculptures" and "works of artistic craftsmanship" narrowly, making it hard for designers to benefit from copyright protection.  

Thus, instead designers have had to either obtain registered designs for their designs, or try to rely on the laws governing unregistered designs (at UK and EU level).  However, registered designs only last for a maximum of twenty five years and unregistered design rights a maximum of ten years, with licences of right being available to third parties for the second five years of the ten year term.

What has the Response case decided?

The Judge in the case held that for a work to be regarded as one of artistic craftsmanship the author has to be both a craftsman and an artist.  A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship.  An artist is a person with creative ability who produces something with creative ability and who produces something that has aesthetic appeal.

Furthermore, the product created does not have to be made only by the hands of the craftsman, but could also be made with the assistance of a machine. However, if the design of the product has been dictated by technical considerations, rules or other constraints, which leave no room for creative freedom, then the design of the product cannot be protected as a copyright work.

The Judge also held that aesthetic appeal can be of a nature that causes the work to appeal to potential customers, and a work is not precluded from being a work of artistic craftmanship solely because multiple copies of it are subsequently made and marketed.

Why is this good news for designers?

The Response case has arguably made it easier for designers of three dimensional products, which have aesthetic appeal, to be protected by copyright.  Copyright lasts for the period of the artist’s life, plus 70 years.  This is a significantly longer period of time than a registered or unregistered design.

By way of example, a designer who produces a design for a piece of furniture, or jewellery, which is subsequently copied by another business, may now be able to rely on copyright to take action against the other business for copyright infringement.  The designer no longer has to rely on a registered design or unregistered design right.

Not only does copyright protection last longer than both registered and unregistered designs it also arises automatically.  There is no requirement to pay a fee to obtain registration of a copyright work. It exists per se.

The Future

The Response case does not assist designers of functional three dimensional products (e.g. a design for a car exhaust). A case heard last year, before the Court of Justice of the European Union (called Cofemel) cast doubt on whether UK law can exclude copyright protection for such designs, by holding that national laws of member states of the EU cannot impose a requirement of aesthetic value before copyright can be given to a design.  Current UK law does make such a requirement.  A UK court might in the future hold that UK law is unlawful, because it does not comply with EU copyright law.  However, whether parliament would be willing to amend UK law, so that it complies with EU law, remains to be seen.  The author is doubtful, bearing in mind that the UK is no longer an EU member state and will no longer be bound by any of its laws (save those that it wishes to observe) from the end of 2020.

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