There is little doubt, if any, that 3D printing technology is rapidly evolving and continues to do so quicker than legislation can keep up.
3D printers are an amazing technology. They produce articles or products by layering numerous sheets of material on top of each other and binding each layer together in the process. 3D printers use a range of plastic or composite materials and can also print in metals. Believe it or not they can print human cells and can be as small as a microwave oven or as large as a small room.
For an interesting story on research for 3D printed organs, see here.
Until recently, 3D printers were expensive, rare and primarily used by big corporates. That is now changing. Further, a design can be sent as a digital file and can be printed on a 3D printer across the world. Interestingly, the co-founder of Australia’s first 3D printing store (3D Printing Studios) hopes there is enough demand for the emerging technology to support a franchise network. See the full article here.
From a legal perspective, what is clear is that 3D printing is opening up opportunities not only for innovation and creativity, but also for counterfeiting and imitating designs.
Notably, in this respect, there are limitations to the most relevant intellectual property legislation, in particular the Copyright Act 1968 (Cth) and the Designs Act 2003 (Cth) such that there are gaps in legal protection for owners of registered designs.
These limitations are identified in the Advisory Council on Intellectual Property (ACIP) Recommendation Report following its review of the designs system in March 2015, namely:
- “Registered design rights are infringed by a person who “makes or offers to make a product, in relation to which the design is registered, which embodies the design that is identical to, or substantially similar in overall impression to, the registered design“, or who “imports or uses such a product for the purposes of any trade or business, or sells, or hires or otherwise disposes of such a product” (s 71 of the Designs Act). A digital representation of a product design is not in itself an infringement of a registered design right.
- Non-commercial or personal importation or use of a product embodying a design does not infringe registered design rights; and
- Secondary liability is unclear and limited“.
The Report explains that secondary liability may take three forms:
- Liability for selling, importing or other commercial dealings with infringing items;
- Liability as a ‘joint tortfeasor’, which is where one person is held liable for the infringements committed by another and where those two persons have acted in concert to achieve a common end of infringement; and
- Liability for authorising infringement by another person. In this context, “authorisation” has a particular meaning extending beyond principal/agent relationships. For example, in the copyright context, authorisation liability has been used to pursue parties that provide software or websites used to exchange infringing copyright content.
While the Designs Act covers (a) and (b) above, it is not clear that (c) is covered.
A further issue arises in circumstances where copyright / design overlap provisions in the Copyright Act apply. That is, drawings for a product would be protected by copyright and a third party who scans a product created from the drawings and creates a 3D CAD file could infringe copyright in those drawings. However, if the design for a product has been industrially applied or registered, then the copyright / design overlap provisions apply and it would not be an infringement of copyright in the drawings if the product is scanned in and a reproduction of the product is then made, sold etc.
In practice this means that a software provider or website would not be liable for infringing registered design rights if they provide 3D CAD files, even if this conduct enables consumers to print products embodying a registered design.
ACIP was “not currently minded to recommend reforms in this area” for the following reasons:
- Not every scan of a 3D product is a product infringement in the form of making or selling products;
- In present Designs law, the exceptions to infringement are very narrowly drafted;
- There is current debate about the appropriate scope of liability for authorisation in copyright and until that is settled, it is premature to consider how similar concepts ought to apply in the context of design law
ACIP said that this an area for ongoing monitoring. We agree and will continue to watch this space with interest.
In the meantime, are we OK with the current gap in protection for owners of registered designs?