A recent Chancery Division verdict underlines the significantly reduced copyright protection for certain types of branding. For life plus 70 read just 15 years for some industrially reproduced designs. Where should brand owners be checking their calendars? Jessica Stretch reports
Who: Fearns t/a Autopaint International v (1) Anglo-Dutch Point and Chemical Company Limited (2) De Beer Lakfabrieken and Others
Where: High Court, Chancery Division
When: 2 May 2007
Law stated as at:30 May 2007
The claimant ("Mr Fearns") built up a successful business under the name and trade mark AUTOPAINT. The business consisted of his own paint shops and franchisees to which he supplied Autopaint-branded tins of paint. Mr Fearns bought paint from various companies including the second defendant ("De Beers"). The first defendant ("Anglo-Dutch") was the UK distributor of De Beer.
In 2004 Anglo-Dutch began selling tins of paint directly to Autopaint franchisees under the Autopaint brand. Mr Fearns sued Anglo-Dutch, De Beer and their representatives for trade mark infringement, passing off, malicious falsehood, copyright infringement and breach of contract. The defendants argued that they were at all times acting within the Mr Fearns' consent. Mr Fearns argued that even if there was some form of limited consent to allow the defendants to sell to the franchisees, it did not go as far as to sanction what the defendants ultimately did.
The issue of consent was difficult to resolve because the judge found many of the witnesses unreliable and there was a lack of documentary evidence as many of the agreements in question were oral. On the evidence, the judge decided that an agreement (the "Agreement") was reached in May 2004 under which De Beer could sell directly to the franchisees in circumstances where Mr Fearns was unable to supply the product. The judge held that the Agreement did not extend to sales of any product which the franchisee was able to obtain from Autopaint.
Where the selling of products under the Autopaint brand was held to be unauthorised, the defendants were liable for trade mark infringement and passing off. The claim for breach of the Agreement succeeded to the extent that Autopaint-branded tins were supplied other than to the order of Mr Fearns.
The claim for copyright infringement failed because of the operation of section 52 of the Copyright, Design and Patents Act 1988. Section 52 operates to reduce copyright protection from the usual author's life plus seventy years to fifteen years where the work in question is made by an industrial process and marketed. However, certain articles fall outside the scope of section 52, namely "printed matter primarily of a literary or artistic character". Mr Fearns argued that the limitation set out in section 52 should not apply to the paint tin labels featuring an Autopaint design and logo. The judge rejected this claim and held that limited copyright protection applied because the articles in question were paint tins and not printed matter of primarily literary or artistic character.
Why this matters:
This case highlights circumstances in which there is reduced copyright protection for industrially produced articles. Copyright owners may regard their branded materials as works of "printed matter primarily of a literary or artistic character" and thus not subject to the fifteen-year limitation. However, this judgment shows that where an article has been made by an industrial process and marketed, the fact that it includes branding such as a label does not necessarily prevent section 52 operating to reduce copyright protection to fifteen years.
The rationale for this rule is that for designs capable of being protected as registered designs, such as surface decoration, there should be no need for additional copyright protection lasting longer than the 15 years a registered design lasts. But the question is when does a logo on packaging cease to be "printed matter primarily of a literary or artistic character" and thus lose, at a stroke, what could be over 100 years' protection? The judgment in this case on the point is short and unsatisfactory and leaves brand owners in a dilemma.
Trade mark registration rules
Fortunately trade mark registrations are not susceptible to these technicalities and are everlasting so long as the renewal fee is paid every ten years and the brand is kept in use so as not to be vulnerable to revocation on grounds of 5 years' non use. Following this judgment, although the verdict on this point seems eminently appealable, brand owners will be well advised not to rely on copyright protection in preference to trade mark registration if the latter is available.
This case is also an important reminder to businesses to document verbal agreements and record conversations. Accurate records minimise the risks of litigation and, in the event of litigation, reduce the number of issues for the court to resolve.