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Attention! Changes to Copyright Law Coming Into Practice from July 2016

Changes to copyright law for artistic work

Generally, a copyright protects musical, dramatic, literary and artistic works. Copyright protection is given to these types of works for a period of 70 years after the death of their creator. This rule comes with an exception!

According to section 52 CDPA, the current period of protection for artistic works (excluding films) which have been industrially manufactured (i.e. works of which more than 50 copies were made) and marketed for sale is limited to 25 years. This means that anyone can make copies of such works without infringing copyright once the period of 25 years from when the articles were first marketed has expired.

However, following the Case C-169/08 Flos v Semeraro, the UK government considered that section 52 was not compatible with the EU Copyright Term Directive and passed legislation to repeal that section. This means that the period of copyright protection for mass-produced artistic works will be extended to the lifetime of the creator plus 70 years.

Originally this repeal was meant to have a transitional period of 5 years, coming into effect in April 2020. However, the government conducted a new consultation late 2015 and concluded that this period was excessive.

It has therefore been decided that instead, the repeal will now occur on 28 July 2016, with the transition period ending on 28 January 2017.

What does this mean for businesses, organisations and individuals?

Well, from 28 July 2016, no new copies of affected artistic works may be made or imported unless:

  1. they were contracted before the publication of the consultation document at 16.30 on 28 October 2015;
  2. permission has been granted by the rights holder; or
  3. an exception to copyright applies under the CDPA 1988.

And from 28 January 2017, no replicas or unauthorised copies created in reliance on s.52 should be dealt with. By this date, unless an exception to copyright under the CDPA 1988 applies, all of these items must be depleted (sold or destroyed) or must have received authorisation by the rights holders.

Furthermore, it has to be noted by those affected businesses, organisations and individuals that the change has retrospective effect and industrially exploited artistic works whose copyright protection had expired under the 25 year rule will have copyright protection ‘restored’.

To explain what is meant by “restored”, here is an example: an artistic work was created by person “A” in 1985. More than 50 copies were manufactured and sold by “A” in that same year. “A” died in 2015.

Under Section 52, this artistic work would have had copyright protection until 2010. But following the change in law, that same work would be protected until 2085.

What to do now?

Following the change in the law, anybody who have copied artistic works should assess if any changes to their business models and product ranges have to be made, especially if they were relying on section 52. Some minor or substantial changes might have to be implemented in order to avoid being in a situation of copyright infringement.

To assist affected individuals, organisations and businesses, the IPO has prepared Guidance, which is very useful to obtain general information on the repeal of section 52 and its consequences. However, it does not provide legal advice which means that independent legal advice should be sought, if required.

Should you wish more information on copyright or any other IP protection in the UK or the European Union, the TrademarkHub team can assist you and your business with protecting, exploiting and enforcing your intellectual property rights. Please do not hesitate to get in touch.

Protection under rules of ‘passing off’

Passing off law

It is often believed that the only way to effectively protect your company’s sign (name, slogan, logo, colour, shapes etc) is to obtain a trade mark registration. This might be true in most cases, but in others it is also or only possible to protect your sign through other intellectual property (IP) rights. Copyrights, unregistered designs and laws of unfair competition can potentially be used when another party is unlawfully using any of your signs.

In the UK, one form of protection that is often relied upon (sometimes in conjunction with claims for registered trade mark infringement) is the law of passing off, which is a common law right. Passing off is used to protect signs that cannot be registered for e.g. packaging, get-up or colours,  or signs that have not been registered but have acquired goodwill.

So what is passing off?

Passing off is defined as making false representation which is likely to make customers believe that a company’s goods or services are those of another. Usually, this happens when someone has copied someone else’s sign e.g. packaging, slogan, trade name… without getting permission, and uses it in a way that creates confusion amongst the public.

What are the passing off requirements?

In order to prove passing off, you will have to fulfil three essential requirements which were set in the Jif Lemon case:

  1. Goodwill: you have to establish that your goods or services have acquired goodwill. There is no particular definition of goodwill in relation to passing off, however it has been described as “the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom”. Goodwill and reputation are often connected but goodwill should not be confused with reputation. Goodwill isn’t built only because you are reputable in the country, but also from actively selling your goods and/or services in the country to acquire goodwill.
  2. Misrepresentation: you have to demonstrate that the public has been led or will likely be led to believe that the goods and services provided by the defendant are yours or have some association/connection to yours. The fact that the defendant has intentionally used your goodwill or not is irrelevant.
  3. Damage: you have to establish that you have suffered or will likely to suffer damage due to the misrepresentation.

Each passing off action is determined on its own individual facts, but they all require the fulfilment of the three above elements. If you do not manage to provide enough evidence to fulfil one of those requirements, your passing off claim will fail.

It is important to be aware of the fact that there exists an extended form of passing off which was established in the Advocaat case. In that case, five characteristics need to be present to bring a valid action for passing off in the extended form. Due to the relevancy of this article, this will not be explored in details but you  can visit this link to see if this form of passing off applies to you.

Who may use passing off?

You may assume that passing off can only be relied on by big established businesses, but that is not the case . Small and medium businesses should explore the possibility of seeking legal actions based on passing off. Such actions may be brought by any traders who can prove the existence of the three requirements mentioned: goodwill, misrepresentation and damage. The tricky part for the trader is to have enough evidence to show sufficient goodwill in a certain location or among a group of customers in the UK.

When use passing off?

Trade mark registrations are highly recommended to protect your brands, because generally it will be easier and be less costly to sue an infringer. However, when you cannot rely on a trade mark registration, passing off actions should always be considered.

Moreover, it provides protection for signs which have not been registered formally or which cannot get registered (some signs are not  in compliance with trade mark law for e.g. descriptive marks or get-up). As explained above, you may rely on the law of passing off for any signs or characteristics recognised by the public as being associated with any goods and services. If you believe you can prove the existence of the three elements of passing off, you should make a claim on that basis.

The downside of passing off

We have established that passing off actions should always be considered when facing unlawful use of your brand, especially when you have no registered rights. However, you have to be aware that passing off actions have to be brought before British courts, and this is very costly and time consuming. This is because a high amount of evidence has to be presented to prove passing off. When you are a small or medium sized business, this can be very damaging and often leave you defenseless. That is why, it is important to also register your trade mark and/or design when possible, to consider all your options and never exclude other actions that could be taken.

Should you need assistance in bringing an action of passing off or any other intellectual property matters, our legal experts are available anytime Monday to Friday 9am-5pm to discuss this further.