The COVID-19 pandemic has reportedly been something of a boon for the ongoing take-up of 3D printing, whether to make much-needed personal protective equipment, or because stretched supply chains have limited the availability of things like spare parts. The technology is already here, and now the necessity has come, so if you need to print out a widget, can you just do it?
Necessity = mother of invention
The COVID-19 pandemic has reportedly been something of a boon for the ongoing take-up of 3D printing, whether to make much-needed personal protective equipment, or because stretched supply chains limited the availability of things like spare parts.
Particularly in direct response to the COVID-19 health crisis, there were reports of 3D printing being used to manufacture items such as swab stems, face shields, ventilator components, and protective goggles.
In industry, where old supply chains have been disrupted, 3D printing has potential for more quickly obtaining spare parts and other items that are in short supply or would now take too long to be delivered.
There’s even been suggestion of a more lasting outcome, that 3D printing may even restructure certain supply chains from here on. It’s too early to predict how permanent the effect, but whichever the reason, the pandemic appears to be providing the circumstances for the advent of a new age of 3D printing. Nonetheless, it is an area ripe for some complex intellectual property legal issues.
The technology is already here, and now the necessity has come, so if you need to print out a widget, can you just do it? If you have rapidly developed a new widget for 3D printing, is there a business model in publicly releasing it and earning revenue from others using it? The answers in this area are not necessarily straightforward, and as is often the case, copyright and designs law can be behind the current state of the technology.
Registered designs protect the shape and appearance of manufactured products, governed by the Designs Act. Once upon a time, they were also known as “industrial designs”. There is a register of designs that can be publicly searched to identify if a design has been registered and for other details such as the design owner.
To be registrable, a design must be “new and distinctive” (not identical, nor “substantially similar in overall impression”, to any publicly disclosed existing product designs), assessed on a world-wide basis. A registered design in Australia has a life of 10 years, before it enters the public domain and is not renewable. They do not protect functionality (which is the province of patent law), although that may be an incidental effect if shape has a functional purpose. A design must be assessed for validity before being enforceable.
Critically, for a design to be “new and distinctive”, it must not have been in the public domain prior to application. This means seeking to register a design first, and only releasing the product onto the market afterwards. There may not be enough time for that if the widget is urgently essential in the pandemic.
Design owners have the exclusive rights to control the manufacture, importation and sale (among a few other things) of products to which the design is applied.
Unauthorised 3D printing is no exception to this. Indeed, as designs protect shape and appearance, it will not matter which material a 3D printed product is made from. Depending on the design, colour and texture may not matter either. Unlike copyright law, there are no “fair dealing” defences to infringement, and certainly no defence if manufacturing for personal use or innocent infringement.
Therefore, if there is a registered design in respect of a product, making that item without authorisation, including by 3D printing, will constitute design infringement. The design owner may also take action against those who allow others to do so without permission (eg. websites hosting 3D print files for download).
One of the few exceptions to infringement is if the 3D printed widget is a spare part for a “complex product” over which a design is registered, made to restore the overall appearance of the product. A product is “complex” if it comprises at least 2 replaceable component parts permitting disassembly and re-assembly. Nonetheless, it would pay to first check whether the spare part is, itself, individually registered as a design.
Copyright also protects 3D?
So a search of the register of designs turned up blank, and everything seems clear to go. What happens if you 3D print someone else’s widget for which there is no design registered?
For that, we need to go back to copyright law. The Copyright Act provides that a 2D artistic work (for our purposes, a design drawing) is deemed to be reproduced if a version of the work is reproduced in 3D form, and vice-versa. At face value, this could mean that 3D printing a product without permission could infringe copyright in the designer’s design drawings, even if you haven’t seen those drawings yourself.
However, enter the notorious (at least, for intellectual property lawyers) “copyright-design overlap”, which is intended to prevent dual protection of both the designs and copyright systems – otherwise designs may become superfluous. But it’s tricky, and can be a pitfall for designers and manufacturers, who sometimes discover too late that the non-registered shape of their product is not protected against copycats.
The Copyright Act provides a defence to infringement of artistic works (except buildings and some other minor exceptions) in 3D form, essentially if a design is, could have been, once was, or even would not have qualified to be registered. The defence applies whether or not the design is capable of being registered under the Designs Act. This includes expired designs, or other plain designs that would not meet registration requirements for lack of being new and distinctive.
Applying this to 3D printing your widget, assuming there is no registered design, then so far you’re in the clear.
But there is an additional requirement, that unregistered 2D artistic works must have been “industrially applied”. The industrial application must be “by or with the licence of” the copyright owner.
Copyright regulations specify that industrial application takes place after the design has been applied to 50 products. (In some circumstances it can be fewer.)
Going back to your 3D printed widget, you’re still in the clear to print if the designer has itself manufactured at least 50 items. But in the age of downloadable digital blueprints, perhaps designers won’t have yet manufactured as many as that by themselves. Is downloading someone else’s 3D print file and printing it within the designer’s control? It seems likely to be “with the licence of” the designer (if it was authorised), but that remains legally untested. Anyhow, how do you know if you’re still within the first 50? The specific factual circumstances will dictate whether 3D printing the widget is permissible.
Nonetheless, relying on copyright to protect the shape and appearance of a manufactured item is fraught with risk, and in many cases, likely to be unsuccessful.
If 3D printing is ever to intrude on traditional manufacturing and disrupt supply chains, in particular, this potentially puts at risk revenue streams from manufacturing items that never would have qualified for registered design protection in the first place.
Reverse engineered products
Let’s say that to 3D print your widget, instead of downloading a digital blueprint, you’ve instead used a 3D scanner to create a 3D print file from scanning an original product.
As noted above, copyright in an artistic work can be infringed when transforming to and from 3D and 2D. In theory, that would mean that copyright in the original 2D design drawing is infringed by reverse engineering the 3D product. This used be known as “plan-to-plan” copying and was something of a loophole providing recourse to copyright owners, but some years ago, the law was amended to provide that if a 2D design drawing is prepared incidentally in the course of making permitted 3D reproductions, it was no longer an infringement. An exception to a loophole to an exception, if you like.
Nonetheless, with the advent of 3D scanning and printing, it is not entirely clear that the result of reverse engineering a 3D product is to always prepare a digital 2D design drawing, but rather, may prepare a set of digital instructions that tells that 3D printer what to do to print the item. In that case, the 3D print file might be categorised as a computer program, which in copyright law is not an “artistic work” to which the copyright-design overlap applies. In turn, if that computer program is a substantial reproduction of the original design owner’s own 3D print file (which will depend on other factual specifics such as whether the computer program languages are the same), then the “plan-to-plan” loophole is potentially opened up again.
That would seem to side-step the intention of the copyright-design overlap, by reverting to copyright controlling the manufacture of three-dimensional items. This may give copyright owners some recourse, but only in limited circumstances where the facts line up just right for them.
Room for reform?
There have been reviews of the Australian copyright and design systems in the last decade, but no reforms made yet.
In February 2014, the Australian Law Reform Committee (ALRC) published a report on “Copyright and the Digital Economy”. In arguing for more flexible “fair use” exceptions to copyright infringement, the report noted that 3D printing (among other activities) may be stifled by current law. No reforms have been made (they are controversial for other reasons), but these would not address the copyright-design overlap in any case.
In March 2015, the Advisory Committee on Intellectual Property (ACIP) reported on its review of the Australian designs system. It acknowledged the difficulties with the copyright-design overlap, but its terms of reference did not include the Copyright Act. The review otherwise considered that addressing new technologies including 3D printing would be “premature” as there were more pressing reforms first.
Although 3D printing technology and take-up has advanced further since these reviews, the problem remains that the law is difficult to navigate and at times difficult to apply to new technology. The designs regime is, finally, being digitally disrupted.
The copyright-design overlap needs simplification to meet new technological developments, but there are important underlying policy questions to address such as whether non-registrable designs ought to be afforded any level of protection in the face of virtually anyone now being able to self-manufacture. Inevitably there will always be complexity in this area given transitioning between 2D and 3D, and considerations of protecting artists’ work versus utilitarian drawings (which is outside the scope of this article). While many things have changed rapidly during the pandemic – even legislative changes that would once have taken far longer to achieve – reforming the copyright-design overlap is probably not on the current horizon.
A registered design remains the most effective way to protect the shape and appearance of a manufactured product, if meeting the registrability requirements.
If product development speed is imperative over obtaining design registration, or if the design is not registrable in the first place, then it comes with the risk that protecting shape and appearance from someone with a 3D printer may be limited or not possible. Small variations in factual circumstances can lead to differing likelihoods of whether reproduction in 3D can be protected or not. It potentially means being copied with impunity, and risks to revenue streams from licensing the design.
To help compensate, there are ways – think trade marks and branding – to assist originators advertise the quality and origin of their designs, which should be utilised.
But for now, the general public might benefit from 3D printed items created in response to the pandemic that likely find themselves in the public domain. ☁︎
This article looks at certain intellectual property issues and 3D printing. Relevant to the examples in this article, in particular, it does not look at the issues around regulatory approval to use 3D printed items for medical or therapeutic purposes, nor product liability issues, both of which present important legal issues.
This article is for general informational purposes only and is not legal advice. Stratocumulus Legal does not accept any liability for any reliance on the content of this article. Legal advice should be sought based on your specific circumstances.