Merchandising Rights Time Bomb

When an artwork is mass-produced in three dimensions by or with the artist’s permission, UK law substantially reduces the artist’s copyright protection in the future. This rule is a time-bomb: it operates only 25 years from the end of the year in which such merchandise is first marketed. This rule is little known by most artists and merchandisers, partly because it is buried deep within the many complex provisions of UK copyright law, but mainly because of its latency.

In February 2015 the UK Government announced the abolition of this rule from 6 April 2020. The main reason for the five-year delay in repealing this 3D mass-production of artworks rule is to give breathing space for merchandisers to adjust their business models and make plans for negotiating copyright licences from artists whose works – because of the current rule – are effectively copyright-free, but which will not be so in five years’ time.

Let us try to clarify which artworks are caught by the mass-production rule, and how it currently operates. Two oft-quoted examples will serve to illustrate the basics. An artist licenses a painting to be reproduced on table mats for retailing: the rule then operates to allow others to reproduce the artwork not only on table mats, but also on crockery or wallpaper or material fabric, 25 years after the first licensed retailing. In other words, the painting is fully protected by copyright for only 25 years, after which period others are free to copy it by making a 3D object of any description based on the original work. So if an artist draws a futuristic motor car published in a science-fiction magazine – say the Batmobile – and subsequently licenses toy cars to be manufactured based on the original drawing, rival manufacturers may make not only toys but also real cars based on that drawing 25 years after the first licensed retailing.

The legal rationale in both cases is that the artist has transferred the original creation of a fine artwork (copyright-protected for the artist’s lifetime plus 70 years) into the realm of 3D mass-produced articles that will be protected for no longer than any other commercial designs (of products and packages) that are design-protected for up to 25 years from marketing.

Not all artworks are caught by the current 3D mass-production rule: notably ‘works of sculpture’. There is no definition of sculpture in UK copyright legislation, but its meaning has been the subject of recent authoritative interpretation by the UK’s Supreme Court in a case that also serves to illustrate the current merchandising rule (and sculpture exception): Star Wars.

The case concerned the original 1977 movie Star Wars Episode IV: A New Hope. A lawsuit was filed by George Lucas and his Star Wars merchandising companies against an English props maker, Andrew Ainsworth. In 2004 Ainsworth had produced replicas of the white Imperial Stormtrooper uniforms used in the film, which he had sold in the US. Lucasfilm claimed ownership of copyrights in the uniforms, and violation thereof by Ainsworth.
Lucasfilm’s merchandising of miniature models of Star Wars characters, including the Imperial Stormtroopers and their armour, for 25 years – from, say, 1978 to 2003 – meant that Ainsworth was able to claim that his copying and merchandising of the helmets from 2004 was permitted by the UK’s 3D mass-production rule. Against this, Lucasfilm argued that the official miniature models were ‘sculptures’ not caught by the 3D mass-production rule, and so remained protected by copyright.

In 2011 the UK Supreme Court rejected Lucasfilm’s arguments, and determined that any Star Wars uniform was not ‘sculpture’ within the meaning of UK copyright legislation, saying: ‘It was a mixture of costume and prop. But its primary function is utilitarian. While it was intended to express something, that was for utilitarian purposes. While it has an interest as an object, and while it was intended to express an idea, it was not conceived, or created, with the intention that it should do so other than as part of character portrayal in the film. That, in my view, does not give it the necessary quality of artistic creation … It was the Star Wars film that was the work of art that Mr Lucas and his companies created. The [uniform] was utilitarian in the sense that it was an element in the process of production of the film.’

Utilitarianism is an important factor in a further notable exception to the 3D mass-production rule: ‘works of artistic craftsmanship’. As with ‘sculpture’ there is no definition of ‘works of artistic craftsmanship’ in the UK’s copyright legislation. But unlike sculpture, its meaning has not been the subject of clear authoritative interpretation by the UK’s courts, often leaving designer-makers and merchandisers – and their legal advisers – uncertain about the copyright status of a 3D work (that is not a sculpture but is, say, designer jewellery or furniture or fashion). To cut through such uncertainty in the context of the current 3D mass-production rule, UK law offers some help via its definition of what has been termed ‘mass-production’ and which the law specifies as ‘an industrial process’.

A 3D work (of artistic craftsmanship) is caught by the basic ‘industrial process’ rule if ‘it is one of more than 50 … copies of a particular … work’.  Put another way, it does not matter whether the 3D work is made by hand or by some mechanical/digital process; what triggers the (reduction of copyright protection) rule is the number of copies made rather than the precise means of their production.

Furthermore, not all mass-productions trigger the reduction of copyright protection rule. Notably, the law does not treat the making of multiple copies of a film of an artwork as making copies of artwork by an ‘industrial process’. Nor does the law treat 2D printing of text or artwork as triggering the rule, including for example ‘book jackets, calendars, certificates, coupons, dress-making patterns, greetings cards, labels, leaflets, maps, plans, playing cards, postcards, stamps … and similar articles’ – artwork for all of these articles remain fully protected by copyright law, and suffer no reduction even if 51 or more copies are made and marketed.

Why has the government decided to abolish the current mass-production copyright reduction rule? It is evidently a very complex, uncertain, and therefore messy rule to understand and work with. UK law is out of step with other EU member states, many of which make little or no reduction in copyright protection for artworks that are mass-produced, and the UK government has been required by the EU to bring its visual art copyright in to line accordingly.

So as from 6 April 2020 all artistic works will be protected by copyright law for the artist’s lifetime plus 70 years post-mortem. In relation to the problematic legal definition of works of artistic craftsmanship, the ‘51 or more copies’ regulation will presumably also be abolished from 6 April 2020, leaving the courts to decide on a case-by-case basis whether a 3D work is more utilitarian (and without copyright protection) than artistic (and within copyright protection). The current UK government says it will not legislate to clarify the matter, but perhaps over the next five years a new government may be persuaded to recognise the value of doing so.

NOTE (added December 2016): UK Government changed its five-year delay for implementing the changes described above, by bringing them into law from 28 July 2016 (with the special transitional provisions described above also being shortened to 6 months). This means that the 25 year copyright rule for mass-produced 3D artworks will be abolished from 28 January 2017, on and after which date the length of copyright for such works will be the same for all artworks: artist’s lifetime plus 70 years after death.
© Henry Lydiate 2015

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This article is from the Artlaw Archive of Henry Lydiate's columns published in Art Monthly since 1976, and may contain out of date material. The article is for information only, and not for the purpose of providing legal advice. Readers should consult a solicitor for legal advice on specific matters. Artists can get free online legal information from Artquest.