3D printers are an amazing way to create three-dimensional objects. They print by laying down thin layers of plastic or other substances, until the object is built up. They can print all manner of objects, and the cost of 3D printers has been substantially reduced making the printers much more accessible. They are even within reach of home use. In order to copy an existing object, a file or blueprint needs to be created that instructs the printer to print the object. These can either be created, copied or found online at websites such as http://www.thingiverse.com/ , as well as numerous pirating websites.
3D printers may be the next big challenge to the protection of intellectual property (IP) rights. Photocopiers were an early challenge. The digital age has made things much more difficult for IP owners, with the ease with which music, films and written works can be copied and distributed. 3D printers go a step further, and can allow individuals and small scale manufacturers to produce copies of products. Of course counterfeiting of products such as handbags, watches and electronics is long established, but 3D printers put the tools in the hands of individuals to manufacture products and they provide a new way for commercial organisations to copy products.
A recent article in The Age reports a story of a small manufacturer who created an iPhone dock inspired by the hit TV series Game of Thrones. He received a letter from the US rights holder of Game of Thrones, HBO, demanding that sales cease. He complied and even refunded customers' money.
Copying 3D objects
What if the Game of Thrones iPhone dock case were played out in Australia? Let's assume that the copyist had access to or otherwise created a file that was an exact copy of merchandise that is the subject of a famous media franchise, such as an iPhone dock. Can this be stopped? The answer is probably, but it will depend on the facts.
The first question is whether the design of the iPhone dock has been registered (and certified) under the Designs Act 2003. If the copy is substantially similar in overall impression to the registered design, its making, importation, sale, use or keeping will infringe the registered design. However, not every shape of a product will qualify for design protection; a design must be new and distinctive. In addition, if the IP owner licenses 100s or 1000s of items of merchandise, it is unlikely to be practical to attempt to register all of the designs.
It depends on the facts whether copyright is able to assist. If the copyist has directly copied the IP owner's blueprint, an action for copyright infringement will be available. However, most copying of 3D objects is done from the object itself, rather than from the plans. The policy of the legislation has been to push businesses towards design registration. Copyright protection is effectively lost where a design is industrially applied by, or with the licence of the copyright owner.
It does not matter whether the industrial application takes place in Australia or overseas. Industrial application usually means making more than 50 articles. Once the design has been industrialised, this will normally prevent a claim being made for copyright infringement by 3D articles.
There are two exceptions to the industrial application rule:
- Copyright protection is not effectively lost where the artistic work is of a building or model of a building. This exception is not applicable here.
- Copyright protection is maintained for works of "artistic craftsmanship". These are usually arts and crafts type objects such as jewellery, pottery and glassware. To qualify, the object must be the work of an artist/craftsman. What constitutes a work of artistic craftsmanship is a very difficult issue. It is unlikely, but not impossible, that a decorative iPhone dock could be a work of artistic craftsmanship. If so, the copyright owner could take copyright infringement proceedings against the copyist.
For an international media franchise, trade marks have probably been registered. This is likely to be the name of the movie, TV series, or perhaps some subsidiary trade marks such as character names (e.g. the Game of Thrones character KHALEESI). If these are taken – on the packaging of the iPhone dock for example – the trade mark owner can prevent the continued sale of the product using the trade marks. However, the copyist could still sell the product without the trade marks.
The most likely grounds for a successful objection to the iPhone dock are passing off and misleading and deceptive conduct under the Australian Consumer Law. Here the law looks at the get up of the iPhone and its packaging. The answer to the problem will depend on the facts. As the media franchise is famous, one can assume that customers would recognise the product as coming from the franchise. However, in this they are misled because the product is a counterfeit. The copyist could try to place a disclaimer on the packaging, stating that the iPhone dock is not authorised by the IP owner. If this clearly negates the misrepresentation this may absolve the copyist from liability, but it must be sufficiently clear and prominent to do so. A disclaimer usually defeats the copyist's purpose of associating the product with the famous franchise.
What can be done?
What can an IP owner do to improve its position? If it is feasible to do so, one should register product designs under the Designs Act 2003. This provides protection for up to ten years. Design registration will protect the shape of the object or the pattern applied to the object. It must be applied for before the product is made public – typically before it goes on sale.
Making claims against individual consumers is neither practical nor productive of positive consumer sentiment. If the IP owner could grant individual consumers licence to download blueprints for the iPhone dock a problem may then become an opportunity. Legitimising downloading of files for 3D printers at a reasonable charge may become to merchandise what iTunes has become to songs.
Determining whether IP rights have been infringed by a copyist of a three-dimensional object is a complex matter. An experienced IP practitioner is best placed to steer you through the various issues and find the best solution to your problem.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.