Digital Economy Act 2017: Key IP Provisions

The Digital Economy Act 2017 received Royal Assent in the wash-up period before the dissolution of Parliament, and has finally been published. The Act contains a number of interesting provisions relating to IP. Dates for these provisions to take effect have now been confirmed.

Maximum sentence for copyright offence of communicating copyright works to the public will increase to ten years

The Act contains a number of controversial measures.  In particular, the maximum possible sentence for communicating copyright works to the public (in s.107(2A) of the Copyright, Designs and Patents Act 1988) will be extended from two years to ten years from 1 October 2017.

A person will be criminally liable if they communicate a copyright work to the public and they:

  • know or have reason to believe that they are infringing copyright in the work and
  • either (i) intend to make a gain for themselves or another person or (ii) know or have reason to believe that communicating the work to the public will cause loss to the owner of the copyright work, or will expose the copyright owner to a risk of loss.

There is concern that this will put many at risk of committing criminal offences making them subject to a severe penalty, and potentially result in an increase of so-called ‘copyright trolls’. In response, the Government has indicated that the 10 year penalty will only be applied in the most serious of circumstances, and also that small unintentional infringements are unlikely to amount to criminal offences.

There is also an increase in the possible sentence for infringing a performer’s ‘making available’ right.

Repeal of section 73 CDPA, which currently provides a defence where copyright works are immediately retransmitted by cable in the jurisdiction that they are first broadcast from 31 July 2017. 

This provision has been under the spotlight for some time, in the light of the TVCatchup case.  The ramifications of that case, and the repeal, are discussed in this briefing – in particular, it will be interesting to see if this opens up a new market for rights owners.

Web-marking for UK and EU registered design owners from 1 October 2017.

Once the provision is in force, a product can also be marked or stamped with a relevant internet link – instead of the design number – as a way of countering any defence that an infringement was ‘innocent’: innocent infringers are not liable for damages. This replicates a regime already in place for patents, making it easier for designers to put potential infringers on notice of their right, as they will simply need to update the website page when details of registrations change.