3D Printing: another challenge for copyright owners

3D printing raises a number of issues for copyright owners already facing the challenges of the internet and other digital technologies. The photocopier copies documents. Digital technologies and the internet have resulted in the copying of films and music. Now with 3D printing, three dimensional articles can be easily copied. And the copies can be mass produced or custom made potentially depriving the copyright owner of substantial revenuesⁱ.

While copying of articles has always been an issue for copyright laws, it is the potential scale of copying and the use of digital technology which may see the development of the law in this area.

Key points

• Existing laws relating to the design copyright overlap will apply to the making of articles by 3D printing. With a few exceptions, the making of copy articles by 3D printing will not infringe copyright where the copyright owner has made and sold the article.
• The provisions in the Copyright Act relating to “reverse engineering” (although not described as such) provide that it is not an infringement of copyright to make a drawing depicting an article as part of the process of making that article by reverse engineering if the making of the article itself does not infringe copyright.
• However, the reverse engineering defence will not apply to the making of a copy of a digital file used in making the copy of the article because the digital file is a literary work and the relevant defence only applies to artistic works.
• Copyright owners are likely to face challenges to the ownership of copyright in the digital files on the basis that it can be argued that there is no human author of the digital file.

Terminology

For the purpose of this article, the following terminology will be used:

3D printing, also called additive manufacturing, is the process by which an article is made by building up layers of a material in special machines using information typically contained in a digital file. There are now various methods of 3D printing and machines available.

3D copier is the person who produces a copy of an article using 3D printing.

A digital file is the set of instructions relating to the shape and configuration of an article which enable a 3D printer to make the article.

An article is an article in three dimensions which can be made by the 3D printer using the digital file.

The process of reverse engineering is the examination and analysis of an article to determine its shape and configuration in order that a copy of it can be made. Digital scanning technologies can be used making the process easy and accurate.

Old laws for a new situation

The starting point is that copyright in an artistic work can be infringed by making a copy in either two dimensions or three dimensionsⁱⁱ. Thus, for example, copyright in an engineering drawing which depicts an article can be infringed by either making a copy of the drawing or a copy of the article depicted. But making a copy in three dimensions is subject to provisions in the Copyright Act usually referred to as the design copyright overlap provisions.

These provisions are set out in Division 8 of the Copyright Act, an area of copyright law which has evolved over many years with frequent changes to the wording used. The general policy of the law is relatively easy to state: copyright is not intended to protect or give a monopoly in relation to the copying of articles which have been mass manufactured and sold by the copyright ownerⁱⁱⁱ. If a product has novel and inventive functionality, it can be protected by a patent. If the product has a distinctive look, it can be protected by a registered design or even a registered trade mark. But the policy of the law is that copyright should not be used to prevent copying of mass produced articles.

But finding the wording to achieve this policy has not been easy^iv. Some of the phrases used, such as “corresponding design” or “industrially apply” have become the subject of case law which has added layers of meaning which have taken on a life of their own. The legislation itself has evolved over time, sometimes to overcome difficulties raised in the case law.

The gist of Division 8 can be summarised as follows, simplifying some of the wording used:

• Section 74^v: by defining “corresponding design” by reference to “visual features of shape and configuration” (i.e. the three dimensional attributes of the article) Division 8 is intended to deal with copying in three dimensions and not in two dimensions.
• Section 75: where the copyright owner elects to register a design, it is not an infringement of copyright to make an article in accordance with that design (it may be an infringement of the registered design under the Designs Act but that is a separate matter).
• Section 77: this sets out a number of requirements which if satisfied provide a defence to the making of an article which would otherwise be an infringement of copyright in the drawing of the article. These requirements are:
• Copyright subsists in an artistic work (usually a drawing) but excluding a building^vi or work of artistic craftsmanship^vii (which are other forms of artistic works).
• The copyright owner or a licensee has made commercial quantities of the articles depicted in the drawing^viii (the wording used is “a corresponding design is or has been applied industrially”).
• The articles made by the copyright owner or licensee are sold or hired^ix.
• There is no registered design for the article or such a design is not registerable.
• Section 77A: it is not an infringement of copyright to make a drawing (“the copy drawing”) which is a copy of another drawing (“the original drawing”) if the copy drawing is made by a process of reverse engineering (as opposed to copying the original drawing directly) and the copy drawing is produced for the purpose of making an article as depicted in the drawing^x.

Note that sections 77 and 77A do not result in a “loss” of copyright in the original drawing. But it is not an infringement of copyright in the original drawing to either make a copy article (section 77) or a copy drawing by a process of reverse engineering (section 77A).

Application to 3D printing

What does this mean for 3D printing and the making of copy articles by 3D printing? In short, it means that the making of an article by a process of 3D printing does not infringe the copyright in the drawing of the article, unless one of the exceptions applies (i.e. a building or work of artistic craftsmanship).

There is nothing really new in this outcome. Making a copy article by whatever means, 3D printing or by more traditional means, leads to the same result.

It is likely that there will be more cases dealing with issues such as what constitutes “a work of artistic craftsmanship” or whether the making of a small number of articles can be “industrial application”. But generally, it should be a case of business as usual as far as the application of Division 8 to the making of articles by 3D printing.

Section 77A: reverse engineering and the digital file

Until the introduction of section 77A, there was doubt about whether the making of a drawing by the process of reverse engineering infringed copyright or not. It did not make commercial sense that the making of the article did not infringe copyright but the making of a drawing of the article incidental to the process of reverse engineering could infringe copyright. Justice Wilcox in the Warman No.2 case^xi took the view that the making of such a drawing would infringe copyright even if the making of the article itself would not:

“Although the point is academic in this case since there is no evidence of “reverse engineering” having been carried out, Mr Fica apparently believed that no infringement of copyright occurs in a case where engineering drawings are created by this process. Where “reverse engineering” is used, there is no direct copying. The draftsman of the new drawing may not have seen the original drawing. Nonetheless, if the work has been accurately done, the new drawing will reproduce the artistic work (if that is what it is); that is the original drawing. Despite the use of the word “copyright”, the right which the Act creates is not limited to protection against copying. It extends to unauthorised reproduction.” (underlining added)

Although the introduction of section 77A resolved this issue, these comments may still be relevant where the copying is by means of creating a digital file rather than a drawing and it can be argued that the copier has made a reproduction of the digital file by a process of reverse engineering.

The argument can be summarised as follows:

• The copyright owner creates a drawing using a CAD system.
• The system also creates a digital file (the original digital file) which is used to make the article.
• The 3D copier scans the article to create a digital file (the 3D copy digital file).
• The 3D copier uses the 3D copy digital file to make the article.
• The making of the 3D copy digital file is an infringement of copyright in the original digital file on the basis that it is a substantial reproduction of it.

There are some obvious difficulties with this argument. For example, if the 3D copier uses different software to scan the article and create the 3D copy digital file, it is unlikely that the 3D copy digital file will contain software which substantially reproduces the software in the original digital file. But it is still possible that a substantial part of the original digital file will be reproduced – in the Autodesk case^xii it was sufficient that a “look-up table” was reproduced by a process of indirect copying. So subject to a favourable factual scenario, it is possible that such an argument could be successful.

But surely section 77A will then come to the aid of the 3D copier and provide a defence to copyright infringement because the digital file is produced by a process of reverse engineering? No, it doesn’t because section 77A applies only to artistic works, such as drawings, and not to literary works. The digital file is a literary work, being a computer program^xiii.

Authorship of copyright in the digital file

The above discussion focusses on the process of reverse engineering where the copier does not have access to either the original drawings or any digital file made by the copyright owner. But is it an infringement of copyright if the copier has access to the copyright owner’s digital file and copies it? On the face of it the copier cannot rely on the defences:

• In section 77 because the digital file is not an article (the word used is product) within the meaning of section 77.
• In section 77A because the digital file is not an artistic work and, in any event, the digital file is not made as part of a process of reverse engineering.

So, like direct drawing to drawing copying, to copy a digital file directly may still infringe copyright.

But there is another issue for the copyright owner: does copyright subsist in the digital file? In light of the findings in the Telstra v Phone Directories case^xiv it is arguable that the digital file has no human author and therefore copyright cannot subsist in it. The argument is along the following lines:

• The person who makes a drawing of an article whether manually or, more likely, using CAD software (the draftsman), is author of the drawing.
• But the digital file of the drawing is made by the software and it cannot be said that the draftsman is author of the digital file (the software automatically converts the drawing to a digital file without any human input).
• Further the author of the computer program which creates the digital file is not the author of the digital file itself.

If this argument is accepted, the owner of copyright in the drawing cannot assert copyright against a person who copies the digital file.

Summary

In summary, while most scenarios involving 3D printing are covered by the provisions set out in Division 8 as discussed above, there are some potential loopholes.

Originally published in IP Bulletin

By Guy Provan
Contact Guy: g.provan@watermark.com.au

i For a website which has comprehensive coverage of 3D printing issues see: 3dprintingindustry.com. For legal issues, John Hornick of US lawyers Finnegan has published extensively: http://www.finnegan.com/johnhornick/

ii See Section 21(3) of the Copyright Act.

iii See the Revised Explanatory Memorandum to the Designs (Consequential Amendments) Bill 2003. See also Part 17 of the ALRC Report on Designs published on 31 August 1995.

iv A brief history of the copyright design overlap provisions is set out in Lahore: Copyright and Designs starting at 64,000.

v The definition of “corresponding design” in Section 74 does not include features such as “pattern or ornamentation” which would be considered two dimensional features when embodied in a product. Thus two dimensional designs such as patterns on wallpaper or clothing are not “corresponding designs” within the meaning of section 74 and the overlap provisions do not apply to them. Controversy can arise where there is a dispute as to whether the feature is in two or three dimensions: see for example Polo/Lauren v Ziltani (2008) 173 FCR 266; 80 IPR 531; [2008] FCAFC 195 which involved a design woven in to the fabric of clothing. See also the definition of “embodied in” in Section 74 itself.

vi Section 77(1)(a) refers to “a building or a model of building”. A building is defined in section 10 as “a structure of any kind”.

vii The leading case is Burge v Swarbrick (2007) 232 CLR 336: 72 IPR 235; [2007] HCA17 HCA; where the hull of a boat was held not to be a work of artistic craftsmanship.

viii Copyright Regulation 17 provides that the making of 50 articles is deemed to be industrial application but there may be circumstances where making less than 50 articles may still be industrial application. See Safe Sport Australia Pty Ltd v Puma Australia Pty Ltd (1985) 4 IPR 20.

ix The wording in section 77(1)(c) refers to products being “sold, let for hire or offered or exposed for sale or hire, whether in Australia or elsewhere”.

x The wording used does not refer to reverse engineering as such but the defence applies where “the reproduction is derived from a three-dimensional product that embodies a corresponding design in relation to the artistic work”.

xi Amalgamated Mining Services Pty Ltd v Warman International Ltd [1992] FCA, 542; 24 IPR 461.

xii Autodesk Inc v Dyason (1992) 173 CLR 330; (1993) 176 CLR 300. The “look-up table” (not a computer program itself) was included in a program known as Widget-C which in turn was one of a number of programs which made the device work (in effect a locking device for an AUTOCAD system). Despite the fact that the look-up table was a relatively small part of Widget-C, it was held that it was a substantial part of it. The case is also significant in that the copying was indirect, see the judgment of Dawson at paragraph 28: “The third respondent copied the look-up table in Widget C indirectly only by copying the sequence of numbers put out by the AutoCAD lock. But copyright may be infringed by copying something which is a copy of the copyright work; indeed, that is the most common form of infringement. The sequence of numbers put out by the AutoCAD lock is clearly a copy of the sequence in the look-up table in Widget C. Indeed, it is essential that it should be so for the lock to operate as intended. The sequence of numbers incorporated in the EPROM in the Auto Key lock is a copy of the sequence put out by the AutoCAD lock. It is not something which the third respondent arrived at by means of his own calculations.”  In a 3D printing context: by creating a digital file based on scanning an article, it is possible to make a substantial reproduction of the original digital file used in the making of the article.

xiii A computer program is defined as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”. A literary work is defined as including “a computer program or compilation of computer programs”.

xiv Telstra v Phone Directories Co Pty Ltd [2010] FCA 44 and on appeal at [2010] FCAFC 149. This case involved the compilation of a database where individuals input information which was complied by computer programs to make the database. On appeal Perram J dealt with the issue of whether the database had human authors, at paragraph 119: “Although humans were certainly involved in the Collection Phase that process antedated the reduction of the collected information into material form and was not relevant to the question of authorship (other than to show that the works were not copied). Whilst humans were ultimately in control of the software which did reduce the information to a material form, their control was over a process of automation and they did not shape or direct the material form themselves (that process being performed by the software). The directories did not, therefore, have an author and copyright cannot subsist in them.” In the same way, the draftsman of a drawing may create the drawing using a computer program but it is the program which compiles the digital file. The draftsman is not the author of the digital file.