Wednesday, July 23, 2014

Protecting designs in the age of 3D Printing

By Lester Miller, Patent Attorney and Senior Associate

You really should see Theo Jansen's brilliant, articulated Animaris Geneticus Parvus emerge from a 3D printer, finished and without any assembly required, and walk itself across a boardroom table powered only by the breeze of conversation. There is brief elation, then the shock of being dumped unprepared into an unfamiliar world.

The Maker Movement has arrived, taking advantage of fast data transfer across national borders for instructing affordable machines to build tangible products. Designs law around the world is already being reviewed in an attempt to keep it relevant to this new technology.

What is 3D printing?

There is more than one way to 3D print products on your desk, but one of the important methods is Fused Deposition Modelling (FDM), patented in 1992 (now expired) by Stratasys. FDM uses a computer-controlled dispensing head to place a thin layer of liquid material on a base. After the bottom layer solidifies, the head indexes upwards to drop other layers on the lower ones to form a product. Usable materials include at least 50 plastic types, rubbers, metals and even biological materials. Dita von Teese was the main attraction in a 3D printed net gown at an event in New York last year, while it is anticipated that the first fully functioning human organ will be 3D printed within a year.

Figure 1 of Crump FDM patent US 5121329

Consumer 3D printers can be yours for less than $2000, printing coffee cup-sized products for a few dollars.

Creating and using model data

To design a product, a designer uses a computer modelling package which outputs the product details to a stereo lithographic (STL) file. A converting software client then changes that file to another format, which gives path and dispensing instructions to the dispensing head.

To copy a product, laser digitisers scan 3D objects and create an STL file. Usually everyone scans their own head first (do it annually for fun), and then they move on to copying existing products.

A large number of websites (such as this one and this one) provide STL files of original designs, many for free.

Downloading protected products for free!

Imagine a successful product, the subject of an Australian registered design. Overseas, a person scans the product and makes an STL file available, hosted on a server in a country where the designer did not seek registered design protection. A user in Australia downloads the file and makes it here on their own printer. What remedies can the owner of the registration seek? And against whom?

(a) Some present actions

The design owner may consider suing the Australian maker for making, offering to make, importing for sale, selling, using in business, keeping for sale in relation to a product identical to or substantially similar in overall impression to, the registered design. This is possible, but suing individuals is unlikely to be commercially palatable for a design owner.

Similarly, it would be difficult to make a legal case that there has been third-party authorisation of a design infringement by the provider of the STL file, or that that party is a joint tortfeasor with the maker of the design, because of the high bar set for establishing those grounds and the ease of working around the relevant provisions. It is also not clear whether a take-down request would be observed in one jurisdiction when the design right is in another.

Some Australian cases indicate that posting an STL file on a foreign website may be considered to be an offer to make, but it would probably need to be proved that the website targeted Australia.

(b) Potential actions under possible amendments to the Australian Designs Act

(i) 'Product' redefined

'Product' in the Designs Act 2003 is defined as a 'thing that is manufactured or hand made'. Kits are included in the definition if, when they are assembled, are a protected product. Neither 'product' or 'kit' in their present narrowly-defined form seems apt to cover an STL file on a computer.

But it does not seem a large conceptual stretch to extend the definition of 'product' to a data file for input to a machine for making the product, whether or not the data file is further transformed to instructions to make the product via head pathways or other methods. This would arguably inhibit the making of the file in Australia, transmission of the file to Australia (importation for sale), keeping for sale or offering to sell in Australia.

In support of this small stretch, last month the United States International Trade Commission confirmed parts of an Initial Determination of a presiding Administrative Law Judge which found that an electronic transmission of a digital data set constituted 'importation of articles'.

(ii) Contributory infringement

Designs law could include something similar to the contributory infringement regime of section 117 of the Patents Act 1990: if the use by a person of a product having only one reasonable use would infringe a patent, then the supply of the product to that person would infringe the patent. This could cover the provision and/or transmission of a data file in or to Australia containing details of a protected product.

ACIP Designs Review

The Advisory Council on Intellectual Property is currently reviewing the Australian designs system. An issues paper is to be released in late 2014 and there will be consultation on that paper in August and September. ACIP anticipates that recommendations to the Government will be finalised by November 2014.


3D printing presents great opportunities for realising efficiencies in designing and manufacturing prototypes and products. But as a result of widespread copying and the international availability of data files of protected products, IP owners risk loss of income, while ISPs and technology companies may risk potential liability for secondary infringement if they are seen to have authorised design infringement. The problems of copyright owners are now the problems of design owners, who should be vigilant in putting in place suitable strategies, starting with conducting regular searches for their products (or close copies) on Maker websites.

The situation for design owners and makers will be clearer in a few months' time once the ACIP consultation process is complete and it has made its recommendations to the Government.

(A longer version of this article was first published in The Australian Intellectual Property Law Bulletin, Vol 27 No 5 p118)

Friday, July 18, 2014

Nagoya Protocol to come into force on 12 October 2014

By Suman Reddy, Associate

The Nagoya Protocol is set to come into force on 12 October 2014 following its ratification by 51 State parties to the Convention on Biological Diversity (the CBD).

Australia is a signatory to the Protocol, but it is yet ratify the Protocol due to Commonwealth and State and Territory laws being currently inadequate to give effect to the Protocol domestically. We previously blogged about the Commonwealth's proposed model for implementing the Protocol.

The Protocol is an international instrument made under the CBD in order to give effect to the CBD objective of achieving the 'fair and equitable sharing of the benefits arising from the utilization of genetic resources'. However, 'the benefits arising from the utilization of genetic resources' has a wide meaning under the Protocol and effectively means any beneficial product or process derived from research conducted on biological organisms or their derivatives. This is commonly referred to as 'biodiscovery'.

Tuesday, July 15, 2014

Lift your game: no infringement of Lift Shop mark

By Stephanie Essey, Lawyer

The Full Court of the Federal Court recently dismissed an appeal brought by Lift Shop Pty Ltd (Lift Shop) against a first instance decision that Easy Living Home Elevators Pty Ltd (Easy Living) had not infringed Lift Shop's composite 'LIFT SHOP' trade mark. The Australian Consumer Law and passing off components of the original decision were not revisited on appeal.

Lifting search rankings: the facts

Lift Shop and Easy Living are competitors who each supply customised and disability platform elevators. In September 2012, Easy Living amended its website to improve its ranking in search engine results. A number of its changes incorporated the words 'lift shop'. It used the words in the website's title as it appears in search results, in descriptions on the home page, and as a keyword in order to target searches. Lift Shop claimed that the use of the words in the title (but not the home page or keyword use) was an infringement of its trade mark.

Lift off: first instance decision and appeal

The primary judge made a number of findings in relation to trade mark infringement which were not challenged on appeal, including that one of Easy Living's commercial objectives was to appear in search results which would likely include Lift Shop, and thereby to compete with Lift Shop to the greatest extent possible. However, Easy Living did not suggest or intend to suggest an association with Lift Shop simply by the use of the words 'Lift Shop' in the title, on the home page or as keywords.

Friday, July 11, 2014

When Trade Marks Attack

Native American Petitioners Score a Touchdown Against the Washington Redskins

by Joel Barrett, Senior Associate
For most Australians, a ‘redskin’ is nothing more than a chewy, raspberry-flavoured lolly. But the clue to its original and, in the United States, more common and controversial meaning is in the image of the man wearing a feathered headdress that appeared, until the late 1990s, on the lolly packaging. Since the sixteenth century, when European colonists coined the word to describe the coppery-skinned indigenous peoples they found in the New World, ‘redskin’ has been used as a slang term for American Indians.

Since 1933, it has also been the official name of the NFL team based in Washington DC.

Tuesday, July 8, 2014

Yasmin sees off Isabelle (and Yelena):

Full Court refuses evidence of experiment

by Clare Young, Managing Associate
Last year we reported on Generic Health's failure to comply with the Federal Court Rules relating to the conduct of experiments in patent cases. Here’s the next (and last?) instalment.

In short, Generic Health wanted to do an experiment which, according to Generic Health, would prove that Bayer's patent for a contraceptive pill lacked novelty. Generic Health's experiment involved the manufacture of tablets in accordance with a process in the prior art and the subsequent dissolution testing of those tablets. The latter dissolution tests were the subject of directions under rule 34.50 of the Federal Court Rules, but Bayer said that Generic Health also needed to comply with rule 34.50 in relation to the manufacture of the tablets.

Thursday, July 3, 2014

Try bombed - footy injunction application fails

by Stephanie Essey, Lawyer
In a recent case, Sports Data, the NRL's former statistics supplier, sought an interlocutory injunction against what it saw as the misuse of copyright in its database and the confidential information in it by Prozone, NRL's new statistics supplier.

Sports Data had developed a database populated with fields which set out events in NRL games that were to be recorded.  Sports Data alleged that Prozone copied confidential input criteria from the Sports Data database without consent in the process of creating its own event template.  Sports Data also claimed that Prozone infringed its copyright in the input criteria by reproducing a substantial part of its copyright work in the Rugby League Definitions Guide 2014.

Tuesday, July 1, 2014

Yellow is for sharing

by Tracy Lu, Lawyer
Further to our post on a decision on disputes over the word mark 'yellow', the Federal Court has handed down its decision on disputes over the colour yellow. This time, Telstra was unsuccessful in proving that the respondents (which included Phone Directories Company Pty Ltd) had engaged in misleading or deceptive conduct and passing off in the way that they had used the colour yellow for their print and electronic directories.

Alleged infringing conduct
Telstra's complaint relates to the respondents' use, since 2005, of yellow covers for their print directories (known as the 'Local Directories') and of the colour yellow on their website and on their mobile app which both had electronic directories.
Such use of the colour yellow, Telstra contended, constituted misleading or deceptive conduct and passing off, as it misrepresents to consumers that:

  1. The respondents' print and electronic directories were Telstra's directories, Yellow Pages directories or local or regional versions of them.
  2. The respondents' print and electronic directories were produced by, connected, associated, sponsored, approved, licensed, endorsed and/or affiliated with Telstra or its directories.
  3. The respondents had a connection, association, affiliation, commercial and/or other arrangement with Telstra.