Only a Technicality - CJEU Decides on What Amounts to a 'Technical Function' in Registered Designs

The protection of designs is complicated, no less because the design of a particular product can often be tied to the end function it is meant to achieve. A functional element of a design might not attract protection as a design, since the regime only protects (to put very simply) aspects of designs that are of more aesthetic value. What amounts to a feature that won't be protected is difficult to decide, as many aesthetic features can often achieve a technical result as well. This prompts the question, when is a feature like that protectable or not? The CJEU took on this question on a case decided only a few weeks ago.

The case of DOCERAM GmbH v CeramTec GmbH concerned the manufacture and sale of technical ceramic components by DOCERAM, in particular, weld centring pins for the automotive and textile industries. Many of these designs are registered as Community designs (RCD 242730). CeramTec also manufactures and sells similar centring pins in the same variants as DOCERAM's registrations. DOCERAM subsequently took CeramTec to court for design infringement, with the matter ultimately ending on the desk of the CJEU.

The referring court asked two questions, which related to the factors in determining whether a design is one that is solely dictated by its technical function, and therefore not registrable under Article 8(1) of the Community Design Regulation.

The first question, as set out by the Court, asked whether "…Article 8(1)… must be interpreted as meaning that, in order to ascertain whether the features of appearance of a product are solely dictated by its function, the existence of alternative designs is decisive, or whether it must be established that function is the only factor which dictated those characteristics".

Having considered the legislation and relevant case law, the Court determined that "…Article 8(1)… excludes protection… for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist". In short, even if alternative designs exist, the only relevant consideration is whether the technical function is the only factor which determined the features in question and the applicability of Article 8(1).

With regards to the second question, the referring court asked whether "…Article 8(1)… must be interpreted as meaning that in order to determine whether the relevant features of appearance of a product are exclusively dictated by its technical function, that finding must be based on the perception of the ‘objective observer’".

The Article does not set out any requirements on the perspective of the assessment above, unlike other provisions in the Regulation. That in mind, the objective of the Regulation nonetheless does require national courts to take account of all the objective circumstances relevant to each individual case when determining whether features of a design are covered by the provision.

The Court finally set out that "…in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function… the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’".

The case sets out clear guidelines on the assessment of features in designs that may or may not be solely dictated by their technical function. Designs are often a pile of uncertainty, being very difficult to protect (as illustrated well by the Trunki case, more on which here). Having a clearer idea as to how the lines are drawn for protection helps both proprietors and others disputing the registrations.

Trunki Aftermath - UKIPO Issues Guidance on Design Applications

Since the Supreme Court's decision in Trunki, which this writer somewhat disagreed with, there has been some uncertainty as to the place of designs in the UK, particularly in relation to the question of lack of ornamentation and the illustration of designs in the applications. In the light of this uncertainty, the UK Intellectual Property Office recently sought to give applicants (and their legal advisers) some degree of clarity in this matter.

The UKIPO's note DPN 1/16 ("Guidance on use of representations when filing Registered Design applications") gives guidance on the filing of various illustrations and their implications; something many legal practitioners desperately needed since the above decision. The note is by no means legally binding, but certainly a very persuasive and important document when considering advise being given to potential applicants of registered designs in the UK.

The crux of this issue is the use of more simple designs that aim to protect shape alone, and more intricate ones, which seek to protect the shape and the look and/or ornamentation of the design. The former of the two offers a much wider scope of protection, whereas the more intricate a design is, arguably the harder it is to succeed in a like-for-like assessment of infringement. Case law has not settled this matter entirely, with line drawings possibly protecting only shape or to also include even minimalist ornamentation (as was seen in Trunki, i.e. a lack of ornamentation could be construed as a feature, weighing against included ornamentation in another product). The note does also acknowledge that a lack of ornamentation can be a feature (as opposed to the obiter comments presented in the Trunki decision, as mentioned above), which was a question that needed to be settled due to a lack of a referral to the CJEU by the Supreme Court.

Frustrations over design applications were palpable

Although not discouraging the use of CAD drawings, such as in Trunki, the UK IPO still highlights that "[w]hen using more detailed CAD-type representations, the visible presence of apparently-incidental features such as, for example, shading and light reflection, may still be taken into account by a Court or Tribunal, and may have the effect of limiting protection to shape ‘and more’. Therefore, when seeking to protect shape-only, applicants are advised to use simple line drawings, without any colour or tonal differences, and without any visible surface features or decoration". One can appreciate that, should an applicant want the broadest protection possible, they should seek to use line drawings rather than CAD imagery. The decision in Procter & Gamble does raise the possibility of this being an issue for any additional features, but this writer would hesitate a guess that most would want to aim for shape-only protection over uncertainty as to any 'incidental' features raised in opposition or infringement proceedings.

The UK IPO further highlights the possible use of disclaimers in filings, where features not intended for protection are excluded in the application, which can be done both in "...graphic form (for example, by circling those elements which are intended for protection, or by blurring-out those elements which are not), or in written form (by drafting and submitting a statement which explicitly states what is or is not intended for protection)". This is important in a CAD image context, where shading and color differences (e.g. a black handle) can be issues down the line, but can be remedied using these limitations.

The Office summarises their guidance at the end of the note, which sets out quite clearly that "Applicants should be careful when selecting representations to ensure that they accurately reflect what the design is intended to protect. Designers should always give thought as to how their design might be exploited by others, and ask themselves whether the features disclosed in their chosen representations accurately convey what they are seeking to protect. In all cases, the protection conferred is likely to be assessed by reference to features disclosed in the representation(s) submitted, rather than by reference to the ‘type’ or ‘format’ of representation used". As one can see, the format of the representation (i.e. whether a CAD image is used or a line drawing) will not be the determining factor limiting the protection of the design, but the features it discloses, including possibly a lack of ornamentation in a more fleshed-out image.

This writer applauds the UK IPO for taking on this important question, and offering applicants more guidance on what to do and how to do it, so as to avoid any unwanted decisions like in Trunki. Designs are an often overlooked feature within IP, not helped by many questions such as this swirling in its vicinity, and proactive addressing of issues such as here should help things progress into a more accepted and used space for applicants.

Words Reinterpreted - Copyright and Translations

As has been well-established for years, copyright protects the expression of ideas rather than the ideas themselves (more on which can be found here), no matter what your expression for that idea may be. Words especially are a very nuanced, often unique way of conveying similar ideas or stories, making them the most malleable out of all forms of more direct expression (when images can be much more subjective, at least in this writer's opinion). Although similar stories have been told for centuries, basing themselves on old folk lore or mythologies, their specific expression has always varied drastically, tacking onto the societal make-up of their time and their respective overarching themes. Translations take those works and make them available to people who otherwise would not be able to access them. With this in mind, can you translate a story and not infringe its copyright, and can a translation be a new form of expression of the same story, potentially being protected by copyright itself?

Under the Copyright, Designs and Patents Act 1988 in the United Kingdom, copyright holders have a specific set of rights in their protected works, which includes literary works. Under section 16 of the Act only the copyright holder is able to make an 'adaptation' of the work, which specifically includes translations. Should you choose to make a translation of a work, without seeking a proper license to do so from the copyright holder, you would be infringing their copyright (specifically section 21 of the CDPA). This follows Article 8 of the Berne Convention for the Protection of Literary and Artistic Works that gives authors "...the exclusive right of making and of authorizing the translation of their works throughout the term of protection of their rights in the original works".

Is there any way for an individual to translate a work without infringing copyright then? Under the CDPA there are certain exceptions for the use of copyright protected materials that translations could potentially fall under, specifically criticism, review and news reporting and research and private study. Both exceptions provide avenues for a legitimate use of materials so far as the use is for that specific purpose and not merely done under the façade of the exception in order to create an infringing copy. Arguably, translating a copy for criticism, review or news reporting provides a sufficient reason to do so, as the understanding of the underlying material and using it in that task can be said to be fair and a proper use of copyright protected material for that purpose. The same goes for research and private study, especially when no officially translated source material is not available to be used and thus the materials could not be used to advance your own personal education or research. Arguably none of these do allow for the distribution and/or sale of a translated work, but do offer an avenue for legitimate uses of translated works should you require to do so.

Albert was a master linguist (Source: Farmers Weekly)

Other common law countries have very similar provisions dealing with the translation of copyrighted works. In the United States copyright similarly does not allow for the creation of translations of works, as under 17 USC section 106 the copyright holder has the sole right to create 'derivative works', which does include translations. Canada, much like its cousin in the South and across the pond, gives the right to translate works only to the copyright holder under the Canadian Copyright Act. Finally, Australia, much like the previous three, protects translations as a right only bestowed to the copyright holder under the Copyright Act 1968, as they are considered an adaptation of the original. Clearly the ability to translate a work is seen as an important right of the original author, and rightfully so, as the spreading of a work to new territories, often through linguistic barriers that require the translation of your work, and an opportunistic infringer could easily pounce on the popularity of a title only released in a select few countries.

This still poses the question that can a translation be a new work unto its own, and possibly be protected under copyright outside of the original work? In the US the protection in any derivative works (and in turn, translations) only extends to the newly created parts of the work that did not exist in the original. This may seem very vague, which it is, but arguably this would be any changes in expression or artistic flourishes the translator adds to his or her take on the story, either through necessity, linguistic differences or just through their own initiative. This does not create a work in itself, but does show that the translation can incur protection, even if partially so. Canadian legislation takes this a step further as it has been seen in Pasickniak v Dojacek by the Canadian Court of Appeal that a translated work is a copyright protected work in itself, wholly separate from the original work it derives from. This still does not mean the translator attains any copyright title in his/her translation as the copyright automatically vests in the copyright holder, albeit still separately.

Even so, translations can have even vast differences to the original works, and as seen above, potentially should carry more weight as separate literary works themselves without skirting the copyright of the source than you'd think. Great examples of where translations deviate onto a path of their own, at least in some terms, are works by Umberto Eco. His works often contain specific references to regional artists, works and anecdotes; material that has been noted to be changed or even omitted in his works when translated. Mr. Eco is by no means the only writer who has 'suffered' from the changes through translation, and arguably that is a part of the nature of the beast (there are instances where works have been altered for censorship as well). One could argue that when a translations steps beyond the bounds of the original drastically it could be said to be a work in itself; a reinterpretation of a story created prior. Regardless, copyright will probably not allow for the free translation and 'reimagination' of said works any time soon, as its main function is to reward the original author, not subsequent users of said material, arguably using very little imagination of their own (this writer does not, however, want to diminish their work by any means). Any aspiring translators will therefore have to keep their wits about themselves, and apply for relevant licences or approval before starting on their reinterpretation of their favorite foreign book.

Court Fashionistas - The ECJ Takes on Unregistered Designs

Oft forgotten by many intellectual property law practitioners and academics (including this writer, sadly), designs are put on the back-burner, and developments are overlooked or rare. With this in mind, a new development quietly emerged from the chambers of the European Court of Justice some time ago, which piqued this writer's interest. When dealing with designs designers have two distinct avenues of protection: registered designs and unregistered designs. Much like in the world of trademarks, registration is the preferred and stronger part of protecting your fashion creations, yet for less affluent or successful designers this might be an avenue beyond their means, or simply a fact of ignorance as to registration. In that event their only remedy is through the protection of unregistered design rights, protected under the Copyright, Designs and Patents Act 1988 in the UK. An important aspect of protectability in unregistered designs is that it has to have 'individual character', i.e. has to be something unique (to put into more common terms). What amounts to individual character then? This is what the ECJ sought to answer.

The case that faced this question was Karen Millen Fashions Ltd v Dunnes Stores, decided in the Summer of last year. At issue in the case was a shirt designed by Karen Millen, a designer from the lovely island of Ireland. The shirt in question was a blue striped shirt, sold by Ms. Millen in Ireland since 2005. Dunnes Stores are a chain of stores in the same country, partaking in the sale of women's clothing, much like Ms. Millen. Dunnes Stores had, at some point, designed and begun selling a very similar shirt, to which Ms. Millen clearly objected, taking the store chain to court over design infringement. Dunnes objected (appealing to the Irish Supreme Court), claiming her shirt had no 'individual' character, and therefore could not be afforded protection under the Council Regulation No 6/2002, which protects those designs, given they have both novelty and individual character - leading to a final decision in Europe's highest court.

The questions posed to the Court seemed quite simple on the outset: 1. when assessing individual character in an item, should the overall impression (as defined in the Regulation) be based on  a single or a combination of similar design features used; and 2. whether the burden of proof designates a need for merely the definition of what amounts to individual character, or that the article in question indeed possesses individual character?

Who ever said judges aren't snappy dressers?

In its assessment the Court took on the first question, and after some discussion, saw that "...Article 6 of [the Regulation] must be interpreted as meaning that, in order for a design to be regarded as having individual character, the overall impression which that design produces on the informed user must be different from that produced on such a user by one or more earlier designs taken individually and viewed as a whole, not by an amalgam of various features of earlier designs". What the Court decided was that the overall impression, in assessing individual character, must be decided on whether the article itself produces a unique impression on the individual, given the body of similar designs viewed as a whole (i.e. similar designs, not just a patch-work of all designs), and not as merely a collection of designs. Should the article give the overall impression of uniqueness and true individual character in light of that body of designs, then the article possesses individual character under the Regulation.

The second question, was answered almost just as easily. To prevent a designer from bringing an action under the Regulation, without first proving the article's individual character and not simply just identifying the infringed article, would, in the Court's mind, go contrary to the intention of the law. As such, the designer would only have to "...both prov[ide] when his design was first made available to the public and indicate[] the elements of his design which give it individual character". From a practical perspective this makes sense, and having a designer effectively contest the validity of his or her design prior to proceedings seems nothing short of silly.

In the end the case was brief, and quite concise, giving us a peek at the often ignored topic of designs. This writer will fully admit to not being wholly familiar with design law, yet attempts to keep track of happenings and wrap his (non-fashionable) brain around them.

Source: JDSupra

Birds Of A Feather - Twitter and Copyright

Social media has changed how we interact with others, both online and to an extent, in real life, but its impact on creativity and the spreading of such materials is unrivaled, with content that goes 'viral' producing unprecedented revenue figures in recent years. With this in mind, capitalizing on such successes for others seems like an easy opportunity to make some money, and using social media to do so gives us all an avenue where it's both effortless and instantaneous. One such platform is Twitter; something which most people are aware of these days (even this blog has its own Twitter account). For the hopelessly uninitiated, Twitter allows you to share content, be it links, statements or quotes, with relative ease to all of your followers (and their followers, should they choose to share - i.e. retweet - your content), but allows you to only do so within the limit of 140 characters. With such restrictions, and the medium itself considered, would a tweet be enough to merit copyright protection? Furthermore, can you infringe copyright by tweeting someone else's content?

Whether tweets are indeed protected by  copyright is an assessment of whether they can be deemed to be literary works under such regimes. The Copyright, Designs and Patents Act 1998 in the UK, and other similar laws within the common law, does not set out any word or character limits to what can be deemed as a literary work. Should the tweet itself be original, and admittedly this writer for one has seen his share of funny or interesting tweets over the years, it could be considered a literary work and thus be protected by copyright. Tweeting about pictures or videos one has made does not in itself afford copyright protection to that particular tweet, but the copyright in those standalone works still quite well exists by its own merits. This question does not have a straightforward answer at the end of things, but should your Twitter output be interesting, funny or creative enough, you can rest easy your 140 character gold will most likely be protectable.

Some tweets are less 'original' than others, quite frankly

Copyright infringement on the other hand is a wholly different beast when it comes to Twitter, and as stated above can be something your average tweeter might not think about in the casualness of the medium. Albeit not exactly a tweet, an advertisement in the New York Times used a tweet by A. O. Scott, a film critic of some note, as a form of endorsement (one which was not approved by the critic himself) landed them in a bit of hot water, and prompted a conversation on whether tweets carry copyright protected subject matter. As can be seen above they arguably do, and this instance further enforces that notion. Some estimates have put a worth of several thousands of pounds on a celebrity's tweet, which only goes to show that even without much literary merit, a tweet can still be quite valuable, and therefore, worthy of protection. Using other people's tweets therefore can be an issue, should one do so without proper authorization.

But getting back to your average Twitter user; can you infringe copyright by retweeting someone else's tweet? Should someone post a tweet which infringes copyright, say an unauthorized excerpt from a famous book, containing an integral part of the story, one could potentially infringe copyright by retweeting that same excerpt. Should that part be deemed substantial enough to infringe copyright under the CDPA 1998, a retweet could very well infringe copyright. Again, retweeting and infringing copyright has no clear-cut answer, and given the length of each tweet, infringement would have a much harder time if dealing with more extensive works and excerpts of those works in the twittersphere.

Albeit a very brief consideration, one can see above that Twitter does provide us with an interesting sphere in which copyright resides. Most users of Twitter are incredibly casual with the medium, and although it will probably not cause any major issues for most copyright holders, some frequently more hilarious tweeters might want to be on their toes when they hear the birds chirping.

The Intellectual Property Act 2014 - Thoughts

After a myriad of changes in recent years, more specifically in copyright (more on which on this very blog can be found here, here, here and here), one can seem overwhelmed by the constant updates and tweaking intellectual property law has gone through. Just as things have seemed to settle down new changes have to be discussed, although this writer will wholly admit he is a bit late to the punch on this one (as the law was passed over a month ago). Nevertheless, a new piece of legislation has been passed, the Intellectual Property Act 2014, which is coming into force in a matter of weeks, prompting this writer to expand on its potential impact prior to it becoming solid law. The Act focuses on designs and patents, which shall be discussed separately below.

Designs

By far the bulk of the legislation, designs have been needing some revamping and adding to, even though they are quite well protected under the current Copyright, Designs and Patents Act 1988 and the Registered Designs Act 1949. As explained by the UK IPO: "Design law is often considered messy, complex and confusing, and small businesses, who don’t have the time or resources to disentangle it, can lose out. The IP Act will introduce a number of new measures and make some changes to the law in order to make design law simpler, clearer and more robust".

In terms of unregistered designs the Act changes the definition of a design from (in the CDPA 1988) "...the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article" to one which omits the phrase '...any aspect of'. Although a seemingly minute change, the law now reflects in a more concrete fashion what is considered a design and what isn't as a part of the legislation, whereas should you leave the phrase in it makes things a bit more ambiguous. This clearly reflects the legislature's attempt at making things more straightforward, and arguably they have done so, at least on the face of things.

The Act also changes the default ownership of an unregistered design, allowing for the designer to be the owner of their design should it not be made in the course of their employment. The Act omits the phrase "...in pursuance of a commission or" from the previous provision in the CDPA 1988, which clearly gave ownership to those who commissioned the work, even if rights were not intended to be conferred upon the creation of a design. This will undoubtedly lower any confusion or potential issues of ownership, though does lower the protection of the individuals or entities which commission a work unless specifically assigned to them as a part of the commission contract. Ownership is also extended to persons who reside in the European Union (i.e. a qualifying country) at large, or conduct business in the Union regularly. Previously this was much more narrow under the CDPA 1988.

Finally, in relation to unregistered designs, the Act creates exceptions for infringement of a design right for private acts, experimentation and teaching, and over ships and aircraft. This exception is more relevant to the new form of infringement, which was created to protect registered designs.

Nothing gets a designer's creative juices flowing like new legislation

All of the above changes largely apply to registered designs as well, with some minor differences; however the most important, and discussion inducing, change has been the addition of the aforementioned infringement of registered design rights. Should a person or a business copy a design (without the consent of the rights' holder), doing so intentionally and with knowledge or have reason to believe the design is registered, they can be held liable for infringement. The offense also extends to businesses selling, importing, exporting, or uses items which they know or have reason to believe have copied a registered design. Prima facie the offenses seem quite broad, and with a defense of only reasonable belief to the items' registration status, can be potentially quite wide-reaching, especially in relation to businesses selling or exporting goods. An infringer can face up to ten years' imprisonment and/or a fine. This can be said to be a welcomed change, in that designs have lacked a proper offense provision, which trademarks and copyright have had for years.

In the light of the new offense the Act does allow for third parties to use registered designs, should they have done so in good faith and prior to the work's registration. This is assessed under the light of proper measures taken to ensure the design is or was free to use, preventing others from using this provision as merely a guise to protect themselves from infringement.

Finally, the Act allows for design registrants to finally apply for one single design registration within the remit of the Hague Convention registration system, streamlining and enabling quicker, more efficient registration of designs in a more international scale. 

Patents

The Act makes minor, yet important changes to the current patent regime, explained by the UK IPO in better terms: "The IP Act will introduce a number of changes to patent law, which simplify complex areas and make it cheaper and easier to use and defend patents. This will be beneficial for both patent holders and third parties". 

The IP Act also adds a provision which will add specific powers allowing for the inclusion of the Unified Patent Court as a part of the patent protection scheme in the UK. This will allow for a much quicker, more unified approach to processing any claims of patent infringement, as it spans the entire 25 Member States of the EU in the scheme. In addition to the Unified Patent Court the Act also allows for the sharing of unpublished patent applications with other patent offices through the UK IPO, which would allow for potential issues to be processed quicker and unclog the international system more. 

Conclusion

Overall the IP Act makes some welcome changes, and at least attempts to internationalize and streamline both patents and designs; something which has been, at least on the patent regime, long needed. Whether the new design infringement provision will cause issues will remain to be seen; however this writer for one believes it will strengthen the registered design scheme and potentially deter cases where infringement would be obvious. The Act will come into force in October, giving relevant parties enough time to prepare for any changes that affect them.

Source: Eversheds

Retrospective - Distinctiveness of Appearance

Often called the "...less glamorous cousin of other intellectual property regimes", the law protecting designs is overlooked by most as being a less 'sexy' point of discussion among more prevalent copyright and patent legislation. Amongst this one has to note that designs are something that most of us will deal with almost daily, as it pertains to how things look. This simple, yet very important aspect of intellectual property is taken for granted by most, however still much appreciated by those who work in the fashion industry and other fields which heavily rely on distinguishing their goods from others because of their distinctive appearance. Keeping this in mind, what does this regime protect then more specifically?

This matter was tackled in the 1970s case of AMP Inc v Utilux Pty Ltd. The case concerned the Registered Designs Act 1949 in the UK, under which any 'design', as defined as "...features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye", would be capable of being registered. The design which was sought to be registered by AMP was the shape of an electrical terminal for a washing machine, which was used to join electrical wiring. AMP entered into a contract with Hoover to produce such a terminal for them, which was subsequently registered under the Act as a registered design. In taking action against Utilux, AMP's designs validity under the Act was questioned. Could an electrical terminal have 'eye appeal'  under the Act, and therefore have been registrable to begin with?

Eye appealing, or just overcompensating?

Evidence was produced as to the similarities of electrical terminals made by others and AMP, all possessing different features and looks while still performing the same essential task. Lord Reid however found similarities amongst the terminals despite their varying styles. In a similar vein, these varying features had to play a part in the consumer's decision over which washing machine to buy in order for it to fall under the Act. Designs are concerned with physical appearances and their enticing nature, not its function.

In his judgment Lord Reid saw that "[f]or a design to be protected there must be a special or distinctive appearance, something in the design which captures and appeals to the eye. To have that effect, the design must be noticeable and have some perceptible appearance of an individual character". What his Lordship refers to is the eye of the consumer, not merely an aesthetic or artistic eye, further highlighting a need for it to catch the consumer's eye, not just be eye-catching. As the terminal in question was an internal component, it might not be fully visible, if at all, to the consumer, therefore not necessarily falling under the Act.

In the matter the infringer, the party claiming the terminal was not a registered design, would have to prove on a balance of probability that the article would not have greater appeal to any member of the public than an article which did not have that particular design which it possessed. In the case the House of Lords saw that the terminal did not fulfill this requirement, and the defendant had not subsequently infringed on their design rights.

One has to note that even if a design does not fall under a potential registered designs regime, it might still infringe the copyright of the entity in question. Should the design fulfill all the requirement of copyright, there could be an avenue of recourse through this measure. This pertains more to aesthetic elements, such as intricate patterns and such, but does not necessarily exclude other factors.

3D Printing and Potential Intellectual Property Issues

Who would have thought that the day would ever come when a person could create a three-dimensional model on a computer of basically anything your mind can conjure up, and a machine would make a physical version of that item in hours. This was the stuff science fiction was made only a few decades ago, but has since become a reality. Not only that, but with the emergence of sub-100 dollar 3D printers this is clearly an option for any domestic printing aficionados to use without the bulk and expense of older versions of this technology. This progression does however raise the question in any legal professional's mind; can 3D printing infringe intellectual property laws?

3D Printing and Copyright

Rick was not happy with his real face

As most objects which are printed using the aforementioned technology are small  figurines or sculpture type objects, items which have no functional use but only serve as aesthetically pleasing or to fulfill the need to have a physical representation of a certain character or shape. Objects like this are protected under copyright as sculptures, or any equivalent, with most common law countries having provisions protecting them (Australia, UK, US and Canada). Clearly should a person endeavor to print a 3D object representing a character or object which is protected by copyright, they would be liable for infringement. One has to note that this is still subject to enforcement, and arguably no copyright holder would bother in enforcing their rights over individuals should they print a figurine or two for their own personal enjoyment. Where the issue changes into a viable one in terms of enforcement is when the technology is used for the production and selling of such items, with a recent example being 3D figurines from the popular video game franchise Final Fantasy. In such instances there is incentive to protect the rights that are given to copyright owners, and rightfully so.

This protection can potentially be avoided however, as in the UK afford all artistic works (which includes sculptures) protection for a term of 25 years from its initial exploitation, after which their copying would be wholly legal. This period ends on the last calendar day after the period has ended, starting from the day it was first marketed. Looking at this any artistic works which have been marketed, figurines and such, after 1988 would be okay to print. No such provisions exist in other common law countries.

3D Printing and Trademarks

In Australia and the UK for example trademark legislation largely deals with the use of trademarks and not their creation per say. This use refers to its use in conjunction with different goods or services from the original, and not just their creation for personal enjoyment. This 'personal use' of trademarks has not been directly argued in court; however the rejection of commercial use has been noted in the creation of any registered trademarks. In the judgment of Arsenal v Reed, mentioned above, the Advocate General took the position that trademarks could be used for the creation of items where the person gains no material advantage in their creation. Clearly therefore the printing of any trademarked object for personal use would not infringe trademark legislation, at least in such instances.

Conclusion

3D Printing even enables the creation of cars

Although discussed very briefly above, one can note that 3D printing does pose a challenge to both the judiciary and the legislature in the protection of intellectual property. At the time of their creation no legislature would have conceived that 3D printing would ever become a reality, and rightfully so; even today this seems like complete science fiction, at least to this writer. In addition to copyright and trademarks the technology does pose challenges to patents and designs, albeit more on the latter than the former, due to the possible creation of both unregistered and registered designs.

As the technology becomes more common and the quality of the goods it produces get better the judiciary will eventually have to deal with the subject matter more extensively. Arguably some level of personal 'creation' should be allowed without it infringing intellectual property rights, but that does still undermine the economical interests of parties wishing to benefit from the sale of such items. Will 3D printing ever become a household commonality? Arguably this will take years, even decades, but as it stands today the technology is more of a niche curiosity than a prevalent tool for domestic replication. Until then the need for extensive judicial consideration remains minor.

Raising the Bar

Legislation not endorsed by the TV show

Tomorrow, on the 15th of April, a new piece of legislation will come into force here in Australia regarding patents, trade marks and designs, although the main emphasis is on the former two. The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 will make some changes into existing laws, mainly amending the Patents Act 1990, the Trade Marks Act 1995 and the Designs Act 2003. 

As explained by IP Australia, the legislation makes some key changes, including:

- Raising the quality of granted patents by implementing changes to the key tests for patentability and more closely aligning these with international standards.

- Reducing delays in the resolution of opposition proceedings concerning patents and trade marks.

- Implementing changes to the regulation of patent and trade marks attorney professions and the increasing the ways in which they can operate.

- Implementing procedures for dealing with imports suspected of infringing IP rights and making it harder for importers of counterfeit goods to evade an IP right holder.

- Providing access to a simplified and more effective IP system.

The Act seems to amend some practical aspects, as well as attempt to speed up some of the processes, which no doubt are all welcome changes to all patent practitioners. However, as I lack the direct knowledge of patents in practice, whether these changes will actually impact the field will be left for someone to clarify for me.

A more comprehensive guide to the IP Reforms is provided for all to read, and gives more insight into the changes brought in via the Act.

Retrospective - Where it all began

The history of IP law is a colorful one. The changes it has undergone and how the rapid evolution of both the creation and sharing of ideas and expression has made the landscape where the law operates very different to what it was when it all started.

Copyright

Queen Anne was a fan of books, and a snappy dresser

Great Britain was the first nation to enact a law which regulated copyright, instead of it being handled by the parties involved without any government interference, mainly the Stationers' Company. The law in question was the Statute of Anne 1710. The law sought to encourage learning and advance it through the limitation of certain rights in books, ones which echo even today's legislation, although very faintly: it gave the rights to print and copy published material to its creators, not the publishers of the books. This was a significant move from a system that lasted for almost 50 years. Copyright didn't exist automatically in any works, unlike like today, but all works needed to be registered for any rights to exist in that material. The Statute of Anne was a major piece of legislation until its repeal through the Copyright Act 1842, lasting for well over 100 years. The Americans largely followed the Statute, although it is still disputed whether they actually did. This lasted till the enactment of the US Constitution.

Patents

Most of the Commonwealth countries have their patents laws base on the Statute of Monopolies 1623. It is seen as the first real law dealing with patents, both in the United Kingdom, and through it subsequently adopted in one form or another in its former colonies. It both abolished old patents existing before the law, during and in the future. It also restricted the application of patents and set strict limits to who can give them. The Statute was a major change, and is one of the most important pieces of legislation in the history of patents. The US, yet again not wanting to conform, did not follow the Statute of Monopolies as such, however their use of patents in commerce is believed to have stemmed from the law. The US Constitution set out broad principles for all IP matters, which also dealt with patents, however more specific legislation was enacted both in individuals States, and finally on a Federal level in 1790. Patents have since gotten more specific and complex, yet the heart of the original laws still remain.

Trade Marks

A relatively late bloomer in the sphere of IP legislation, trade marks did not have any codified protection until the Merchandise Marks Act in 1862. The old law, much like copyright and patents, also echoes the sentiment of current legislation, although speaking of "defrauding", which is not used in today's laws. The United States, much like the UK and its colonies, protected trade marks through the common law (meaning no laws protected them specifically, but unwritten customs and precedent), until the enactment of the Trademark Act 1881

Designs

The first instance of designs protection was in the UK, with the enactment of the Designing and Printing of Linen Act in 1787. The Act, as its name so implies, dealt with the designs related to a number of different fabrics, and only offered protection for a measly two months after printing. The Act was expanded on almost 50 years later, in the Copyright and Design Act 1839, taking designs protection further than the textile industry alone, and introduced a system of registration for designs.

As you can see, the roots of IP law are deep in all common law countries. What it was a few centuries ago can still be seen in today's laws, and the impact their development has had, and continues to have, on people and their expression is profound. Most of them were protected well before the enactment of specific laws relating to them through the common law, so their roots go even further if you go beyond laws alone.