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The ‘Third Industrial Revolution’: 3D Printing Technology and Australian Designs Law
MITCHELL ADAMS[*]
Three-dimensional (3D) printing and scanning, touted as the next disruptive technology, is already upon us. Merging the physical and digital, 3D printing and scanning is having profound effects on how we design, share, copy and manufacture objects. Consequently, this article considers the previously unexplored intellectual property implications for registered design owners. In doing so, it examines the technological background to 3D printing and scanning against a backdrop of consumer access to these technologies. With the advent of 3D scanners and 3D printers any user can (re)produce unauthorised versions of an object that embodies a registered design in digital or physical form. This article considers the effectiveness of Australian registered design rights to combat infringement of this kind. It is concluded that the Designs Act 2003 (Cth) is unable to deal with this nascent technology.
In 1956, Philip K. Dick in his science fiction story ‘Pay for the Printer’, imagined a future of mass reproduction and copying.[1] His vision was of a world where human consumption relied on en masse printing of reproduced objects. As a result, humanity forgot the art of design, construction and manufacturing. More than 50 years later, the future of mass reproduction is nascent; and we now have the means to reproduce and print objects. This class of technology is known as three-dimensional (3D) printing, and it has the potential to introduce a new technological-economic paradigm.[2]
The Economist has previously declared that 3D printing would prompt the “third industrial revolution”.[3] The subsequent publicity surrounding 3D printing technology appears to be well-founded. Thanks to established online and local retailers, such as Amazon (globally) and Officeworks (locally), 3D printing technology has increasingly become accessible to consumers without the need for ownership of a 3D printer.[4] In much the same way that the inkjet photo printer spelt the end of the photo lab, 3D printing technologies make it possible for consumers to copy, print and replicate 3D objects from the comfort of their home. To date, the most common items printed by consumers through third party service providers include figurines, art, electronic device accessories, and fashion accessories.[5]
Copying and sharing of objects is potentially problematic for owners of intellectual property rights, given the ubiquity of the internet. Online file-sharing platforms hosting 3D objects and third-party 3D print services are growing.[6] Comparisons have been drawn between this development and the culture and practice that surrounded the sharing of digital music files,[7] and from this discourse, intellectual property and piracy concerns have emerged. [8]
Previous commentary on the intersections between 3D printing technology and Australian intellectual property law has primarily focused on the main intellectual property regimes: patents, copyright and trade marks.[9] There remains, however, a lack of detailed consideration of the intersections of 3D printing with Australian designs law.[10] The Australian Advisory Council on Intellectual Property (ACIP) has questioned the effect of 3D printing technology on Australia designs law,[11] but attracted only one detailed submission.[12] This article aims to fill this gap by exploring the legal issues that may arise as a result of consumer-accessible 3D printing technology, with a focus on the application of designs law and the enforcement of registered designs in Australia.
This article will draw upon the existing discourse surrounding 3D printing technology from the perspective of designs law. The examples provided in this article focus on retailers and service providers that are widely known and likely to be accessed by consumers. Given the emergence of third party 3D printing services online and the ubiquity of the internet, it is argued that consumers now have access to technology that can readily replicate objects that embody a registered design. The effectiveness of Australian registered design rights to combat infringement will then be discussed. It will be argued that the Designs Act 2003 (Cth) (‘the Act’) is limited in its ability to respond to this nascent technology. With the advent of consumer-ready 3D scanners and 3D printers, a user can (re)produce unauthorised versions of the object in a digital or physical form. Consequently, the future enforcement of registered design rights will become more problematic. With the third industrial revolution already here, it is essential for the area of designs protection to be re-examined.
Before discussing specific designs law concerns in detail, it is first necessary to examine the technology underpinning 3D printing and consumer accessibility of the same. Three main components make up 3D printing technology: the 3D printer, 3D scanner and Computer-Aided Design (CAD) software.
A user equipped with a 3D printer and a computer-generated 3D model can reproduce products that embody a registered design. Although not technically printing in the traditional sense, 3D printing utilises the principles of additive manufacturing to create objects.[13] At its simplest form, this method involves the successive layering of materials that make up a 3D object.[14]
Consumer-ready 3D printers have predominantly taken the form of ‘selective deposition' or ‘selective binding’ printers.[15] ‘Selective deposition’ printers are currently the most common and affordable in the market.[16] During the layering process, heat, light, or chemicals are used to bind layers together.[17] In Australia, the Makerbot range of desktop printers start at a retail price of AUD$1,375.[18] 3D Systems’ Cube 2 retails for AUD$1,399.[19] At the time of writing of this article, 3D printers were also for retail sale in Australia, starting from AUD$398.[20] Alternatively, ‘selective binding’ printers utilise a bath of raw material and an external energy source, such as a laser or ultraviolet light, to bind the raw material together in the same layering process.[21] These types of 3D printers are typically expensive and only utilised commercially, however, Formlab has developed the Form 1+ and Form 2 desktop stereolithography 3D printers for mainstream consumers, starting at US$2,199.[22]
Importantly for designers, before printing can begin, a user requires a ‘3D CAD file’ to 3D print an object. The file comprises a computer-generated 3D model that instructs the printer on what and how to print.[23] Users employing CAD software, such as AutoCAD or SketchUp,[24] can either design 3D models from scratch or use a 3D scanner to copy existing objects. Completed designs are saved and then converted into a file format that a 3D printer understands.[25] Once the file is passed to the 3D printer for manufacture, internal firmware slices up the design into layers for printing.[26] CAD’s versatility, as a digital object, not only affords greater control over the creation of the model but also facilitates the sharing of data between users online.
3D scanning’s utility lies in turning existing physical objects into 3D digital models ready for printing. Users can create a 3D model by placing an object in front of the scanner or by moving a handheld scanner around the object.[27] Until recently, the most accurate 3D scanners were only commercially available and cost thousands of dollars.[28] With the emergence of low-cost 3D printing, however, consumer-available 3D scanners have also emerged. At the time of writing this article, ten internet crowdsourced projects have been successfully funded offering low-cost 3D scanners.[29] In addition, Makerbot offers an entry-level desktop 3D scanner for AUD$1349,[30] and 3D Systems offers a handheld option for AUD$419,[31] and an iPhone attachable 3D scanner for AUD$520.[32] Retailers such as Officeworks are now offering 3D scanning services, starting at AUD$15.[33] Digitally capturing physical objects for replication is now easy as taking photographs with a smartphone.[34]
Designs law is the category of intellectual property rights that protects the visual appearance of manufactured objects.[35] The Designs Act 2003 (Cth) (‘the Act’) provides for a system of registered designs, whereby protection is afforded to those designs duly registered on the Designs Register.[36] To be protected, there must be a ‘design’ in relation to a ‘product’, that is ‘new’ and ‘distinctive’ at the time of application. [37]
Under the Act, a design is defined as “the overall appearance of the product resulting from one or more visual features of the product”.[38] A “product” is taken to mean something that is manufactured or handmade.[39] Encompassing the design, visual features are defined to include “shape, configuration, pattern or ornamentation of the product”.[40] These features can encompass the 3D and 2D aspects of a design, and may or may not serve a functional purpose.[41] Upon obtaining registration and certification, a registered design owner has the exclusive right to deal with the product as it is represented in the design application.[42] Registration commences from its first filing (or priority date) for a prescribed five years, and an additional five years upon payment of a specified fee.[43]
Infringement of a registered design occurs when a person, without the licence or authority of the registered owner, during the term of registration does any of the following acts:[44]
(a) makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design; or
(b) imports such a product into Australia for sale, or for use for the purposes of any trade or business; or
(c) sells, hires or otherwise disposes of, or offers to sell, hire or otherwise dispose of, such a product; or
(d) uses such a product in any way for the purposes of any trade or business; or
(e) keeps such a product for the purpose of doing any of the things mentioned in paragraph (c) or (d).
Subsection (a) defines the actions that constitute primary infringement, while subsections (b) to (e) define secondary infringement. [45] These provisions have no knowledge requirement, meaning that infringement can be committed innocently or in ignorance of a registered design. Overall, this subsection enables a registered design owner to take action to prevent unauthorised copies from entering a market. Successful findings of infringement can attract remedies including injunctions, damages or an account of profits.[46] Additional damages can be awarded for flagrant infringements.[47]
Protection for designs can overlap with the protection afforded by copyright law. For example, two-dimensional (2D) drawings of a design can be protected as an artistic work. [48] The protection of 2D designs is extended to reproductions in three-dimensional form.[49] In a 3D printing context, the original 3D digital design (or 3D CAD file) can be protected under copyright and the resulting product as a registered design. However, the current Australian policy is to deny cumulative protection of artistic works commercially exploited as 3D designs.[50] Sections 74-77 of the Copyright Act 1968 (Cth) govern the copyright-designs overlap. Where a design has already been registered or applied industrially,[51] under these provisions, it is not an infringement of the underlying copyright to reproduce the work by embodying the corresponding design in a product. [52] These provisions remove copyright protection for industrially applied designs. It is outside the scope of this article to examine in detail the copyright issues with 3D printing technology.
Registered design owners may be particularly concerned that users may make unauthorised versions of their work using 3D printing technology. Using 3D printing technology, existing products that embody a registered design can be scanned and reproduced. 3D printing technology can be utilised in different ways to do so. To illustrate how users access and utilise this technology, three models are presented:
• the user model;
• the distribution model for digital designs; and
• the print services model.
Each of these models is graphically represented and explained in more detail below.
(a) A user can generate a 3D model of an existing product using 3D Scanners or CAD software; (b) a user then converts the 3D model into a printable 3D CAD file format using 3D CAD software; (c) a user then sends the 3D CAD file to the 3D printer; (d) the 3D printer prints the 3D model, resulting in a physical reproduction of the product.
To reproduce a product that embodies a registered design, a user can utilise the technologies outlined in the ‘User Model’ illustrated in Figure 1. The ‘User Model’ for 3D printing is founded on the user owning and operating each piece of technology described above.
Figure 2 - The Distribution Model for Digital Designs
(a) Multiple users use 3D scanners or 3D CAD software to create 3D CAD files of existing objects; (b) the resulting 3D CAD files are uploaded and hosted on an online file sharing services; (c) individual 3D CAD files of the object are accessible to users to download; (d) individual users can then download the 3D CAD file for printing articles.
The next online movement that has emerged within the 3D print sphere is the distribution of 3D CAD files. Demonstrated in Figure 2, websites or peer-to-peer providers can host collections of 3D CAD files, accessible for users to print at home (see Figure 1) or through a third party provider (see Figure 3 below).[53] The availability 3D CAD files online brings 3D printing activities into sharp focus. Thingiverse, the leading website that serves 3D printing communities, allows users to upload 3D models to be shared by its members.[54] Uploaded under Creative Commons licenses, designs are permitted to be copied for non-commercial purposes, provided the original source is attributed.[55] Thingiverse encourages designs to be remixed and reposted,[56] which in turn promotes an open approach to innovation.[57] Likewise, the file-sharing site ‘The Pirate Bay’, commonly known as the largest facilitator of illegal copyright downloading,[58] is moving into sharing designs of physical objects, including a category for digital files, called ‘Physibles’.[59] The organisation has said that the next step in copying is in replicating existing physical objects.[60]
As online sharing platforms such as Thingiverse and The Pirate Bay develop and grow, they will increasingly cater to consumer demand for 3D CAD files. In 2015, Thingiverse reached 1 million uploads and 200 million downloads.[61] Undoubtedly an increase in the sharing of 3D CAD files makes it easier for users to access existing designs for printing at home and thus feeds into the ‘user model’ (Figure 1) or the ‘print services model’ discussed below (Figure 3).
Figure 3 - The Print Services Model
(a) Users create and/or source a 3D CAD file to send to a third-party 3D print service provider for printing; (b) the third-party service provider supplies a 3D printer, materials and know-how; (c) the third-party print service provider prints the object and ships it to the user.
Third-party 3D print services are the alternative model for consumer access to 3D printing technology. Shown in Figure 3, third-party print services supply the equipment, materials and know-how for the creation of 3D objects. Users upload their 3D designs and pay for a printed version in a choice of materials.[62] The primary advantage of this model is that it eliminates barriers, such as cost and technical know-how, for users accessing 3D printing technology.[63] Private companies have the capital and expertise to offer users access to 3D printers, higher print resolutions and diverse printing materials.[64]
The commercialisation of the 3D printing process has been the cornerstone of Shapeways’ business model. Taking the best of both worlds, Shapeways allows users to print their uploaded designs or to choose existing designs from their website.[65] Claiming to be “more than a 3D printing service,” Shapeways allows its users to turn their ideas into products.[66] In turn, Shapeways have created a ‘marketplace’ where designers can be part of a web-facing storefront that sells their designs to customers.[67] When users purchase a copy, Shapeways manufactures the object, manages the financial transaction and shipping.[68] This model appeals to both users who want to access end products and designers who want the exposure that a marketplace provides.
Services in Australia are now also moving into the same space as Shapeways. Officeworks, for example, now offers 3D printing services in their Melbourne City retail store, just as they offer traditional printing services.[69] With 3D scanning services starting at AUD$15 and 3D printing services starting from AUD$3 per 15 minutes of printing time, consumers can print on demand. The print services model Shapeways and Officeworks espouse appears to remove the barriers inherent in accessing 3D printing.
From an enforcement perspective, there are various issues when users reproduce registered designs through the activities represented in Figures 1, 2 & 3 above. The following sections will demonstrate that registered design owners can be powerless to enforce their registered designs when they are reproduced using 3D printing technologies.
Users who utilise a 3D printer to make an object that embodies a registered design without the registered owners’ authority during the term of the registration are infringing under the Act.[70] Manufacturing objects layer-by-layer using 3D printing technology satisfies the primary infringement provision in section 71.[71]
A 3D printed object will infringe a registered design where a user has made a product and that product embodies the registered design. Despite the lack of definition for ‘make’ under the Act and any case law involving 3D printing technology, the creation of objects using additive manufacturing (or 3D printing) would likely satisfy this requirement. The Act does not differentiate between manufacturing practices, and would likely be interpreted in a technology-neutral way to apply to articles made through 3D printing processes. Previous infringement cases involving traditional manufacturing to create infringing articles would likely inform the court’s treatment of additive manufacturing cases under the Act.[72]
Where an alleged infringing object has the identical appearance to the registered design, or its overall appearance is substantially similar to the registered design, it will embody that registered design.[73] For example, where a 3D printed iPhone case is identical in appearance to a registered design, that 3D object will have embodied that design. Additionally, where a printed product is substantially similar in overall impression to the registered design, the product may still infringe. An assessment of substantial similarity compares the allegedly infringing product with the registered design.[74] Under the Act, a person cannot avoid a finding of primary infringement by merely making minor or insignificant changes to the design, if the overall impression of the resulting design is the same.[75] Consequently, altering the appearance of the resulting product may still infringe. Therefore only those prints that are substantially different to the original registered design would escape liability for primary infringement. A 3D printed article may be substantially different where, for example, it alters the dimensions of the registered design.[76]
Users who engage with a service provider to print a product that embodies a registered design (depicted above in Figure 3) may also be a primary infringer under section 71(1)(a). Under section 71(1)(a), the reference to a person who ‘makes’ a product has been held to include reference to a person who “directs, causes or procures the product to be made by another”.[77] Jessup J in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (‘Review’) explains that the application of the provision does not restrict itself only to the manual task of making the product.[78] Rather, his Honour held that the Act embraces the circumstance of an independent contractor manufacturing a product at the direction of a principal.[79] Consequently, section 71(1)(a) is constructed with the general law principles of vicarious liability in mind.[80] It is in these circumstances that a director or procurer will be liable for the making of the product. Interestingly, Jessup J’s interpretation treats ‘making’ and directing or procuring as one in the same, for which the director/procurer is responsible.[81] Therefore, when a user uploads a 3D CAD file to an Australian service provider’s website for printing, they appear to be committing a primary infringement as a principal and in procuring the making of a registered design.
The position is less clear when the manufacturer operates outside Australia. Somewhat in tension with Review is Gordon J’s judgment in Led Technologies Pty Ltd v Elecspess Pty Ltd.[82] Her Honour took the view that an Australian-based director or procurer is not a primary infringer when the product is manufactured overseas.[83] Under the Act, acts of infringement have an implied territorial limit.[84] Therefore, there is no primary infringement when a person makes or offers to make a product embodying an Australian registered design offshore. Gordon J took the view that to impose liability would unfairly subject foreign companies to liability in Australia.[85] Given Jessup J’s comments in Review, acts of directing or procuring emanating from Australia and sent overseas cannot be severed from the actual making. Therefore, a positive finding of infringement presently requires both acts to take place within Australia. Currently, mainstream 3D printing services such as Shapeways operate overseas. [86] Consequently, users who procure a 3D printed object with an embodied registered design from an offshore print service would likely avoid liability as a primary infringer.
Given the discussion above, secondary infringement becomes relevant. Subsections (b)-(e) prohibit dealings with products once created. Of particular interest is subsection (b), which makes it an infringement to import an unauthorised product into Australia for sale or use for the purposes of trade or business.[87] When users procure a 3D printed infringing object, it does not matter that the article was manufactured offshore, as the infringing act occurs within Australia. However, importation must be for commercial purposes. Therefore, users procuring a service provider to print a product for private and domestic use would not be infringing under subsection (b). Arguably most of the activity occurring under the ‘Print Services Model’ is likely for private and domestic use.
With the introduction of 3D scanning, a registered design owner may be particularly concerned with the digital reproduction of an existing product that embodies their registered design. In this context it is the design that is being directly reproduced in digital form. This type of copying is potentially problematic for design owners if the 3D CAD file appears online (shown above in Figure 2), and feeds back into the other two models. [88]
Under the Act, it would not be an infringement to create a digital copy of a design for private or non-commercial purposes. 3D scanning that aims to create a 3D CAD file is unlikely to be primary infringement. Satisfying section 71(1)(a) requires the making of a “product”, where a product is defined as a “thing that is manufactured or handmade”.[89] A computer-generated 3D model would unlikely be interpreted in this way. The 3D CAD file is rather a digital representation of the product and not a product created by the registered owner that exercises any of the exclusive rights in the registered design.[90] Ultimately, the 3D CAD file would be regarded as a digital precursor that produces a product, which once printed is a copy of the registered design.
On the other hand, a person would infringe a registered design if they use the “product in any way for the purposes of any trade or business”.[91] Arguably the words “in any way” are broad enough to capture 3D scanning. However, the operative words are “for the purposes of any trade or business”. A user would likely infringe if they 3D scanned an existing product and offered it for sale. Therefore, a user placing a 3D scanned object on an online platform for sale (such as the Shapeways Marketplace) would likely be considered infringing activity. In contrast, scanning for personal and non-commercial purposes and placing it on a platform such as Thingiverse would remain an acceptable activity under the Act.
A further complication exists where a user utilises 3D printing to print spare parts. The right of repair defence contained in the Act permits individuals to use a registered design to repair the overall appearance of a complex product. Under the Act, a registered design will not be infringed where a person uses a product embodying a registered design to restore the overall appearance of a complex product in whole or in part.[92] Here a complex product means an object comprising of at least two replaceable component parts permitting disassembly and re-assemble of the product.[93] To satisfy the defence, the user must be 3D printing the part for the purpose of “repair”.[94] In relation to the complex product, repair includes: restoring or replacing decayed or damaged parts, replacing incidental items when repairing, and carrying out maintenance.[95] Finally, the repair must restore the products overall appearance. Printing parts that repair internal and functional aspects of a complex product would therefore not satisfy the defence.[96]
Accordingly, 3D printing of objects that solely restore the overall appearance of a product would not constitute an infringement of a registered design.[97] Bradshaw, Bowyer and Haufe identified the printing of spare parts as a likely application of consumer 3D printing.[98] The authors assert that the printing of spare parts could provoke intellectual property disputes.[99] Spare parts are an attractive use for 3D printing, [100] and in Australia the 3D printing of spare parts would remain an acceptable activity provided it restores the overall appearance of the product.[101] The provision of spare parts on online file-sharing services therefore becomes a legitimate activity for users.[102]
Where multiple parties engage in the reproduction of a registered design, it can become impractical for registered design owners to target each individual for their allegedly infringing activity. It can be more economically efficient to target those groups immediately responsible for infringement.[103] For example, a manufacturer who makes and sells unauthorised copies is a more attractive target, rather than individual consumers who may infringe by subsequently exploiting a product for commercial purposes. Targeting the manufacturer also helps break the supply chain that leads to further infringement.[104]
In addition, registered design owners may regard it as most concerning that consumers can use existing manufactured products to reproduce the design digitally for sharing online (as in Figure 2) and give access to other users who then print the design (via the methods depicted in Figures 1 and 3). In this circumstance, individual users who print a product that embodies the registered design are responsible for the majority of infringing activity. Consequently, registered design owners may wish to target those groups they perceive as facilitating infringement in order to break the supply chain that leads to unauthorised copies.[105]
What follows is an examination of the activities that may occur online in conjunction with 3D printing technology, and consideration of whether the Act can be utilised to target those service providers who facilitate infringement.
3D print service providers that manufacture unauthorised products embodying a design are desirable targets for infringement proceedings. As mentioned previously, it is more economically efficient to target services such as Shapeways or Officeworks as they have direct control over the printing of individual objects. Therefore, the entity is responsible for the acts of ‘making’ a registered design under the Act. However, a registered design owner in Australia is unlikely to have recourse under the Act because the operation of the infringement provisions are confined to the territorial limits of Australia.[106]
As noted, a service provider printing an unauthorised product will only infringe the registered design if the act of printing occurs within Australia.[107] Therefore, service providers that operate offshore escape liability for primary infringement. With popular services such as Shapeways currently residing overseas, it is not feasible to claim design infringements against them. On the other hand, providers such as Officeworks may become desirable targets for registered design owners on the basis of the services they offer. However, on a practical level, it may be difficult to anticipate or quantify the printing of infringing articles.
Alternatively, registered design owners may wish to target online file-sharing services that supply unauthorised digital copies of registered designs (represented in Figure 2), in much the same way Napster and Kazaa were pursued for authorising infringing acts under copyright law.[108] Commentators have suggested that the same trend could develop for 3D printing and sharing of 3D CAD files. [109]
However, a key difference emerges between peer-to-peer file-sharing services that facilitate the illegal distribution of music and film content and the file-sharing services that host 3D CAD files. The difference lies in the nature of the content found online. While the former gave access to infringing content,[110] services such as Thingiverse arguably host instructional files that assist in producing copies of a design. Such files themselves may not be infringing content. In addition, questions have previously been raised as to whether the creation and distribution of these files are in themselves an infringement.[111] As discussed previously, the 3D scanning of a product would not infringe a registered design if the 3D scanning is incidental to any of the acts contemplated under section 71 of the Act.[112] Additionally, given the operation of the copyright-designs overlap discussed previously, there would be no infringement of any copyright subsisting as an artistic work in the original design drawings.[113] Therefore, those files appearing on free services such as Thingiverse would not be infringing content. This difference may cause registered owners to wonder whether they could take meaningful action to combat the sharing of their design online.
As the above discussion demonstrates, an important question emerges as to whether registered design owners can take meaningful action against intermediaries who facilitate the infringement of their registered designs. The following two sections examine the possible liability service providers may face on a statutory and common law basis when targeted as intermediaries for infringing activity.
Under the Act, the registered design owner has the exclusive right to authorise another person to do any of the activities mentioned in subsections 10(1)(a)-(e).[114] Interestingly, there is no corresponding provision that prohibits the authorisation of infringing activity by a person who is not the registered design owner. There is no explanation for its absence in the explanatory memorandum for the Designs Bill 2003 or the Australian Law Reform Commission’s 1995 report into designs law. It appears that liability is limited to the acts specified in section 71.
Despite this, it has been suggested that even though the Act is silent on authorising infringing activity, a person who participates in this behaviour can still be liable for such conduct.[115] Rothnie and Lahore claim, in drawing a parallel with the Patents Act 1990 (Cth), that the presence of section 10(1)(f) is enough to impose liability for authorising infringing activity under the Act.[116] They justify the claim by illustrating that the presence of the exclusive right to authorise the use of a patent has been used to impose liability for authorising infringing activity under the Patents Act.[117] They maintain that the Designs Act should be treated in the same way. However, the position under the Designs Act is dissimilar. The Patents Act, in framing the acts of infringement, turns to the patentee’s exclusive rights.[118] On the other hand, the Designs Act expressly defines infringing activity.[119] It may be concluded that, with a prescriptive provision for infringement and an absence of authorisation of infringing activity, Parliament purposefully left authorisation law out of the designs regime.[120] Rothnie and Lahore suggest that its absence is a result of the primary and secondary infringement provisions, which already account for someone authorising another to make or sell a product that embodies a design.[121] As discussed previously, primary infringement does extend to include principles of vicarious liability. However, the section may not extend so far as to include the concept of authorisation that is seen in copyright law.[122] On balance, it appears that authorising infringing activity cannot be imposed on service providers as a distinct head of liability.
With an absence of authorisation for designs infringement in the Act, registered owners could turn to the common law action of joint tortfeasorship. This action is an alternative basis for imposing liability on service providers residing in Australia. This action has previously been used in the designs law context to impose personal liability on directors for companies infringing a registered design.[123] Furthermore, this common law action is available to registered design owners alongside any actions for designs infringement.[124]
Liability can be imposed on service providers, along with 3D printing users, if both parties are characterised as joint tortfeasors; that is, that they have acted under a common design with those who do the 3D printing, to infringe the registered design. For parties to be considered joint tortfeasors “there must be a concurrence in the act or acts causing damage, not merely a coincidence of separate acts which by their conjoined effect caused damage”.[125] Moreover, joint tortfeasors need to have acted in concert to achieve a common end. Some level of connection between the parties is required, more than a mere facilitation of the infringement.[126]
Potential joint tortfeasor relationships are present between users, print services and online file-sharing platforms in Figures 2 and 3. What follows is an examination of whether those relationships would attract liability under joint tortfeasorship.
When it comes to hosting 3D CAD files online, the relationship between users and online file-sharing services is unlikely to attract joint liability for two reasons. First, for a successful action of joint tortfeasorship, there must be an initial primary act of infringement.[127] As discussed above, the 3D scanning of existing products is unlikely to attract user liability for designs infringement. Therefore, in the absence of an infringing act, the hosting of 3D scanned designs would be unlikely to support the common law action. Second, assuming any reproductions are infringements, it would be difficult to establish a relationship that exhibits a common intent to infringe. It is not likely that an Australian court will impose joint liability for a relationship between a software supplier and end users who employ the software to download infringing material. This proposition was confirmed in Cooper v Universal Music Inc., [128] where the Full Federal Court was not satisfied that a common design existed between the operators of a remote website and end users.[129]
The difference between “procuring” infringement and “mere facilitation” of infringement can help explain why 3D print services would not be found liable as joint tortfeasors. In patent law, this was dichotomy developed to express the requirements of joint tortfeasorship.[130] In this context, it was used to remedy situations where a defendant supplied goods that a third party used to infringe a patent. [131] Procurement attracts joint liability because it involves “inducing, inciting or persuading a particular infringement”.[132] Burchett, Sackville and Lehane JJ in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd have described the circumstances of procuring infringement. It is where a defendant has “made himself a party to the act of infringement; or participated in it; or procured it; or persuaded another to infringe; or joined in a common design to do acts which in truth infringe”.[133]
On the other hand, mere facilitation of infringement does not attract joint liability.[134] Mere facilitation can include situations where a defendant is selling articles that can be used for both infringing and non-infringing purposes.[135] Even if the defendant knows that the articles are used for infringement purposes, it will not attract liability.[136]
Current 3D printing services appear to supply a user with the necessary tools to infringe a design. Services such as Shapeways even have knowledge of instances of their service being used to infringe intellectual property rights.[137] However, it seems doubtful that print services are making themselves a party to the infringement. First, 3D print services take no direct role in the design of an item, and simply makes available the service.[138] Moreover, 3D print services do not actively entice users to infringe content.[139] Second, 3D print services are more likely to be seen as merely facilitating infringement. While the service can be used to infringe registered designs, it is predominantly used for non-infringing purposes. In determining liability, a court would be unlikely to prohibit lawful uses of the technology.[140] The relationship would more likely be characterised as a mere facilitation rather than procurement of infringement.
The preceding discussion highlights that given the current state of 3D printing technology and consumer access to the same, enforcement issues could be at the fore-mind of registered design owners. Furthermore, this discussion is particularly relevant in Australia, where the design registration system is experiencing increasing use. In 2015, IP Australia received the highest number of design applications on record, an increase of six per cent from the previous year.[141] This included an increase in the number of Australian resident applications, up seven per cent, which was higher than the average annual growth rate. [142] Given the limitations of the Act identified above, registered design owners will have to grapple with enforcement issues more as the technology further develops. Registered design owners may choose to respond in the following ways.
Given the emergence of 3D print services, registered design owners may shift their focus away from individuals who infringe and towards service providers, such as Shapeways and Officeworks, with a view that they facilitate the infringement of their designs. This may prompt a response to seek extended protection of their designs and a campaign to amend section 71 of the Act to introduce a distinct head of liability for authorisation. ACIP has recognised that 3D printing raises the issue as to the scope of secondary liability and authorisation for designs infringement.[143] However, ACIP concluded that 3D printing technology did not warrant the introduction of authorisation as a distinct head of secondary liability in an attempt to regulate 3D printing technology.[144]
The World Intellectual Property Organisation (WIPO) and Weinberg have both issued warnings against expanding any scope for liability.[145] Weinberg argues that 3D printing technology would be stifled in its developing stages.[146] Weinberg’s concern for the future of 3D printing services centres on providers possibly discontinuing operations due to increased costs and onerous controls as a result of being liable for end user behaviour.[147] However, his concerns may have been premature. 3D printing services, like Shapeways, should not have a problem with an expansion of liability, if they do not attract users to infringe existing rights. Shapeways have developed a Conditions of Use policy for its service, stressing the importance of all intellectual property rights, including registered designs.[148] To protect intellectual property rights, the service provider has articulated a ‘Notice and Takedown Procedure’ that removes any infringing content.[149] Under this policy, Shapeways has received and processed 833 requests to remove content from its platform.[150] Finocchiaro argues that capital dependent ventures such as Shapeways are more likely to stamp out infringing activity rather than risk their revenue.[151] Therefore, that print services that take active steps to withdraw from sale 3D printed goods which infringe, would prevent them from attracting liability for user behaviour. The existence of liability for authorisation would not stifle the development of legitimate 3D print services, and would more importantly prevent illegitimate 3D print services benefiting from infringing users.
As with all three models, the 3D CAD file plays a central role to the activity that facilitates physical reproduction. As a digital file, the 3D CAD file can end up online for users to download and print.[152] Importantly, when the provisions of the copyright-designs overlap apply in a 3D printing context, registered design owners become powerless to enforce their rights where online file-sharing service providers host files that enable users to print products embodying a registered design.
Another possibility is that registered design owners conscious of infringement may seek to extend their monopoly to protect any digital representation of their design. To achieve protection in the digital representation of designs, designers may campaign for an infringement provision similar to how the United Kingdom’s Unregistered Design Right (UDR) protects “design documents”.[153] Section 226(1) states:
The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes ... by making a design document recording the design for the purpose of enabling such articles to be made.[154]
Taken with s 226(3),[155] it is an infringement in the United Kingdom to create a design document from an existing design for the purposes of creating copies. Fashioning a similar infringement provision for Australia would protect registered designs from the distribution of 3D CAD files for commercial purposes. Under this approach, when manufactured products are 3D scanned by someone other than the design owner, the reproduction (in the form of a 3D CAD file) becomes infringing content. Furthermore, if the act of distributing content online is interpreted as creating reproductions, only the design owner has the exclusive right to post the file online. However, the introduction of any versionof an UDR is unlikely in Australia. ACIP’s final report into the Australian designs system recommended that Australia should not introduce protection for unregistered designs.[156] The Government subsequently agreed with ACIP and indicated that the introduction of an UDR was unsupported.[157] Interestingly, on the other hand, the European Commission recently recommended reviewing whether to expand the definition of infringement to include creating a design document without authorisation.[158]
Alternatively, registered design owners may look to other business models to distribute their designs while also engaging with the 3D printing community and consumers alike. In the context of copyright, commentators are suggesting that the licensing of content through services such as Creative Commons may facilitate the growth of 3D printing technology as well as promoting a design culture.[159] Weinberg has identified that 3D objects naturally gravitate towards General Public Licenses or Creative Commons Licenses.[160] Licensing systems like Creative Commons for 3D CAD files would be desirable for designers. The files are attributed to the designer in recognition of their creativity, and allow the designer to know if their design is being utilised.[161] Shapeways and Thingiverse already provide systems of Creative Commons licences when users upload their design online.[162] However, open licenses may not be straight-forwards in a 3D printing context. Attribution becomes difficult for the resulting 3D product,[163] which can be later used to create further digital representations. Alternatively, Mendis has advocated for a “parts store” likened to an Apple iTunes store that provides editable 3D CAD files for a small fee.[164] This example is also known as a ‘trust system’, whereby information is controlled with protocols that allow only authorised flows of information to users.[165]
Given the discussion above, it is unclear how policy makers will respond, if at all, to 3D printing technology. In its review of the designs system, ACIP asked if the Act was able to deal with new technologies such as 3D printing.[166] Although ACIP received few submissions on this issue, it proposed a wholesale revision of the role of protection of designs in light of 3D printing technology.[167] ACIP was not the only organisation looking at the implications for designs law. The Australian Productivity Commission has examined the adaptability of designs law,[168] while WIPO and the European Commission have raised concerns about the enforcement of design rights in light of 3D printing technology.[169] However, it is unlikely that any legislative change will follow.
Overall, ACIP recommended no change to the designs system and the Australian Government agreed that it was premature to take any legislative action if there is no evidence of an existing problem.[170] A position that has some support.[171] The Australian Government did acknowledge that it will continue to monitor technological developments and their implications for the designs system.[172] However, it is hard to imagine that the Government could effectively monitor such advancements, especially for such a fast moving technology as 3D printing. It is more likely than not that Australian designs law will remain relatively unchanged. Designs law, in particular has a history of only sporadic legislative changes.[173]
The reality is that there is a divide between what we think of design, and its formal protection as intellectual property.[174] Designs are increasingly created and customised in a digital world.[175] However, in Australia protection is tied to physical products only, as designs law was established well before the digital revolution.[176] Opportunistically, the emergence of 3D printing and scanning technology may be the perfect catalyst to re-evaluate the protection of designs in Australia, an area that is severely underdeveloped in academic literature. Designs law also needs to be adaptable to stay relevant and effective. Further analysis is also warranted on whether the current policies reflected in the Act are being achieved.
As consumer access to 3D printing technology increases, it enables potentially cost-effective mass customisation and short-run manufacturing of articles. The fundamental shift from traditional manufacturing to consumer-accessible 3D printing creates gaps in legal protection for owners of registered designs. Designs law is currently ill-equipped to respond to the situation where products can enjoy a life in physical and digital forms. It is important, on the other hand, that any development of clearer rules for 3D printing technologies does not stifle this industry. Balancing user access to the technology with the rights of registered design owners can facilitate innovative solutions. It is more likely that online services will assist registered design owners by implementing self-regulation and innovative solutions that protect the digital equivalents of registered design owners and deter the manufacture of copied designs. Registered design owners are entitled to expect that their designs are valued and protected in a rapidly developing 3D printing technology-consumer landscape. Designs law is the only intellectual property regime that has not taken into account this shift to the digital age. It is time for a re-examination of designs law. The law should seize this opportunity during the third industrial revolution.
[*] Research Fellow, Centre for Transformative Innovation, Swinburne University of Technology. The author wishes to thank the anonymous referees for their thoughtful and considered feedback. Thanks to Neil Carmona-Vickery and Amanda Scardamaglia for their comments.
[1] Philip K. Dick, Pay for the Printer, (Satellite Science Fiction, October 1956) 90.
[2] See Andrew Sissons and Spencer Thompson, Three Dimensional Policy: Why Britain Needs a Policy Framework for 3D Printing (2012) Big Innovation Centre 10
<http://www.theworkfoundation.com/downloadpublication/report/322_3d%20printing%20paper_final_15%20oct.pdf> , quoting Christopher Freeman and Carlota Perez, 'Structural Crises of Adjustment, Business Cycles and Investment Behaviour' in Dosi et al (eds) Technical Change and Economic Theory (Printer Publishers, 1988) 38, 49-50.
[3] The Economist, The Third Industrial Revolution (21 April 2012)
<http://www.economist.com/node/21553017> .
[4] See, Amazon, Additive Manufacturing Products Department
<http://www.amazon.com/b/ref=sr_aj?node=6066126011 & ajr=0>
Officeworks, 3D Printing & Scanning
<http://www.officeworks.com.au/print/print-and-copy/3d>
Shapeways Inc., Home Page
[5] See generally Shapeways Inc., Home Page
[6] For example Thingiverse.com and Shapeways.com: MakerBot, MakerBot Thingiverse
Shapeways Inc., Home Page
[7] Dinusha Mendis, '"The Clone Wars": Episode 1 - The Rise of 3D Printing and its Implications for Intellectual Property Law - Learning Lessons from the Past?' (2013) 35(3) European Intellectual Property Review 155, 159 and Amanda Scardamaglia, above n 9, 30.
[8] See generally Michael Weinberg, It Will Be Awesome If They Don't Screw It Up: 3D Printing, Intellectual Property, and the Fight Over the Next Great Disruptive Technology (November 2010) Public Knowledge
<https://www.publicknowledge.org/files/docs/3DPrintingPaperPublicKnowledge.pdf>.
[9] As to patents see, eg, Daniel Harris Brean, ‘Patents to Combat Infringement via 3D Printing: It’s No ‘Use’’ (2013) 23(3) Fordham Intellectual Property, Media & Entertainment Law Journal 771. As to copyright see, eg, B. Rideout, ‘Printing the Impossible Triangle: The Copyright Implications of Three-Dimensional Printing’ (2011) 5(1) The Journal of Business, Entrepreneurship & the Law 161; Michael Weinberg, above n 8; Lucas Osborn, ‘Of PHDs, Pirates, and the Public: Three-Dimensional Printing Technology and the Arts’ (2014) 1 Texas Arts and Media Law Review 811. As to trade marks see, eg, Amanda Scardamaglia, ‘Flashpoints in 3D Printing and Trade Mark’ (2015) 23(2) Journal of Law, Information and Science 30. For a more general enquiry into the intellectual property implications of 3D printing see: Dinusha Mendis and Davide Secchi, A Legal and Empirical Study of 3D Printing Online Platforms and an Analysis of User Behaviour (March 2015) UK Intellectual Property Office
<https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/549045/Study-I.pdf>.
[10] For a limited overview see Tyrone Berger, ‘The 3D revolution is upon us – and designers need better protection’, The Conversation, 27 November 2014
<https://theconversation.com/the-3d-revolution-is-upon-us-and-designers-need-better-protection-34051>.
[11] Advisory Council on Intellectual Property, Review of the Designs System, Issues Paper (2013), 25
<https://www.ipaustralia.gov.au/sites/g/files/net856/f/issues_paper_on_designs_review.pdf>.
[12] Advisory Council on Intellectual Property, Review of the Designs System: Options Paper (December 2014) 56
<https://www.ipaustralia.gov.au/sites/g/files/net856/f/options-paper-for-the-review-of-the-designs-system.pdf>;
Mitchell Adams, Submission to Advisory Council on Intellectual Property, Review of the Designs System, 31 October 2013.
[13] Hod Lipson, Fabricated: The New World of 3D Printing (John Wiley, 2013) 18.
[14] Ibid.
[15] Lipson, above n 13, 82-94.
[16] Ibid.
[17] Ibid.
[18] MakerBot Industries, MakerBot Replicator Mini+
<https://store.makerbot.com/printers/replicator-mini/>. Down from AUD$2,200 in 2013.
[19] 3D Systems Inc., Cube 2
<http://au.3dsystems.com/shop/support/cube2/order> .
[20] Officeworks Ltd, Da Vinci Junior 1.0 3D Printer
<http://www.officeworks.com.au/shop/officeworks/p/da-vinci-junior-1-0-3d-printer-mmdvin1jnr> .
See also Clare Scott, Aldi Australia Gets on the 3D Printing Bandwagon with the Cocoon Create 3D printer and Pen (16 Feb 2016) 3DPrint.com
<https://3dprint.com/119854/aldi-cocoon-3d-printer/>.
[21] Lipson, above n 13.
[22] Formlabs, The Form 1
<http://formlabs.com/store/int/form-1/buy-printer/> .
[23] Weinberg, above n 8, 2-3.
[24] SketchUp, SketchUp Pro Trimble Navigation Limited
<http://www.sketchup.com/products/sketchup-pro>
Inc Autodesk, AutoCAD Design Suite
<http://www.autodesk.com.au/suites/autocad-design-suite/overview> .
[25] This includes Wavefront Technologies Object file (OJB), Stereolithography file (STL and Virtual Reality Modeling Language file (VRML): Lipson, above n 13, 97.
[26] Ibid.
[27] Ibid 115-117.
[28] See, eg, Portable 3D scanners from Creaform: Creaform, Creaform Solutions
<http://www.creaform3d.com/> .
[29] Fuel 3D’s point and click scanner was funded with a pledge goal of US$75,000 reached and CADScan’s project was backed with a goal of £80,000. Additionally, on indiegogo.com the Matterform 3D scanner was funded with a goal of C$80,000 reached. See Fuel3D Inc, Fuel3D: A handheld 3D scanner for less than $1000 (31 July 2013) Kickstarter Inc
<http://www.kickstarter.com/projects/45699157/.-a-handheld-3d-scanner-for-less-than-1000>
Matterform, The Matterform 3D Scanner (27 March 2013) Indiegogo Inc
<http://www.indiegogo.com/projects/the-matterform-3d-scanner>
CADScan, Desktop 3D Scanner (12 February 2013) Kickstarter Inc
<http://www.kickstarter.com/projects/621838643/desktop-3d-scanner> .
[30] Landmark Computers, MakerBot Digitizer
[31] 3D Systems, Sense 3D Scanner
<http://au.3dsystems.com/shop/sense/order> .
[32] 3D Systems, iSense 3D Scanner
<http://www.3dsystems.com/shop/isense> .
[33] Officeworks, 3D Printing & Scanning
<http://www.officeworks.com.au/print/print-and-copy/3d/3d-scanning> .
[34] For iOS applications see Cadabra Corp, Mobile 3d Laser Scanner (14 May 2016)
<https://itunes.apple.com/au/app/mobile-3d-laser-scanner/id590404873?mt=8> and Trimensional LLC, Trimensional <https://appsto.re/au/E6-Ky.i>.
[35] Designs Act 2003 (Cth) s 5 (definition of a ‘design’).
[36] Designs Act 2003 (Cth) ss 39-56. Alternatively, design owners have the choice to publicise their design to prevent others from registering similar designs: Designs Act 2003 (Cth) ss 57-59.
[37] Designs Act 2003 (Cth) s 5 (definition of ‘design’); s 6; s 15(1) and s 16(2) respectively. A design is new unless it can be demonstrated that the design is identical to one found in the prior art base: Designs Act 2003 (Cth) s 15(1). A design is taken to be distinctive if it is not substantially similar in overall impression to an existing design: Designs Act 2003 (Cth) s 16(2).
[38] Designs Act 2003 (Cth) s 5 (definition of ‘design’).
[39] Designs Act 2003 (Cth) s 6(1).
[40] Designs Act 2003 (Cth) s 7.
[41] Designs Act 2003 (Cth) s 7(2).
[42] Designs Act 2003 (Cth) s 10.
[43] Designs Act 2003 (Cth) ss 46-47. Although recently, the Advisory Committee on Intellectual Property recommended an extension to the term to 15 years only if a decision is made to join the Hague Agreement: Australian Advisory Committee on Intellectual Property, Review into the Design System: Final Report (2015) 18
<https://www.ipaustralia.gov.au/sites/g/files/net856/f/acip_designs_final_report.pdf>.
[44] Designs Act 2003 (Cth) s 71.
[45] The terminology is adopted under the Act for the purposes of awarding damages: Designs Act 2003 (Cth) s 75 (definition of ‘primary infringement’ and ‘secondary infringement’).
[46] Designs Act 2003 (Cth) s 75(1).
[47] Designs Act 2003 (Cth) s 75(3).
[48] Copyright Act 1968 (Cth) s 10 (definition of ‘artistic work’).
[49] Copyright Act 1968 (Cth) s 21(3).
[50] Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd and Others [2005] FCA 1521; (2005) 225 ALR 57, 108 (per Crennan J).
[51] “Industrially applied” means to apply the design to more than 50 articles: Copyright Regulations 1969 (Cth) reg 17.
[52] For example, a 3D CAD file created by 3D scanning a product created from the original design drawings: Copyright Act 1968 (Cth) ss 75, 77. ‘Corresponding design’ is defined as the visual features of shape or configuration, which, when embodied in a product, result in a reproduction of the work: Copyright Act 1968 (Cth) s 74(1) (definition of ‘corresponding design’).
[53] For example, see, MakerBot, About Thingiverse
<http://www.thingiverse.com/about> .
[54] Ibid.
[55] Charles W. Finocchiaro, 'Personal Factory or Catalyst for Piracy? The Hype, Hysteria and Hard Realities of Consumer 3-D Printing' (2013) 31 Cardozo Arts and Entertainment Law Journal 473, 495.
[56] See, eg, Kate Hannum, Gnome Remix Flash Challenge Results (20 September 2013) Maker Bot
<http://www.makerbot.com/media-center/2013/09/20/thingiverse-gnome-remix-flash-challenge-results> .
[57] See Harris Kyriakou, Steven Englehardt and Jeffrey V. Nickerson, 'Networks of Innovation in 3D Printing' (Howe School Research Paper, 2012).
[58] Mendis, above n 7, 159.
[59] The Pirate Bay, Physibles
<https://thepiratebay.se/browse/605/0/7/0>.
[60] Bruce Sterling, Spime Watch: Physibles (26 January 2012) Wired
<http://www.wired.com/beyond_the_beyond/2012/01/spime-watch-physibles/> .
[61] MakerBot, Celebrating a Maker Milestone: 1 Million Uploads on MakerBot’s Thingiverse (29 October 2015)
[62] For example, Shapeways Inc, Shapeways: How Does It Work?
<http://www.shapeways.com/about/how_does_it_work> .
[63] Finocchiaro, above n 55, 499.
[64] Ibid.
[65] Shapeways Inc, above n 62.
[66] Shapeways Inc., above n 5.
[67] Shapeways Inc, Tutorials: Open Your Shop in a Few Easy Steps
<http://www.shapeways.com/tutorials/open_shop> .
[68] Shapeways Inc, above n 62.
[69] Officeworks, 3D Printing & Scanning
<http://www.officeworks.com.au/print/print-and-copy/3d> .
Australian online service providers are also emerging. 3D Hubs is an online directory of online 3D printing services that helps people save time by connecting users with local 3D printing providers. There is currently 463 online providers connected with 3D Hubs: 3D Hubs, Start a 3D Print
<https://www.3dhubs.com/3dprint#?place=Australia>.
[70] Designs Act 2003 (Cth) s 71.
[71] Designs Act 2003 (Cth) s 71(1)(a): makes or offers to make a product, in relation to which the design is registered, which embodies a design that is identical to, or substantially similar in overall impression to, the registered design.
[72] See Keller v LED Technologies Pty Ltd [2010] FCAFC 55; (2010) 185 FCR 449.
[73] Designs Act 2003 (Cth) s 71(1)(a).
[74] Designs Act 2003 (Cth) s 19. Where similarities are given more weight as the primary factor in this assessment: Designs Act 2003 (Cth) s 19(1).
[75] Keller v LED Technologies [2010] FCAFC 55; (2010) 185 FCR 449, 462.
[76] See Koninklijke Phillips Electronics NV v Remington Products Australia Ltd [2000] FCA 876; (2000) 100 FCR 90 where an alleged infringing razor avoided a finding of infringement due to differences in dimensions.
[77] Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd and Another [2008] FCA 74; (2008) 166 FCR 358, 363 (per Jessup J).
[78] [2008] FCA 74; (2008) 166 FCR 358, 363.
[79] Ibid.
[80] Ricketson and Creswell, Thomson Reuters, The Law of Intellectual Property Copyright, Designs & Confidential Information, vol 1 (at update 74) [23.05].
[81] Ibid.
[82] [2008] FCA 1941; (2008) 80 IPR 85.
[83] [2008] FCA 1941; (2008) 80 IPR 85, [88]-[90].
[84] Review 2 Pty Ltd (in liq) v Redbury Enterprises Pty Ltd [2008] FCA 1588; (2008) 173 FCR 450, [74] (per Kenny J); Led Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941; (2008) 80 IPR 85, [88]-[89] (per Gordon J).
[85] Led Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941; (2008) 80 IPR 85, [88]-[89] (Gordon J).
[86] Shapeways operate out of the United States, the Netherlands and Norway: Shapeways Inc, About Us
<http://www.shapeways.com/about> .
[87] Designs Act 2003 (Cth) s 71(1)(b).
[88] For example, on Shapeways.com or Thingiverse.com.
[89] Designs Act 2003 (Cth) s 6.
[90] Matthew Hall, '3D Printing - Same of the IP Challenges' (2013) Australian Intellectual Property Bulletin 213, 214.
[91] Designs Act 2003 (Cth) s 71(1)(d).
[92] Designs Act 2003 (Cth) s 72(1). This defence was introduced in response to the perceived risk of anti-competitive conduct in what is called the “after-market” or spare parts market: see Explanatory Memorandum, Designs Bill 2002 (Cth), [30].
[93] Designs Act 2003 (Cth) s 5 (definition of ‘complex product’).
[94] Designs Act 2003 (Cth) s 72.
[95] Designs Act 2003 (Cth) s 72(5).
[96] For example, a damaged part housed in the engine of a car.
[97] This would also extend to any 3D printed item that is not only identical but also substantially similar to the registered design.
[98] Simon Bradshaw, Adrian Bowyer and Patrick Haufe, 'The Intellectual Property Implications of Low-Cost 3D Printing' (2010) 7(1) SCRIPTed 5, 11.
[99] Ibid.
[100] Some spare parts are already featured in online file sharing sites: see generally Shapeways.com and Thingiverse.com.
[101] However, it does raise additional issues in regards to product liability, warranties, public safety and industry codes, all of which remains outside of the scope of this article.
[102] This has the potential to introduce another player in the “after-market” for spare parts and readjust the competiveness of not only the manufacturers of genuine parts but also that of suppliers of non-genuine parts: See generally, Australian Law Reform Commission, Designs, Report No 74 (1995) Chapter 16.
[103] Brean, above 9, 785.
[104] Targeting the manufacturer would break the supply chain of infringing products: see Brean, above n 9, 785.
[105] Ibid.
[106] Acts Interpretation Act 1901 (Cth) s 21(1)(b); Review 2 Pty Ltd (in liq) v Redbury Enterprises Pty Ltd [2008] FCA 1588; (2008) 173 FCR 450, [77]; Review Australia Pty Ltd v New Cover Group Pty Ltd [2008] FCA 1589; (2008) 79 IPR 236, [48].
[107] Led Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941; (2008) 80 IPR 85, [88]-[89] (Gordon J).
[108] Mendis, above n 7, 159.
[109] Ibid.
[110] See, for example, Universal Music Australia Pty Ltd v Cooper [2005] FCA 972; (2005) 65 IPR 409.
[111] Finocchiaro, above n 55, 504.
[112] For example, a private or non-commercial reproduction of a product embodying the registered design.
[113] Either as a physical drawings or an electronic CAD file.
[114] Designs Act 2003 (Cth) s 10(1)(f).
[115] Lahore and Rothnie, LexisNexis Australia, Copyright and Designs, vol 1 (at 112), [71,070].
[116] Ibid. Additionally, Ricketson and Creswell have commented that designs law has adopted the copyright concept of authorisation with inclusion of s 10(1)(f): Ricketson and Creswell, Thomson Reuters, The Law of Intellectual Property Copyright, Designs & Confidential Information, vol 1 (at update 74) [9.580].
[117] Ibid [71,070].
[118] For which the exclusive right to authorise another to exploit a patent is present. See Patents Act 1990 (Cth) s 13 and Schedule 1 (definition of ‘exploit’).
[119] See Designs Act 2003 (Cth) s 71.
[120] Although the “spare parts defence” does cover both using and authorising another to use a product embodying the design: Designs Act 2003 (Cth) s 72(1)(a).
[121] Lahore and Rothnie, above n 118 [71,070].
[122] Ricketson and Creswell, above n 119 [23.05].
[123] See Keller v LED Technologies Pty Ltd [2010] FCAFC 55; (2010) 185 FCR 449.
[124] Liability under the principles of joint tortfeasorship would survive any application of the infringement provisions. It has been held to survive under application of other intellectual property infringement provisions: Lahore and Rothnie, above n 115 [71,070] citing Bristol-Myers Squibb Co v FH Faulding & Co Ltd [2000] FCA 316; (2000) 46 IPR 553, [97].
[125] Thompson v Australian Capital Television Pty Ltd [1996] HCA 38; (1996) 186 CLR 574 approving the test in The Koursk [1924] P 140, 159-160.
[126] Ibid.
[127] The Koursk [1924] P 140, 155.
[128] [2006] FCAFC 187; (2006) 156 FCR 380.
[129] [2006] FCAFC 187; (2006) 156 FCR 380.
[130] Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112, 1118.
[131] See Ann Monotti, 'Liability for Joint Infringement of a Method Patent Under Australian Law' (2013) 35(6) European Intellectual Property Review 318, 320.
[132] Ibid.
[133] Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd [1999] FCA 898; (1999) 44 IPR 481, 500.
[134] Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112, 1118.
[135] Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112.
[136] Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112.
[137] Two DMCA take down notices have been reported already. Additionally, Shapeways supports the protection of intellectual property rights via its ‘Content Policy’ and ‘Take Down Notice Procedure’. See Shapeways Inc, Maker Frequently Asked Questions
<http://www.shapeways.com/tutorials/maker-frequently-asked-questions/>
Shapeways Inc, Shapeways Content Policy
<http://www.shapeways.com/legal/content_policy> .
[138] Shapeways informs users that it does not provide “direct design assistance” to fix users’ designs, although checks the design for feasibility to print (i.e. delicate items are rejected): See Shapeways Inc, above n 62.
[139] As compared with services such as The Pirate Bay, which actively directs users to illegal, copyrighted works.
[140] See for example, Australian Tape Manufacturers Association Ltd v The Commonwealth (1993) 176 CLR 480, 498. The High Court held that the sale of articles such as blank tapes or video recorders, which has lawful uses, did not constitute authorization of infringement of copyright, even if the manufacturer or vendor has known that there is a likelihood that the articles will be used for an infringing purpose.
[141] IP Australia received 7,024 design applications in 2015. See IP Australia, Australian Intellectual Property Report 2016 (2016), 19.
[142] IP Australia was experiencing an average annual growth rate of four per cent of design applications by Australian residents since 2010. See See IP Australia, Australian Intellectual Property Report 2016 (2016), 20.
[143] Advisory Council on Intellectual Property, above n 11, 25.
[144] Advisory Council on Intellectual Property, above n 43, 37, 41
<https://www.ipaustralia.gov.au/sites/g/files/net856/f/acip_designs_final_report.pdf>.
ACIP commentated that any consideration of amending the infringement provisions would need to be coupled with the review for exceptions to designs infringement. In addition, any application of secondary liability in the context of designs law should not precede a more settled approach to secondary liability or authorisation in copyright: Advisory Council on Intellectual Property, Review of the Designs System, Options Paper (2014) 57.
[145] World Intellectual Property Review, World Intellectual Property Report: Breakthrough Innovation and Economic Growth (2015) 106
<http://www.wipo.int/edocs/pubdocs/en/wipo_pub_944_2015.pdf>
Weinberg, above n 8, 14-15.
[146] Weinberg, above n 8.
[147] Ibid.
[148] See Shapeways Inc, Shapeways Content Policy <http://www.shapeways.com/legal/content_policy>
[149] Ibid.
[150] Across all intellectual property rights, see Shapeways Inc., 2015 Transparency Report
<http://www.shapeways.com/legal/transparency/2015>
[151] Finocchiaro, above n 55, 504.
[152] Via the ‘User Model’ or the ‘Print Services Model’.
[153] Copyright, Designs and Patents Act 1988 (UK) s 226. A “design document” means “any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise”: Copyright, Designs and Patents Act 1988 (UK) s 263(1).
[154] Copyright, Designs and Patents Act 1988 (UK) s 226(1).
[155] Section 226(3) of the Copyright, Designs and Patents Act 1988 (UK) states that a “Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner”.
[156] Citing the potential uncertainty such a change would introduce to business and the functionality of the registered design system in Australia: Advisory Council on Intellectual Property, above n 144, 12, 65.
[157] Australian Government, Government response – ACIP Review of the Designs System (2016) 8-9
<https://www.ipaustralia.gov.au/sites/g/files/net856/f/government_response_-_acip_designs_review_-_final_pdf.pdf.
[158] European Commission, Legal Review on Industrial Design Protection in Europe, Final Report (2016), 134.
[159] Jane Park, ‘How should we attribute 3D printed objects?’ on Creative Commons, Creative Commons Blog (19 April 2016)
<https://blog.creativecommons.org/2016/04/19/attribute-3d-printed-objects/>.
[160] Michael Weinberg, 3 Steps for Licensing your 3D Printed Stuff (March 2015) Public Knowledge 2
<https://www.publicknowledge.org/assets/uploads/documents/3_Steps_for_Licensing_Your_3D_Printed_Stuff.pdf>.
[161] Park, above n 159.
[162] See Shapeways Inc., above n 148; MakerBot Industries LLC, MakerBot Terms of Use Policy
<https://www.thingiverse.com/legal/terms>.
[163] Where attribution can be lost once the file is sent to the 3D printer: Park, above n 162.
[164] Mendis, above n 7, 168.
[165] See generally Rolf H Weber, 'Does Intellectual Property Become Unimportant in Cyberspace?' (2001) 9(2) International Journal of Law and Technology 171.
[166] Advisory Council on Intellectual Property, above n 11, 26.
[167] Advisory Council on Intellectual Property, above n 12, 4.
[168] Productivity Commission, Intellectual Property Arrangements: Draft Report (2016) 305-6
<http://www.pc.gov.au/inquiries/completed/intellectual-property/draft> .
[169] World Intellectual Property Review, above n 145, 106-7; European Commission above n 161.
[170] Advisory Council on Intellectual Property, above n 43, 41; Australian Government, above n 157, 8-9.
[171] Productivity Commission, above n 168; Dinusha Mendis and Davide Secchi, above n 9.
[172] Productivity Commission, above n 168.
[173] Emma Caine and Andrew Christie, ‘A quantitative analysis of Australian intellectual property law and policy-making since federation’ (2005) 16 Australian Intellectual Property Journal 185, 193-4.
[174] Beth Webster and Mitchell Adams, ‘‘Design’ is a fashionable term - but what does it really mean?’ The Conversation, 16 March 2016
<https://theconversation.com/design-is-a-fashionable-term-but-what-does-it-really-mean-56368>.
[175] For example, the creation and adaptation of designs using 3D CAD software: see Rivka Oxman, ‘Theory and design in the first digital age’ (2006) 27(3) Design Studies 229.
[176] Advisory Council on Intellectual Property, above n 12, 14.
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