3D printers, which were previously only found in manufacturing factories, are becoming increasingly accessible to consumers and are set to disrupt the harmony of Australia’s intellectual property laws like photocopiers, the internet and MP3 players did previously. In response, the Australian Law Reform Commission is conducting an inquiry into copyright law and the digital economy in 2012 and 2013 and it is due to give its report on 30 November 2013.1
What are 3D printers?
3D printers create 3D objects by adding successive layers of manufacturing material (liquid powder or sheet material) in accordance with a digital blueprint which is generated by a computer aided design or animation modeling software.2 3D printers allow for rapid manufacturing and have typically been used for mass customisation of products and components. Manufacturers can create their own designs or download them from the internet with websites like Thingiverse3 posting blue prints to designs to help consumers create everything from vases to musical instruments.
Categories of intellectual property rights
There are four main categories of intellectual property rights that may be infringed from the use of 3D printers:
The Copyright Act 1968 (Cth) gives the creator of original works an exclusive and automatic right to it as long as, in the case of 3D works, it has not been industrially applied. Generally, a work is said to be industrially applied when more than 50 articles are created for the purposes of sale or hire.4 An exception to this is a “work of artistic craftsmanship” and to be considered as such, the article would have to have a real objective artistic quality and aesthetic, whether or not it is a utilitarian object.5
A design is capable of being registered under the Designs Act 2003 (Cth) if the design is new and distinctive when compared with the prior art base.6 The owner of the registered design has the exclusive right to deal with the design commercially, licence it or sell it.7 An infringement of a registered design occurs when a product is made that is either identical, or substantially similar in overall impression to the registered design.8 Relevantly, the legislation does not protect infringement of registered designs if they are produced privately and for purposes which are not commercial.
A patent is an exclusive right granted for a device, substance, method or process that is novel, involves an inventive or innovative step and is useful.9 The threshold for being granted a patent is high and often involves a process or invention which is incapable of being produced by a 3D printer. Patents are, however, granted to everyday items and can be successful in protecting patented inventions or innovations against the use of 3D printers.
Registered trade marks
A trade mark is a registerable right which is used to distinguish goods or services.10 Trade marks can be used to protect a broad category of goods and can include shapes and combinations of colours. An infringement of a trade mark will occur by producing and distributing an item that possess characteristics to which a trade mark applies. However, similar to the situation described above, personal use of a trade mark product cannot be said to be “in the course of trade” and it is likely that an infringement won’t occur for the manufacture of items that are not commercial in nature.
Despite the risk this technology poses to the infringement of intellectual property laws, some brands have decided to jump on board with 3D printing. Big name companies such as Coca-Cola, Nokia and Volkswagen have embraced the technology incorporating 3D printing into their promotional and marketing strategies in a bid to capture this emerging market.
Lavan Legal comment
To avoid the risk of losing copyright protection for designs that are manufactured for an industrial or commercial purpose, Lavan Legal would recommend, when possible, to register designs under the Designs Act 2003 (Cth).
For added protection, seek advice on whether a patent or trade mark is available for your design.
1 See: http://www.alrc.gov.au/inquiries/copyright-and-digital-economy
2 Matthew Hall, ”3D printing – some of the IP challenges” (2013) Australian Intellectual Property Law Bulletin 213.
3 See: http://www.thingiverse.com/
4 Inverness Medical Innovations Inc and Anor v MDS Diagnostics Ltd and Anor (2009) 93 IPR 14.
5 Coogi Australia Pty Ltd v Hysport Intl Pty Ltd (1998) 157 ALR 247.
6 Designs Act 2003 (Cth) s 15.
7 Ibid s 10.
8 Ibid s 71.
9 Patents Act 1990 (Cth).
10 Trade Marks Act 1995 (Cth) s 17.