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Challenging CAD file sharing

Most 3D printers use blueprints for designs in the form of Computer Aided Design (CAD) files. Computer Aided Design is the use of specialist software to create technical drawings. Websites allowing people to share these CAD files already exist and are likely to become more prevalent as access to 3D printing increases.

April 2013

It is only a matter of time until we will see legal action being taken where shared files contain designs for objects protected by rights such as copyright, patents, design rights and trade marks. Some of the legal arguments in these disputes will be similar to those deployed in the various music file sharing disputes. We look at how things might play out in respect of each of the key intellectual property rights.

Copyright

Of the various intellectual property rights, the application of copyright law is the easiest to predict. We have seen it relied on by the music and film industries against sites such as The Pirate Bay and Newzbin1. EMI Records’ recent action2 against the six leading retail ISPs demonstrates the relatively streamlined process that copyright owners can now take where their copyright material is being shared online without their consent. The English High Court was willing to order the ISPs to block access to three file sharing websites without a hearing and without the claimants needing to involve the website operator or its users in the claim. There is specific authority for site blocking under copyright legislation3. This is certainly a helpful tool for copyright owners who, as illustrated above, can obtain court orders requiring ISPs to block access without taking action against the site operators and their users.

c signIn order to rely on copyright to challenge CAD file sharing, the claimant will need to show that the CAD file contains a design for an artistic work. As we have discussed in more detail, it is almost impossible to show that copyright protects functional objects. The work will need to fall within the definition of “artistic work”.

If it does fall within the definition, the position is quite straight forward. Where an object protected by artistic work copyright is scanned and a CAD file is created, the file will reproduce that copyright work. If this reproduction is unauthorised, it is likely to be an infringement of copyright unless the copier has a defence. It does not matter that the work is in a different form. It will be an infringement to copy from a 3D work to create a 2D work and vice versa4. Action could be brought against:

  • The user if the file contains a copyright work, and if the user does not have the permission of the copyright owner, he or she will be infringing copyright5. Obviously, it is going to be time consuming and expensive to bring individual actions against users and it may be very hard to recover the costs of doing so. The Digital Economy Act may help with this when the Initial Obligations Code comes into force in the next couple of years. The Code will require ISPs to notify their subscribers where their IP addresses have been used to commit copyright infringement, leaving the subscriber vulnerable to technical measures such as bandwidth throttling, limiting or blocking internet access and temporary account suspension. Read more about the Digital Economy Act. In the meantime, it is more likely that action would be brought against the website operator;
  • The website operator – the English courts have had no difficulties in finding website operators such as The Pirate Bay and Newzbin liable for copyright infringement. In the Newzbin case, the defendant had:
    • Authorised users’ infringing copying6 of films;
    • Procured, encouraged and entered into a common design with users to infringe;
    • Communicated the claimants’ copyright works to the public.

    • booksAs mentioned in A 3D Printer’s Guide to Intellectual Property Rights, later this year, the Government will be introducing a limited private copying exception into English law which will apply to all types of copyright works7. However, the defence will be limited to people who already own a lawful copy of a protected work and will allow that person to copy that work for their personal use. Where users upload to a file sharing site, they will go beyond personal use. Where the user downloads a file, he is also unlikely to be covered. If he already owned a lawful copy, why would he need to download a further copy? In practice then, the new defence is unlikely to change the position on the legality of file sharing.

  • The relevant ISPs – where a rights owner can demonstrate that users of a file sharing website have infringed copyright and/or the website operator has infringed copyright, the courts may well order the relevant ISP to block further access to the website in question, as has recently been done in relation to file sharing websites KAT, H33T and Fenopy.

Patents

Where the CAD file includes the design for a patented object, the business which owns that patent may well be able to rely on it to prevent infringement. Suppliers of ‘means relating to essential elements of the invention’ may also infringe the patent. For example, a supplier of an unauthorised CAD file for a patented product could be held to be infringing the patent where it would be obvious to a reasonable person that the CAD file would be used to produce an infringing product8. Where a website operator is on notice that its site is being used to infringe particular patents, the website operator could well be liable for patent infringement.

definitionIn a file sharing context, the file uploader could well be liable for patent infringement. There is a defence for acts done privately and for purposes which are not commercial. However, there are some analogies that can be drawn from copyright law and there is a good argument that the file sharer’s activities are commercial. In the EMI case, the judge commented that: “The recordings are made available to all other users of the Websites, a large and indeterminate class of people, without having to purchase them from authorised sources. Although uploaders may not directly make money out of uploading, they hope that others will reciprocate, enabling them to download other recordings without payment in their turn. Thus uploaders benefit financially from their activity, albeit indirectly”9.

Unfortunately, the processes for requiring an ISP to prevent access on the basis of patent law are not established, as they are for copyright works. Over time, this could well change.

Design rights

Design rights give their owner the right to prevent third parties from using the design. “Use” is defined to cover “in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied”. It is possible that a court would find that a CAD file constituted a “product” in which a design was incorporated. Again, private and non-commercial use does not constitute infringement but, as for patents, there are likely to be good arguments that unauthorised file sharing is commercial.

Trademarks

In some limited situations, a trade mark owner may be able to prevent a website operator using his trade mark to advertise or describe a CAD file on a file sharing website. In this context, the operator may be offering goods for sale under the trade mark.

However, this has its limitations. In most situations, the trade mark owner would have to show that the goods being offered (a CAD file) were similar to the goods for which the trade mark was registered and that the public were confused into believing the CAD file derived from the trade mark owner.

Another limitation in relation to spare parts: a trade mark is not infringed where the use is necessary to indicate the intended purpose of a product (“in particular as accessories or spare parts”10 ). Therefore, if a website describes a CAD file as being for a spare part for a particular manufacturer’s goods, the website operator/relevant file sharer may well have a defence.

Conclusion

websiteWhile the provisions under copyright law are the most adapted to dealing with piracy, in the context of 3D printing, copyright is the right least likely to protect the objects consumers are most likely to copy. In most cases, businesses will need to rely on design law and patent law, neither of which have the benefit of easy infringement blocking processes. In the future, we may see provisions being added to the legislative framework for these rights, mirroring those in the copyright legislation discussed above. Specific provisions allowing courts to order ISPs to block access to infringing websites is a very useful tool for rights holders.

As far as the various private use defences are concerned, we will see rights owners arguing that file sharers do not carry out these activities for their own private use but for an indirect commercial purpose, and we believe this argument is likely to succeed.

As the music and film industries well know, enforcement of rights is not the only answer to tacking piracy. As discussed elsewhere, one of the most effective ways to limit piracy is to ensure the public has access to a wide variety of good value licensed products (i.e. to allow authorised downloading of CAD files). Read more about this.

If you have any questions on this article please contact us.

1See Dramatico Entertainment Ltd v British Sky Broadcasting Ltd and others [2012] EWHC 268 and Twentieth Century Fox Film Corp and others v Newzbin [2010] EWHC 608

2Emi Records v British Sky Broadcasting & Others [2013] EWHC 379

3Section 97A Copyright, Designs and Patents Act 1988

4Section 17(3) Copyright, Designs and Patents Act 1988

5EMI Records v British Sky Broadcasting & Others [2013] EWHC 379 – paragraph 24

6Section 17 Copyright, Designs and Patents Act 1988

7Modernising Copyright

8Section 60(2) Patents Act 1977

9EMI Records v British Sky Broadcasting & Others [2013] EWHC - paragraph 40

10Section 11(2) Trade Marks Act 1994

drawing

"As far as the various private use defences are concerned, we will see rights owners arguing that file sharers do not carry out these activities for their own private use but for an indirect commercial purpose, and we believe this argument is likely to succeed."