Title

:

The ‘Third Industrial Revolution’: 3D Printing Technology
and Australian Designs Law
Author: Mitchell Adams

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The ‘Third Industrial Revolution’: 3D Printing
Technology and Australian Designs Law
MITCHELL ADAMS*
Abstract
Three-dimensional (3D) printing and scanning, touted as the next disruptive
technology, is already upon us. Merging the physical and digital, 3D printing
and scanning is having profound effects on how we design, share, copy and
manufacture objects. Consequently, this article considers the previously
unexplored intellectual property implications for registered design owners. In
doing so, it examines the technological background to 3D printing and
scanning against a backdrop of consumer access to these technologies. With
the advent of 3D scanners and 3D printers any user can (re)produce
unauthorised versions of an object that embodies a registered design in digital
or physical form. This article considers the effectiveness of Australian
registered design rights to combat infringement of this kind. It is concluded
that the Designs Act 2003 (Cth) is unable to deal with this nascent technology.

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

2

*

1

2

Research Fellow, Centre for Transformative Innovation, Swinburne University of
Technology. The author wishes to thank the anonymous referees for their
thoughtful and considered feedback. Thanks to Neil Carmona-Vickery and
Amanda Scardamaglia for their comments.
Philip K. Dick, Pay for the Printer, (Satellite Science Fiction, October 1956) 90.
See Andrew Sissons and Spencer Thompson, Three Dimensional Policy: Why Britain
Needs a Policy Framework for 3D Printing (2012) Big Innovation Centre 10

<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.

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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

4

5

Copying and sharing of objects is potentially problematic for owners of
intellectual property rights, given the ubiquity of the internet. Online filesharing platforms hosting 3D objects and third-party 3D print services are
growing. Comparisons have been drawn between this development and the
culture and practice that surrounded the sharing of digital music files, and
from this discourse, intellectual property and piracy concerns have emerged.
6

7

8

Previous commentary on the intersections between 3D printing technology
and Australian intellectual property law has primarily focused on the main

3

The Economist, The Third Industrial Revolution (21 April 2012)
<http://www.economist.com/node/21553017>.

4

See, Amazon, Additive Manufacturing Products Department
<http://www.amazon.com/b/ref=sr_aj?node=6066126011&ajr=0>;
Officeworks, 3D Printing & Scanning
<http://www.officeworks.com.au/print/print-and-copy/3d>;
Shapeways Inc., Home Page
<http://www.shapeways.com>.

5

See generally Shapeways Inc., Home Page
<http://www.shapeways.com>.

6

For example Thingiverse.com and Shapeways.com: MakerBot, MakerBot Thingiverse
<http://www.thingiverse.com>;
Shapeways Inc., Home Page
<http://www.shapeways.com>.

7

8

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>.

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The ‘Third Industrial Revolution’: 3D Printing Technology and Australian Designs Law

intellectual property regimes: patents, copyright and trade marks. There
remains, however, a lack of detailed consideration of the intersections of 3D
printing with Australian designs law. The Australian Advisory Council on
Intellectual Property (ACIP) has questioned the effect of 3D printing
technology on Australia designs law, but attracted only one detailed
submission. This article aims to fill this gap by exploring the legal issues that
may arise as a result of consumer-accessible 3D printing technology, with a
focus on the application of designs law and the enforcement of registered
designs in Australia.
9

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

9

As to patents see, eg, Daniel Harris Brean, ‘Patents to Combat Infringement via 3D
Printing: It’s 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

Advisory Council on Intellectual Property, Review of the Designs System, Issues
Paper (2013), 25
<https://www.ipaustralia.gov.au/sites/g/files/net856/f/issues_paper_on_desig
ns_review.pdf>.

12

Advisory Council on Intellectual Property, Review of the Designs System: Options
Paper (December 2014) 56
<https://www.ipaustralia.gov.au/sites/g/files/net856/f/options-paper-for-thereview-of-the-designs-system.pdf>;
Mitchell Adams, Submission to Advisory Council on Intellectual Property, Review
of the Designs System, 31 October 2013.

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i n i t s a b i l i t y t o r e s p o n d t o this nascent technology. With the advent
of consumer-ready 3D scanners and 3D printers, a user can (re)produce
unauthorised versions of the object in a digital or physical form.
Consequently, the future enforcement of registered design rights will become
more problematic. With the third industrial revolution already here, it is
essential for the area of designs protection to be re-examined.

1

3D Printing – More than just the printer

Before discussing specific designs law concerns in detail, it is first necessary to
examine the technology underpinning 3D printing and consumer accessibility
of the same. Three main components make up 3D printing technology: the 3D
printer, 3D scanner and Computer-Aided Design (CAD) software.

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

Consumer-ready 3D printers have predominantly taken the form of ‘selective
deposition' or ‘selective binding’ printers. ‘Selective deposition’ printers are
currently the most common and affordable in the market. During the
layering process, heat, light, or chemicals are used to bind layers together. In
Australia, the Makerbot range of desktop printers start at a retail price of
AUD$1,375. 3D Systems’ Cube 2 retails for AUD$1,399. At the time of
writing of this article, 3D printers were also for retail sale in Australia,
starting from AUD$398. Alternatively, ‘selective binding’ printers utilise a
15

16

17

18

19

20

13

Hod Lipson, Fabricated: The New World of 3D Printing (John Wiley, 2013) 18.

14

Ibid.

15

Lipson, above n 13, 82-94.

16

Ibid.

17

Ibid.

18

MakerBot Industries, MakerBot Replicator Mini+
<https://store.makerbot.com/printers/replicator-mini/>. Down from AUD$2,200
in 2013.

19

3D Systems Inc., Cube 2

20

Officeworks Ltd, Da Vinci Junior 1.0 3D Printer

<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

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The ‘Third Industrial Revolution’: 3D Printing Technology and Australian Designs Law

bath of raw material and an external energy source, such as a laser or
ultraviolet light, to bind the raw material together in the same layering
process. These types of 3D printers are typically expensive and only utilised
commercially, however, Formlab has developed the Form 1+ and Form 2
desktop stereolithography 3D printers for mainstream consumers, starting at
US$2,199.
21

22

1.2 Computer-Aided Design (CAD)
Importantly for designers, before printing can begin, a user requires a ‘3D
CAD file’ to 3D print an object. The file comprises a computer-generated 3D
model that instructs the printer on what and how to print. Users employing
CAD software, such as AutoCAD or SketchUp, can either design 3D models
from scratch or use a 3D scanner to copy existing objects. Completed designs
are saved and then converted into a file format that a 3D printer understands.
Once the file is passed to the 3D printer for manufacture, internal firmware
slices up the design into layers for printing. CAD’s versatility, as a digital
object, not only affords greater control over the creation of the model but also
facilitates the sharing of data between users online.
23

24

25

26

1.3 3D Scanner
3D scanning’s 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

Lipson, above n 13.

22

Formlabs, The Form 1
<http://formlabs.com/store/int/form-1/buy-printer/>.

23

Weinberg, above n 8, 2-3.

24

SketchUp, SketchUp Pro Trimble Navigation Limited
<http://www.sketchup.com/products/sketchup-pro>;
Inc Autodesk, AutoCAD Design Suite
<http://www.autodesk.com.au/suites/autocad-design-suite/overview>.

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

See, eg, Portable 3D scanners from Creaform: Creaform, Creaform Solutions
<http://www.creaform3d.com/>.

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successfully funded offering low-cost 3D scanners. In addition, Makerbot
offers an entry-level desktop 3D scanner for AUD$1349, and 3D Systems
offers a handheld option for AUD$419, and an iPhone attachable 3D scanner
for AUD$520. Retailers such as Officeworks are now offering 3D scanning
services, starting at AUD$15. Digitally capturing physical objects for
replication is now easy as taking photographs with a smartphone.
29

30

31

32

33

34

2

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 3D’s point and click scanner was funded with a pledge goal of US$75,000
reached and CADScan’s 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

Landmark Computers, MakerBot Digitizer
<http://lmc.com.au/products/Printers/Makerbot/590563/Makerbot_Digitizer_[
MBMP03955]_Desktop_3D_Scanner>.

31

3D Systems, Sense 3D Scanner
<http://au.3dsystems.com/shop/sense/order>.

32

3D Systems, iSense 3D Scanner
<http://www.3dsystems.com/shop/isense>.

33

Officeworks, 3D Printing & Scanning
<http://www.officeworks.com.au/print/print-and-copy/3d/3d-scanning>.

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

Designs Act 2003 (Cth) s 5 (definition of a ‘design’).
Designs Act 2003 (Cth) ss 39-56. Alternatively, design owners have the choice to
publicise their design to prevent others from registering similar designs: Designs
Act 2003 (Cth) ss 57-59.

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The ‘Third Industrial Revolution’: 3D Printing Technology and Australian Designs Law

protected, there must be a ‘design’ in relation to a ‘product’, that is ‘new’ and
‘distinctive’ at the time of application.
37

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

Infringement of a registered design occurs when a person, without the licence
or authority of the registered owner, during the term of registration does any
of the following acts:
44

(a) makes or offers to make a product, in relation to which the design is
registered, which embodies a design that is identical to, or substantially
similar in overall impression to, the registered design; or
(b) imports such a product into Australia for sale, or for use for the
purposes of any trade or business; or
(c) sells, hires or otherwise disposes of, or offers to sell, hire or otherwise
dispose of, such a product; or
(d) uses such a product in any way for the purposes of any trade or
business; or

37

Designs Act 2003 (Cth) s 5 (definition of ‘design’); s 6; s 15(1) and s 16(2)
respectively. A design is new unless it can be demonstrated that the design is
identical to one found in the prior art base: Designs Act 2003 (Cth) s 15(1). A design
is taken to be distinctive if it is not substantially similar in overall impression to an
existing design: Designs Act 2003 (Cth) s 16(2).

38

Designs Act 2003 (Cth) s 5 (definition of ‘design’).

39

Designs Act 2003 (Cth) s 6(1).

40

Designs Act 2003 (Cth) s 7.

41

Designs Act 2003 (Cth) s 7(2).

42

Designs Act 2003 (Cth) s 10.

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

Designs Act 2003 (Cth) s 71.

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(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

Designs Act 2003 (Cth) s 75(1).

47

Designs Act 2003 (Cth) s 75(3).

48

Copyright Act 1968 (Cth) s 10 (definition of ‘artistic work’).

49

Copyright Act 1968 (Cth) s 21(3).

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’).

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The ‘Third Industrial Revolution’: 3D Printing Technology and Australian Designs Law

3

Access to 3D Printing Technology to Infringe Registered
Designs

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.

3.1 The ‘User Model’

CAD

a

c

b

d

CAD

3D Scanner

3D CAD Software

User

3D CAD File

3D Printer

Materials

Product

Figure 1 - The User Model

(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.

To reproduce a product that embodies a registered design, a user can
utilise the technologies outlined in the ‘User Model’ illustrated in Figure 1.
The ‘User Model’ for 3D printing is founded on the user owning and
operating each piece of technology described above.

3.2 The ‘Distribution Model’ for digital designs

CAD

a

c

b

d

CAD

3D Scanner

3D CAD Software

Online Designs
Community

Online Designs
Collection

3D CAD File

User

Figure 2 - The Distribution Model for Digital Designs

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(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

For example, see, MakerBot, About Thingiverse
<http://www.thingiverse.com/about>.

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

See Harris Kyriakou, Steven Englehardt and Jeffrey V. Nickerson, 'Networks of
Innovation in 3D Printing' (Howe School Research Paper, 2012).

58

Mendis, above n 7, 159.

59

The Pirate Bay, Physibles

60

Bruce Sterling, Spime Watch: Physibles (26 January 2012) Wired

<https://thepiratebay.se/browse/605/0/7/0>.
<http://www.wired.com/beyond_the_beyond/2012/01/spime-watchphysibles/>.
61

MakerBot, Celebrating a Maker Milestone: 1 Million Uploads on MakerBot’s Thingiverse
(29 October 2015)

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The ‘Third Industrial Revolution’: 3D Printing Technology and Australian Designs Law

Undoubtedly an increase in the sharing of 3D CAD files makes it easier for
users to access existing designs for printing at home and thus feeds into the
‘user model’ (Figure 1) or the ‘print services model’ discussed below (Figure
3).

3.3 The ‘Print Services Model’
CAD

c

a

3D CAD File

User

Print Service

Product

b

3D Printer, Materials &
Know How

Figure 3 - The Print Services Model
(a) Users create and/or source a 3D CAD file to send to a third-party 3D print service provider
for printing; (b) the third-party service provider supplies a 3D printer, materials and knowhow; (c) the third-party print service provider prints the object and ships it to the user.

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

The commercialisation of the 3D printing process has been the cornerstone of
Shapeways’ business model. Taking the best of both worlds, Shapeways
allows users to print their uploaded designs or to choose existing designs
from their website. Claiming to be “more than a 3D printing service,”
Shapeways allows its users to turn their ideas into products. In turn,
65

66

<http://www.makerbot.com/blog/2015/10/29/celebrating-a-maker-milestone-1million-uploads-on-makerbots-thingiverse>.
62

For example, Shapeways Inc, Shapeways: How Does It Work?
<http://www.shapeways.com/about/how_does_it_work>.

63

Finocchiaro, above n 55, 499.

64

Ibid.

65

Shapeways Inc, above n 62.

66

Shapeways Inc., above n 5.

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Shapeways have created a ‘marketplace’ where designers can be part of a
web-facing storefront that sells their designs to customers. When users
purchase a copy, Shapeways manufactures the object, manages the financial
transaction and shipping. This model appeals to both users who want to
access end products and designers who want the exposure that a marketplace
provides.
67

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

4

Enforcement

From an enforcement perspective, there are various issues when users
reproduce registered designs through the activities represented in Figures 1, 2
& 3 above. The following sections will demonstrate that registered design
owners can be powerless to enforce their registered designs when they are
reproduced using 3D printing technologies.

4.1 3D Printing of a Registered Design would constitute an
infringement
Users who utilise a 3D printer to make an object that embodies a registered
design without the registered owners’ authority during the term of the
registration are infringing under the Act. Manufacturing objects layer-bylayer using 3D printing technology satisfies the primary infringement
provision in section 71.
70

71

67

Shapeways Inc, Tutorials: Open Your Shop in a Few Easy Steps
<http://www.shapeways.com/tutorials/open_shop>.

68

Shapeways Inc, above n 62.

69

Officeworks, 3D Printing & Scanning
<http://www.officeworks.com.au/print/print-and-copy/3d>.
Australian online service providers are also emerging. 3D Hubs is an online
directory of online 3D printing services that helps people save time by
connecting users with local 3D printing providers. There is currently 463 online
providers connected with 3D Hubs: 3D Hubs, Start a 3D Print
<https://www.3dhubs.com/3dprint#?place=Australia>.

70

71

Designs Act 2003 (Cth) s 71.
Designs Act 2003 (Cth) s 71(1)(a): makes or offers to make a product, in relation to
which the design is registered, which embodies a design that is identical to, or
substantially similar in overall impression to, the registered design.

EAP 12

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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 court’s treatment of additive
manufacturing cases under the Act.
72

Where an alleged infringing object has the identical appearance to the
registered design, or its overall appearance is substantially similar to the
registered design, it will embody that registered design. For example, where
a 3D printed iPhone case is identical in appearance to a registered design, that
3D object will have embodied that design. Additionally, where a printed
product is substantially similar in overall impression to the registered design,
the product may still infringe. An assessment of substantial similarity
compares the allegedly infringing product with the registered design. Under
the Act, a person cannot avoid a finding of primary infringement by merely
making minor or insignificant changes to the design, if the overall impression
of the resulting design is the same. Consequently, altering the appearance of
the resulting product may still infringe. Therefore only those prints that are
substantially different to the original registered design would escape liability
for primary infringement. A 3D printed article may be substantially different
where, for example, it alters the dimensions of the registered design.
73

74

75

76

4.2 Users commissioning a 3D print may also infringe the
design
Users who engage with a service provider to print a product that embodies a
registered design (depicted above in Figure 3) may also be a primary infringer
under section 71(1)(a). Under section 71(1)(a), the reference to a person who
‘makes’ a product has been held to include reference to a person who “directs,
causes or procures the product to be made by another”. Jessup J in Review
Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd (‘Review’) explains
that the application of the provision does not restrict itself only to the manual
77

72

See Keller v LED Technologies Pty Ltd (2010) 185 FCR 449.

73

Designs Act 2003 (Cth) s 71(1)(a).

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).

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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 J’s 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 provider’s 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 J’s 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 J’s 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

Given the discussion above, secondary infringement becomes relevant.
Subsections (b)-(e) prohibit dealings with products once created. Of particular
interest is subsection (b), which makes it an infringement to import an

78

79

80

(2008) 166 FCR 358, 363.
Ibid.
Ricketson and Creswell, Thomson Reuters, The Law of Intellectual Property
Copyright, Designs & Confidential Information, vol 1 (at update 74) [23.05].

81

Ibid.

82

(2008) 80 IPR 85.

83

(2008) 80 IPR 85, [88]-[90].

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

4.3 Users creating a digital copy of a design
With the introduction of 3D scanning, a registered design owner may be
particularly concerned with the digital reproduction of an existing product
that embodies their registered design. In this context it is the design that is
being directly reproduced in digital form. This type of copying is potentially
problematic for design owners if the 3D CAD file appears online (shown
above in Figure 2), and feeds back into the other two models.
88

Under the Act, it would not be an infringement to create a digital copy of a
design for private or non-commercial purposes. 3D scanning that aims to
create a 3D CAD file is unlikely to be primary infringement. Satisfying section
71(1)(a) requires the making of a “product”, where a product is defined as a
“thing that is manufactured or handmade”. A computer-generated 3D model
would unlikely be interpreted in this way. The 3D CAD file is rather a digital
representation of the product and not a product created by the registered
owner that exercises any of the exclusive rights in the registered design.
Ultimately, the 3D CAD file would be regarded as a digital precursor that
produces a product, which once printed is a copy of the registered design.
89

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

Designs Act 2003 (Cth) s 71(1)(b).

88

For example, on Shapeways.com or Thingiverse.com.

89

Designs Act 2003 (Cth) s 6.

90

91

Matthew Hall, '3D Printing - Same of the IP Challenges' (2013) Australian
Intellectual Property Bulletin 213, 214.
Designs Act 2003 (Cth) s 71(1)(d).

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4.4 Printing spare parts
A further complication exists where a user utilises 3D printing to print spare
parts. The right of repair defence contained in the Act permits individuals to
use a registered design to repair the overall appearance of a complex product.
Under the Act, a registered design will not be infringed where a person uses a
product embodying a registered design to restore the overall appearance of a
complex product in whole or in part. Here a complex product means an
object comprising of at least two replaceable component parts permitting
disassembly and re-assemble of the product. To satisfy the defence, the user
must be 3D printing the part for the purpose of “repair”. In relation to the
complex product, repair includes: restoring or replacing decayed or damaged
parts, replacing incidental items when repairing, and carrying out
maintenance.
Finally, the repair must restore the products overall
appearance. Printing parts that repair internal and functional aspects of a
complex product would therefore not satisfy the defence.
92

93

94

95

96

Accordingly, 3D printing of objects that solely restore the overall appearance
of a product would not constitute an infringement of a registered design.
Bradshaw, Bowyer and Haufe identified the printing of spare parts as a likely
application of consumer 3D printing. The authors assert that the printing of
spare parts could provoke intellectual property disputes. Spare parts are an
attractive use for 3D printing, and in Australia the 3D printing of spare parts
would remain an acceptable activity provided it restores the overall
appearance of the product. The provision of spare parts on online filesharing services therefore becomes a legitimate activity for users.
97

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

Designs Act 2003 (Cth) s 5 (definition of ‘complex product’).

94

Designs Act 2003 (Cth) s 72.

95

Designs Act 2003 (Cth) s 72(5).

96

For example, a damaged part housed in the engine of a car.

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

5

Targeting individuals vs. service providers to combat
infringement

Where multiple parties engage in the reproduction of a registered design, it
can become impractical for registered design owners to target each individual
for their allegedly infringing activity. It can be more economically efficient to
target those groups immediately responsible for infringement. For example,
a manufacturer who makes and sells unauthorised copies is a more attractive
target, rather than individual consumers who may infringe by subsequently
exploiting a product for commercial purposes. Targeting the manufacturer
also helps break the supply chain that leads to further infringement.
103

104

In addition, registered design owners may regard it as most concerning that
consumers can use existing manufactured products to reproduce the design
digitally for sharing online (as in Figure 2) and give access to other users who
then print the design (via the methods depicted in Figures 1 and 3). In this
circumstance, individual users who print a product that embodies the
registered design are responsible for the majority of infringing activity.
Consequently, registered design owners may wish to target those groups they
perceive as facilitating infringement in order to break the supply chain that
leads to unauthorised copies.
105

What follows is an examination of the activities that may occur online in
conjunction with 3D printing technology, and consideration of whether the
Act can be utilised to target those service providers who facilitate
infringement.

5.1 Service providers printing products
3D print service providers that manufacture unauthorised products
embodying a design are desirable targets for infringement proceedings. As
mentioned previously, it is more economically efficient to target services such
as Shapeways or Officeworks as they have direct control over the printing of
individual objects. Therefore, the entity is responsible for the acts of ‘making’
a registered design under the Act. However, a registered design owner in
Australia is unlikely to have recourse under the Act because the operation of
the infringement provisions are confined to the territorial limits of Australia.
106

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

Brean, above 9, 785.
Targeting the manufacturer would break the supply chain of infringing products:
see Brean, above n 9, 785.
Ibid.
Acts Interpretation Act 1901 (Cth) s 21(1)(b); Review 2 Pty Ltd (in liq) v Redbury
Enterprises Pty Ltd (2008) 173 FCR 450, [77]; Review Australia Pty Ltd v New Cover
Group Pty Ltd (2008) 79 IPR 236, [48].

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As noted, a service provider printing an unauthorised product will only
infringe the registered design if the act of printing occurs within Australia.
Therefore, service providers that operate offshore escape liability for primary
infringement. With popular services such as Shapeways currently residing
overseas, it is not feasible to claim design infringements against them. On the
other hand, providers such as Officeworks may become desirable targets for
registered design owners on the basis of the services they offer. However, on
a practical level, it may be difficult to anticipate or quantify the printing of
infringing articles.

107

5.2 Online file-sharing services hosting design files
Alternatively, registered design owners may wish to target online file-sharing
services that supply unauthorised digital copies of registered designs
(represented in Figure 2), in much the same way Napster and Kazaa were
pursued for authorising infringing acts under copyright law. Commentators
have suggested that the same trend could develop for 3D printing and
sharing of 3D CAD files.
108

109

However, a key difference emerges between peer-to-peer file-sharing services
that facilitate the illegal distribution of music and film content and the filesharing services that host 3D CAD files. The difference lies in the nature of the
content found online. While the former gave access to infringing content,
services such as Thingiverse arguably host instructional files that assist in
producing copies of a design. Such files themselves may not be infringing
content. In addition, questions have previously been raised as to whether the
creation and distribution of these files are in themselves an infringement. As
discussed previously, the 3D scanning of a product would not infringe a
registered design if the 3D scanning is incidental to any of the acts
contemplated under section 71 of the Act. Additionally, given the operation
of the copyright-designs overlap discussed previously, there would be no
infringement of any copyright subsisting as an artistic work in the original
design drawings. Therefore, those files appearing on free services such as
Thingiverse would not be infringing content. This difference may cause
registered owners to wonder whether they could take meaningful action to
combat the sharing of their design online.

110

111

112

113

107

Led Technologies Pty Ltd v Elecspess Pty Ltd (2008) 80 IPR 85, [88]-[89] (Gordon J).

108

Mendis, above n 7, 159.

109

Ibid.

110

See, for example, Universal Music Australia Pty Ltd v Cooper (2005) 65 IPR 409.

111

Finocchiaro, above n 55, 504.

112

113

For example, a private or non-commercial reproduction of a product embodying
the registered design.
Either as a physical drawings or an electronic CAD file.

EAP 18

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5.3 Intermediary liability
As the above discussion demonstrates, an important question emerges as to
whether registered design owners can take meaningful action against
intermediaries who facilitate the infringement of their registered designs. The
following two sections examine the possible liability service providers may
face on a statutory and common law basis when targeted as intermediaries for
infringing activity.
6.3.1 Absence of authorisation under the Designs Act
Under the Act, the registered design owner has the exclusive right to
authorise another person to do any of the activities mentioned in subsections
10(1)(a)-(e). Interestingly, there is no corresponding provision that prohibits
the authorisation of infringing activity by a person who is not the registered
design owner. There is no explanation for its absence in the explanatory
memorandum for the Designs Bill 2003 or the Australian Law Reform
Commission’s 1995 report into designs law. It appears that liability is limited
to the acts specified in section 71.
114

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 patentee’s 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

Designs Act 2003 (Cth) s 10(1)(f).

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

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Vol 24(1) 2015-2016

and secondary infringement provisions, which already account for someone
authorising another to make or sell a product that embodies a design. As
discussed previously, primary infringement does extend to include principles
of vicarious liability. However, the section may not extend so far as to include
the concept of authorisation that is seen in copyright law. On balance, it
appears that authorising infringing activity cannot be imposed on service
providers as a distinct head of liability.
121

122

5.3.2 Service providers as joint tortfeasors
With an absence of authorisation for designs infringement in the Act,
registered owners could turn to the common law action of joint tortfeasorship.
This action is an alternative basis for imposing liability on service providers
residing in Australia. This action has previously been used in the designs law
context to impose personal liability on directors for companies infringing a
registered design. Furthermore, this common law action is available to
registered design owners alongside any actions for designs infringement.
123

124

Liability can be imposed on service providers, along with 3D printing users, if
both parties are characterised as joint tortfeasors; that is, that they have acted
under a common design with those who do the 3D printing, to infringe the
registered design. For parties to be considered joint tortfeasors “there must be
a concurrence in the act or acts causing damage, not merely a coincidence of
separate acts which by their conjoined effect caused damage”. Moreover,
joint tortfeasors need to have acted in concert to achieve a common end. Some
level of connection between the parties is required, more than a mere
facilitation of the infringement.
125

126

Potential joint tortfeasor relationships are present between users, print
services and online file-sharing platforms in Figures 2 and 3. What follows is
an examination of whether those relationships would attract liability under
joint tortfeasorship.
When it comes to hosting 3D CAD files online, the relationship between users
and online file-sharing services is unlikely to attract joint liability for two
reasons. First, for a successful action of joint tortfeasorship, there must be an

121

Lahore and Rothnie, above n 118 [71,070].

122

Ricketson and Creswell, above n 119 [23.05].

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

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initial primary act of infringement. As discussed above, the 3D scanning of
existing products is unlikely to attract user liability for designs infringement.
Therefore, in the absence of an infringing act, the hosting of 3D scanned
designs would be unlikely to support the common law action. Second,
assuming any reproductions are infringements, it would be difficult to
establish a relationship that exhibits a common intent to infringe. It is not
likely that an Australian court will impose joint liability for a relationship
between a software supplier and end users who employ the software to
download infringing material. This proposition was confirmed in Cooper v
Universal Music Inc., where the Full Federal Court was not satisfied that a
common design existed between the operators of a remote website and end
users.
127

128

129

The difference between “procuring” infringement and “mere facilitation” of
infringement can help explain why 3D print services would not be found
liable as joint tortfeasors. In patent law, this was dichotomy developed to
express the requirements of joint tortfeasorship. In this context, it was used
to remedy situations where a defendant supplied goods that a third party
used to infringe a patent. Procurement attracts joint liability because it
involves “inducing, inciting or persuading a particular infringement”.
Burchett, Sackville and Lehane JJ in Ramset Fasteners (Aust) Pty Ltd v Advanced
Building Systems Pty Ltd have described the circumstances of procuring
infringement. It is where a defendant has “made himself a party to the act of
infringement; or participated in it; or procured it; or persuaded another to
infringe; or joined in a common design to do acts which in truth infringe”.
130

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

The Koursk [1924] P 140, 155.

128

(2006) 156 FCR 380.

129

(2006) 156 FCR 380.

130

Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112, 1118.

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

Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112, 1118.

135

Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112.

136

Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112.

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instances of their service being used to infringe intellectual property rights.
However, it seems doubtful that print services are making themselves a party
to the infringement. First, 3D print services take no direct role in the design of
an item, and simply makes available the service. Moreover, 3D print services
do not actively entice users to infringe content. Second, 3D print services are
more likely to be seen as merely facilitating infringement. While the service
can be used to infringe registered designs, it is predominantly used for noninfringing purposes. In determining liability, a court would be unlikely to
prohibit lawful uses of the technology. The relationship would more likely
be characterised as a mere facilitation rather than procurement of
infringement.
137

138

139

140

6

Response

The preceding discussion highlights that given the current state of 3D
printing technology and consumer access to the same, enforcement issues
could be at the fore-mind of registered design owners. Furthermore, this
discussion is particularly relevant in Australia, where the design registration
system is experiencing increasing use. In 2015, IP Australia received the
highest number of design applications on record, an increase of six per cent
from the previous year. This included an increase in the number of
Australian resident applications, up seven per cent, which was higher than
the average annual growth rate. Given the limitations of the Act identified
above, registered design owners will have to grapple with enforcement issues
141

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

more as the technology further develops. Registered design owners may
choose to respond in the following ways.
Given the emergence of 3D print services, registered design owners may shift
their focus away from individuals who infringe and towards service
providers, such as Shapeways and Officeworks, with a view that they
facilitate the infringement of their designs. This may prompt a response to
seek extended protection of their designs and a campaign to amend section 71
of the Act to introduce a distinct head of liability for authorisation. ACIP has
recognised that 3D printing raises the issue as to the scope of secondary
liability and authorisation for designs infringement. However, ACIP
concluded that 3D printing technology did not warrant the introduction of
authorisation as a distinct head of secondary liability in an attempt to regulate
3D printing technology.
143

144

The World Intellectual Property Organisation (WIPO) and Weinberg have
both issued warnings against expanding any scope for liability. Weinberg
argues that 3D printing technology would be stifled in its developing stages.
Weinberg’s concern for the future of 3D printing services centres on providers
possibly discontinuing operations due to increased costs and onerous controls
as a result of being liable for end user behaviour. However, his concerns may
have been premature. 3D printing services, like Shapeways, should not have a
problem with an expansion of liability, if they do not attract users to infringe
existing rights. Shapeways have developed a Conditions of Use policy for its
service, stressing the importance of all intellectual property rights, including
registered designs. To protect intellectual property rights, the service
provider has articulated a ‘Notice and Takedown Procedure’ that removes
any infringing content. Under this policy, Shapeways has received and
145

146

147

148

149

143

Advisory Council on Intellectual Property, above n 11, 25.

144

Advisory Council on Intellectual Property, above n 43, 37, 41
<https://www.ipaustralia.gov.au/sites/g/files/net856/f/acip_designs_final_rep
ort.pdf>.
ACIP commentated that any consideration of amending the infringement
provisions would need to be coupled with the review for exceptions to designs
infringement. In addition, any application of secondary liability in the context
of designs law should not precede a more settled approach to secondary
liability or authorisation in copyright: Advisory Council on Intellectual
Property, Review of the Designs System, Options Paper (2014) 57.

145

World Intellectual Property Review, World Intellectual Property Report: Breakthrough
Innovation and Economic Growth (2015) 106
<http://www.wipo.int/edocs/pubdocs/en/wipo_pub_944_2015.pdf>;
Weinberg, above n 8, 14-15.

146

Weinberg, above n 8.

147

Ibid.

148

149

See
Shapeways
Inc,
Shapeways
<http://www.shapeways.com/legal/content_policy>

Content

Policy

Ibid.

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Vol 24(1) 2015-2016

Journal of Law, Information and Science

processed 833 requests to remove content from its platform. Finocchiaro
argues that capital dependent ventures such as Shapeways are more likely to
stamp out infringing activity rather than risk their revenue. Therefore, that
print services that take active steps to withdraw from sale 3D printed goods
which infringe, would prevent them from attracting liability for user
behaviour. The existence of liability for authorisation would not stifle the
development of legitimate 3D print services, and would more importantly
prevent illegitimate 3D print services benefiting from infringing users.
150

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

Another possibility is that registered design owners conscious of infringement
may seek to extend their monopoly to protect any digital representation of
their design. To achieve protection in the digital representation of designs,
designers may campaign for an infringement provision similar to how the
United Kingdom’s Unregistered Design Right (UDR) protects “design
documents”. Section 226(1) states:
153

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

Finocchiaro, above n 55, 504.

152

Via the ‘User Model’ or the ‘Print Services Model’.

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

3D CAD file) becomes infringing content. Furthermore, if the act of
distributing content online is interpreted as creating reproductions, only the
design owner has the exclusive right to post the file online. However, the
introduction of any versionof an UDR is unlikely in Australia. ACIP’s final
report into the Australian designs system recommended that Australia should
not introduce protection for unregistered designs. The Government
subsequently agreed with ACIP and indicated that the introduction of an
UDR was unsupported. Interestingly, on the other hand, the European
Commission recently recommended reviewing whether to expand the
definition of infringement to include creating a design document without
authorisation.
156

157

158

Alternatively, registered design owners may look to other business models to
distribute their designs while also engaging with the 3D printing community
and consumers alike. In the context of copyright, commentators are
suggesting that the licensing of content through services such as Creative
Commons may facilitate the growth of 3D printing technology as well as
promoting a design culture. Weinberg has identified that 3D objects
naturally gravitate towards General Public Licenses or Creative Commons
Licenses. Licensing systems like Creative Commons for 3D CAD files would
be desirable for designers. The files are attributed to the designer in
recognition of their creativity, and allow the designer to know if their design
is being utilised. Shapeways and Thingiverse already provide systems of
Creative Commons licences when users upload their design online.
However, open licenses may not be straight-forwards in a 3D printing
159

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

European Commission, Legal Review on Industrial Design Protection in Europe, Final
Report (2016), 134.
Jane Park, ‘How should we attribute 3D printed objects?’ on Creative Commons,
Creative Commons Blog (19 April 2016)
<https://blog.creativecommons.org/2016/04/19/attribute-3d-printed-objects/>.

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

Park, above n 159.
See Shapeways Inc., above n 148; MakerBot Industries LLC, MakerBot Terms of Use
Policy
<https://www.thingiverse.com/legal/terms>.

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Journal of Law, Information and Science

context. Attribution becomes difficult for the resulting 3D product, which
can be later used to create further digital representations. Alternatively,
Mendis has advocated for a “parts store” likened to an Apple iTunes store
that provides editable 3D CAD files for a small fee. This example is also
known as a ‘trust system’, whereby information is controlled with protocols
that allow only authorised flows of information to users.
163

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

Overall, ACIP recommended no change to the designs system and the
Australian Government agreed that it was premature to take any legislative
action if there is no evidence of an existing problem. A position that has
some support. The Australian Government did acknowledge that it will
continue to monitor technological developments and their implications for the
designs system. However, it is hard to imagine that the Government could
effectively monitor such advancements, especially for such a fast moving
technology as 3D printing. It is more likely than not that Australian designs
170

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

Advisory Council on Intellectual Property, above n 11, 26.

167

Advisory Council on Intellectual Property, above n 12, 4.

168

Productivity Commission, Intellectual Property Arrangements: Draft Report (2016)
305-6
<http://www.pc.gov.au/inquiries/completed/intellectual-property/draft>.

169

170

171

172

World Intellectual Property Review, above n 145, 106-7; European Commission
above n 161.
Advisory Council on Intellectual Property, above n 43, 41; Australian Government,
above n 157, 8-9.
Productivity Commission, above n 168; Dinusha Mendis and Davide Secchi, above
n 9.
Productivity Commission, above n 168.

EAP 26

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

7

Conclusion

As consumer access to 3D printing technology increases, it enables potentially
cost-effective mass customisation and short-run manufacturing of articles.
The fundamental shift from traditional manufacturing to consumer-accessible
3D printing creates gaps in legal protection for owners of registered designs.
Designs law is currently ill-equipped to respond to the situation where
products can enjoy a life in physical and digital forms. It is important, on the
other hand, that any development of clearer rules for 3D printing
technologies does not stifle this industry. Balancing user access to the
technology with the rights of registered design owners can facilitate
innovative solutions. It is more likely that online services will assist registered
design owners by implementing self-regulation and innovative solutions that
protect the digital equivalents of registered design owners and deter the
manufacture of copied designs. Registered design owners are entitled to
expect that their designs are valued and protected in a rapidly developing 3D
printing technology-consumer landscape. Designs law is the only intellectual
property regime that has not taken into account this shift to the digital age. It
is time for a re-examination of designs law. The law should seize this
opportunity during the third industrial revolution.

173

174

Emma Caine and Andrew Christie, ‘A quantitative analysis of Australian
intellectual property law and policy-making since federation’ (2005) 16 Australian
Intellectual Property Journal 185, 193-4.
Beth Webster and Mitchell Adams, ‘‘Design’ is a fashionable term - but what does
it really mean?’ The Conversation, 16 March 2016
<https://theconversation.com/design-is-a-fashionable-term-but-what-does-itreally-mean-56368>.

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