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Introduction
In 1956, Philip K. Dick in his science fiction story Pay for the Printer,
imagined a future of mass reproduction and copying. 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.
1
<http://www.theworkfoundation.com/downloadpublication/report/322_3d%20prin
ting%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.
The Economist has previously declared that 3D printing would prompt the
third industrial revolution. 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. 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.
3
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.
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/3DPrintingPaperPublicKnowled
ge.pdf>.
EAP 2
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
10
11
12
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) i s l i m i t e d
As to patents see, eg, Daniel Harris Brean, Patents to Combat Infringement via 3D
Printing: Its 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: ThreeDimensional 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-needbetter-protection-34051>.
11
12
EAP 3
1.1 3D Printers
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. At its simplest form, this method
involves the successive layering of materials that make up a 3D object.
13
14
16
17
18
19
20
13
Hod Lipson, Fabricated: The New World of 3D Printing (John Wiley, 2013) 18.
14
Ibid.
15
16
Ibid.
17
Ibid.
18
19
20
<http://au.3dsystems.com/shop/support/cube2/order>.
<http://www.officeworks.com.au/shop/officeworks/p/da-vinci-junior-1-0-3dprinter-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
EAP 4
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
22
24
25
26
1.3 3D Scanner
3D scannings 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.
Until recently, the most accurate 3D scanners were only commercially
available and cost thousands of dollars. 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
27
28
<https://3dprint.com/119854/aldi-cocoon-3d-printer/>.
21
22
23
24
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
EAP 5
30
31
32
33
34
Designs Law
Designs law is the category of intellectual property rights that protects the
visual appearance of manufactured objects. 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. To be
35
36
29
Fuel 3Ds point and click scanner was funded with a pledge goal of US$75,000
reached and CADScans 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-forless-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
31
32
33
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
36
EAP 6
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
Under the Act, a design is defined as the overall appearance of the product
resulting from one or more visual features of the product. A product is
taken to mean something that is manufactured or handmade. Encompassing
the design, visual features are defined to include shape, configuration,
pattern or ornamentation of the product. These features can encompass the
3D and 2D aspects of a design, and may or may not serve a functional
purpose. 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. 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.
38
39
40
41
42
43
37
38
39
40
41
42
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_rep
ort.pdf>.
44
EAP 7
(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. 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. Additional
damages can be awarded for flagrant infringements.
45
46
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. The protection of 2D designs is extended to
reproductions in three-dimensional form. 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. Sections 74-77 of the Copyright Act
1968 (Cth) govern the copyright-designs overlap. Where a design has already
been registered or applied industrially, under these provisions, it is not an
infringement of the underlying copyright to reproduce the work by
embodying the corresponding design in a product. 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.
48
49
50
51
52
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
47
48
49
50
51
52
Gold Peg International Pty Ltd v Kovan Engineering (Aust) Pty Ltd and Others (2005)
225 ALR 57, 108 (per Crennan J).
Industrially applied means to apply the design to more than 50 articles:
Copyright Regulations 1969 (Cth) reg 17.
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).
EAP 8
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
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.
CAD
3D Scanner
3D CAD Software
User
3D CAD File
3D Printer
Materials
Product
(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.
CAD
3D Scanner
3D CAD Software
Online Designs
Community
Online Designs
Collection
3D CAD File
User
EAP 9
(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-topeer 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). 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.
Uploaded under Creative Commons licenses, designs are permitted to be
copied for non-commercial purposes, provided the original source is
attributed. Thingiverse encourages designs to be remixed and reposted,
which in turn promotes an open approach to innovation. Likewise, the filesharing site The Pirate Bay, commonly known as the largest facilitator of
illegal copyright downloading, is moving into sharing designs of physical
objects, including a category for digital files, called Physibles. The
organisation has said that the next step in copying is in replicating existing
physical objects.
53
54
55
56
57
58
59
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
53
54
55
56
Ibid.
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.
See, eg, Kate Hannum, Gnome Remix Flash Challenge Results (20 September 2013)
Maker Bot
<http://www.makerbot.com/media-center/2013/09/20/thingiverse-gnomeremix-flash-challenge-results>.
57
58
59
60
<https://thepiratebay.se/browse/605/0/7/0>.
<http://www.wired.com/beyond_the_beyond/2012/01/spime-watchphysibles/>.
61
EAP 10
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
3D CAD File
User
Print Service
Product
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. The primary advantage of this model is that it eliminates barriers,
such as cost and technical know-how, for users accessing 3D printing
technology. Private companies have the capital and expertise to offer users
access to 3D printers, higher print resolutions and diverse printing materials.
62
63
64
66
<http://www.makerbot.com/blog/2015/10/29/celebrating-a-maker-milestone-1million-uploads-on-makerbots-thingiverse>.
62
63
64
Ibid.
65
66
EAP 11
68
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. 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.
69
Enforcement
71
67
68
69
70
71
EAP 12
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
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 courts treatment of additive
manufacturing cases under the Act.
72
74
75
76
72
See Keller v LED Technologies Pty Ltd (2010) 185 FCR 449.
73
74
75
76
77
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).
Keller v LED Technologies (2010) 185 FCR 449, 462.
See Koninklijke Phillips Electronics NV v Remington Products Australia Ltd (2000) 100
FCR 90 where an alleged infringing razor avoided a finding of infringement due to
differences in dimensions.
Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd and Another (2008)
166 FCR 358, 363 (per Jessup J).
EAP 13
task of making the product. Rather, his Honour held that the Act embraces
the circumstance of an independent contractor manufacturing a product at
the direction of a principal. Consequently, section 71(1)(a) is constructed with
the general law principles of vicarious liability in mind. It is in these
circumstances that a director or procurer will be liable for the making of the
product. Interestingly, Jessup Js interpretation treats making and directing
or procuring as one in the same, for which the director/procurer is
responsible. Therefore, when a user uploads a 3D CAD file to an Australian
service providers website for printing, they appear to be committing a
primary infringement as a principal and in procuring the making of a
registered design.
78
79
80
81
The position is less clear when the manufacturer operates outside Australia.
Somewhat in tension with Review is Gordon Js judgment in Led Technologies
Pty Ltd v Elecspess Pty Ltd. Her Honour took the view that an Australianbased director or procurer is not a primary infringer when the product is
manufactured overseas. Under the Act, acts of infringement have an implied
territorial limit. 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. Given Jessup Js 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. 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.
82
83
84
85
86
78
79
80
81
Ibid.
82
83
84
85
86
Review 2 Pty Ltd (in liq) v Redbury Enterprises Pty Ltd (2008) 173 FCR 450, [74] (per
Kenny J); Led Technologies Pty Ltd v Elecspess Pty Ltd (2008) 80 IPR 85, [88]-[89] (per
Gordon J).
Led Technologies Pty Ltd v Elecspess Pty Ltd (2008) 80 IPR 85, [88]-[89] (Gordon J).
Shapeways operate out of the United States, the Netherlands and Norway:
Shapeways Inc, About Us
<http://www.shapeways.com/about>.
EAP 14
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
unauthorised product into Australia for sale or use for the purposes of trade
or business. 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.
87
90
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. 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.
91
87
88
89
90
91
EAP 15
93
94
95
96
98
99
100
101
102
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
94
95
96
97
98
99
100
101
102
This would also extend to any 3D printed item that is not only identical but also
substantially similar to the registered design.
Simon Bradshaw, Adrian Bowyer and Patrick Haufe, 'The Intellectual Property
Implications of Low-Cost 3D Printing' (2010) 7(1) SCRIPTed 5, 11.
Ibid.
Some spare parts are already featured in online file sharing sites: see generally
Shapeways.com and Thingiverse.com.
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.
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
EAP 16
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
104
parts but also that of suppliers of non-genuine parts: See generally, Australian Law
Reform Commission, Designs, Report No 74 (1995) Chapter 16.
103
104
105
106
EAP 17
107
109
110
111
112
113
107
Led Technologies Pty Ltd v Elecspess Pty Ltd (2008) 80 IPR 85, [88]-[89] (Gordon J).
108
109
Ibid.
110
See, for example, Universal Music Australia Pty Ltd v Cooper (2005) 65 IPR 409.
111
112
113
EAP 18
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
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. 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.
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. 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 patentees exclusive rights. On the other hand, the Designs Act expressly
defines infringing activity. 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. Rothnie and Lahore suggest that its absence is a result of the primary
115
116
117
118
119
120
114
115
116
117
118
119
120
Lahore and Rothnie, LexisNexis Australia, Copyright and Designs, vol 1 (at 112),
[71,070].
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].
Ibid [71,070].
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).
See Designs Act 2003 (Cth) s 71.
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).
EAP 19
122
124
126
121
122
123
See Keller v LED Technologies Pty Ltd (2010) 185 FCR 449.
124
125
126
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) 46 IPR 553,
[97].
Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574 approving the
test in The Koursk [1924] P 140, 159-160.
Ibid.
EAP 20
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
128
129
131
132
133
On the other hand, mere facilitation of infringement does not attract joint
liability. Mere facilitation can include situations where a defendant is selling
articles that can be used for both infringing and non-infringing purposes.
Even if the defendant knows that the articles are used for infringement
purposes, it will not attract liability.
134
135
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
127
128
129
130
131
132
133
See Ann Monotti, 'Liability for Joint Infringement of a Method Patent Under
Australian Law' (2013) 35(6) European Intellectual Property Review 318, 320.
Ibid.
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 44 IPR
481, 500.
134
135
136
EAP 21
138
139
140
Response
142
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
139
140
141
142
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.
As compared with services such as The Pirate Bay, which actively directs users to
illegal, copyrighted works.
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.
IP Australia received 7,024 design applications in 2015. See IP Australia, Australian
Intellectual Property Report 2016 (2016), 19.
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.
EAP 22
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
144
146
147
148
149
143
144
145
146
Weinberg, above n 8.
147
Ibid.
148
149
See
Shapeways
Inc,
Shapeways
<http://www.shapeways.com/legal/content_policy>
Content
Policy
Ibid.
EAP 23
151
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. 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.
152
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), 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
155
150
Across all intellectual property rights, see Shapeways Inc., 2015 Transparency Report
<http://www.shapeways.com/legal/transparency/2015>
151
152
153
154
155
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).
Copyright, Designs and Patents Act 1988 (UK) s 226(1).
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.
EAP 24
The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
157
158
160
161
162
156
157
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.
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
159
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_Li
censing_Your_3D_Printed_Stuff.pdf>.
161
162
EAP 25
164
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.
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. ACIP was not the only organisation looking at the implications
for designs law. The Australian Productivity Commission has examined the
adaptability of designs law, while WIPO and the European Commission
have raised concerns about the enforcement of design rights in light of 3D
printing technology. However, it is unlikely that any legislative change will
follow.
166
167
168
169
171
172
163
164
165
Where attribution can be lost once the file is sent to the 3D printer: Park, above n
162.
Mendis, above n 7, 168.
See generally Rolf H Weber, 'Does Intellectual Property Become Unimportant in
Cyberspace?' (2001) 9(2) International Journal of Law and Technology 171.
166
167
168
169
170
171
172
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The Third Industrial Revolution: 3D Printing Technology and Australian Designs Law
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. Designs are increasingly created
and customised in a digital world. However, in Australia protection is tied to
physical products only, as designs law was established well before the digital
revolution. 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.
174
175
176
Conclusion
173
174
175
176
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.
Advisory Council on Intellectual Property, above n 12, 14.
EAP 27