CAD Files and European Design Law

The term “three-dimensional printing” (“3DP”) can be considered as an umbrella term that stands for a set of related technologies building physical objects by the consecutive addition of liquids, sheet or powdered materials in ultra-thin layers. Hence, in contrast with traditional “subtractive manufacturing” technologies, which mostly rely on the removal of material (e.g. cutting, drilling and milling), 3DP is an “additive manufacturing” technology. The peculiarity about 3DP is that every physical object is created directly from a digital file, the so-called Computer-Aided Design (CAD) file. The latter is a virtual 3D model that serves to send information to the printer on how to build the object.

A CAD file can be obtained in different ways. First, it can be created from scratch, by using modelling software (“CAD software”). A number of open-source software tools are freely available online. They enable individuals with no prior experience in 3D modelling to create their own designs, with some programs providing pre-rendered shapes  [1] . Furthermore, many websites offer tutorials on modelling best practices to assist users who are not design professionals  [2] .

Second, an existing object could be turned quickly into a virtual 3D model by using a 3D scanner. The latter is a device that collects a huge amount of data from a real-world object, by means of lasers or x-rays. Hence, it reproduces a high-resolution and accurate digital model of the scanned object (“3D visualization”). Third, photogrammetry is a valid alternative to 3D scanning. It is a photography technique that uses software tools for stitching a series of 2D photographs – taken from different angles – together into a 3D model.

A CAD file can be saved in different formats, such as the .stl format (“STereoLithography”) or the .amf format (“Additive Manufacturing Format”). The .stl format merely describes the surface geometry of a three-dimensional object as a set of triangular faces, whereas the .amf format is an XML-based format inclusive of information about the volumetric structure of the interior, composition, colour, geometry and material.

At a second stage, CAD files need to be processed, in order to become printable. Hence, a (CAD or scanned) 3D model has to be segmented into a number of layers by specialized software, so-called “Computer-Aided Manufacturing” software or “slicer”. The latter generates a G-code for each layer, which contains commands to tell the printer how to manufacture the object  [3] . The slicing programs are usually included with the printer or available online for download  [4] .

It emerges from the above considerations that three consecutive steps have to be followed in an ordinary 3DP process: the creation of a virtual 3D model; the deconstruction of the 3D model into a series of slices (“slicing”), which are sent to the 3D printer through a computer code; the final print, consisting in a layer-by-layer deposition of suitable materials.

3DP has gained a wider distribution among the general public in recent years. The launch of Open Source Hardware initiatives, such as the “Replicating Rapid Prototyping” (“RepRap”) project  [5] , together with the expiration of a number of key patents on 3D printing technologies, have contributed to a steady improvement in the quality of personal 3D printers and to a considerable reduction in hardware costs  [6] . The technology has, therefore, crossed over into the consumer sphere, with over 100,000 desktop 3D printers having been sold so far  [7] .

Furthermore, online platforms dedicated to the dissemination of CAD files (“digital-design-file-sharing”) have grown in popularity. These platforms have contributed to the creation of a communication infrastructure that is a powerful tool for co-creation. They enable individuals to connect to a vast and distributed network, where they can upload, download, edit, remix, share or indeed sell a CAD file, from which a 3D printed product will emerge.

Some recent studies, conducted by Rayna et al.  [8] , Moilanen et al.  [9] , and Mendis et al.  [10] , provide examples of the diversity of existing 3DP platforms. The latter include platforms, such as Thingiverse, where users license their CAD files – rather than selling them – under Creative Commons licences (CC) or General Public Licence (GPL). By using CC licences, the CAD file’s proprietor can withhold certain rights (e.g. the right of attribution and the right to make derivative works), and impose that derivatives should be licensed under the same terms as the licence of the original CAD file (the “Share Alike” clause). Furthermore, the “Non Commercial Use” clause restricts the possibility for the licensee to use the CAD file for commercial purposes.

Other platforms, such as Cuboyo, offer paid downloads to users’ CAD files (i.e. the 30% of the sale price goes to the website, whereas the remaining 70% goes to the seller)  [11] . Moreover, online platforms, such as Shapeways and Sculpteo, offer printing and delivery services on demand. Taking as an example the architecture of Sculpteo, the 3DP process takes place in the following way: individual users upload their CAD files onto Sculpteo website; Sculpteo automatically repairs any defect and optimizes the digital blueprint, with its own 3D tools; then, it prints the object and delivers it to costumers in finished form, charging a price for its activities.

Whether personal 3DP will reach its full potential in the near future is not altogether clear yet. For the time being, 3D printing by individual makers reveals major technical limitations to seriously hinder the market for quality products. The 3DP community is still a small niche, and the dissemination of CAD files on the Internet is not a mass phenomenon yet. So far, digital-design-file-sharing shows a high level of participation by 3DP enthusiasts  [12] . Furthermore, to date, there is only evidence of IP infringement occurring on a small scale, on online platforms such as Thingiverse  [13] .

Having noted that, the speed of technical developments in consumer 3D printing is undeniable. The level of precision and accuracy attainable by a desktop 3D printer is steadily rising. The price of printing material has dropped drastically, and the technology has also become faster, more reliable and cheaper.

Furthermore, there are continuous attempts to make 3D printing more easily accessible and affordable for the average consumer. To give a recent example, an Italian company specialized in rapid prototyping and digital fabrication, called Solido 3D, came up with one of the latest innovation in 3DP. It developed a device, named “OLO”, which enables printing 3D objects directly from a smartphone  [14] . Because of its size, weight, and battery power source, this device is considered as the first portable 3D printer, available for sale at the price of $ 99  [15] .

It is therefore maintained that, although personal 3D printers are still far from being ubiquitous, it is just a matter of time until ordinary people will manufacture – directly from a digital file – an increasing number of items at the comfort of their home. Furthermore, in the event that products are not capable of being printed by means of personal 3D printer, it is possible to outsource the actual manufacture to bureau services, such as Sculpteo and Shapeways. Users can create online shopfronts, where they display their own CAD files for products. The Internet operator will then 3D print the product on demand and deliver it worldwide.

For the purposes of the Community Design Regulation (“CDR"), “design” means “the appearance of the whole or a part of a product”  [19] . While there is no definition of appearance, Article 3(a) CDR provides a non-exhaustive list of elements that one may have to consider, for appraising the external aspect of a product. These elements include the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. These features are all perceivable by the human eye or by the sense of touch, whereas sounds and smells are not contemplated  [20] . Yet the CDR does not make the eye appeal a necessary prerequisite for registration.

Furthermore, as noted by the European Commission in the 1991 “Green Paper on the Legal Protection of Industrial Design”  [21] , the external aspect of a product is of considerable economic importance. The notion of appearance, therefore, should be broad enough to encompass any economic value attached to the aspect of a product.

Article 3(b) CDR goes on to define a product as “any industrial or handicraft item other than computer programs”. It then offers some guidance as to the type of designs that are eligible for protection. The latter include both three-dimensional designs, such as packaging and get-up, and two-dimensional designs, such as graphic symbols and typefaces  [22] . Designs of parts of products, for which no assembly is required, and designs of component parts, which are intended to be assembled in a larger complex product, can also be protected  [23] .

The concept of product, therefore, is central to the whole structure of the CDR. The essence of a design is the appearance of a product. Furthermore, as explained below in more detail, there should be a product, to which the design is applied, in order to commit an infringement.

The following enquiry aims at analysing whether the appearance of a product that is represented digitally as a CAD file may attract design protection under existing EU legislation.

An Unregistered Community Design (“UCD”) is based on the same substantive provisions postulating the validity requirements for a RCD. The meaning of “design”, “appearance” and “product” are the same for both RCD and UCD. As a general matter, any design capable of being registered at the EU level could also benefit from the protection granted to UCD.

There are, however, substantial differences between RCD and UCD. A RCD confers a true monopoly, whereas an UCD grants the right to prevent any commercial use of a design that is an intentional copy of the protected one. Yet, it should not be demonstrated that the alleged infringer acted in bad faith. Furthermore, a RCD confers protection for up to 25 years, subject to renewal each five years, whereas an UCD affords protection for only three years.

Protection of the UCD commences from the date on which the design has been “made available to the public” within the EU. As Recital 16 CDR puts forth, there is no need to register products having a short market life. A designer can introduce a new design testing the market and file an application for registration at a second stage. In fact, the designer is entitled to register her design within a 12-month period (“grace period”) from the date of the first disclosure. In other words, in the event that the designer files an application for a RCD, disclosure during the year preceding the date of filing shall not be taken into consideration when appraising novelty and individual character of the design in question, pursuant to Article 7(2) CDR.

Let us now assume that a CAD file for a product to which a design is applied is uploaded onto a website which is a 3DP marketplace or repository. This, in turn, raises a number of questions. Should the act of uploading a CAD file onto an online 3DP platform be tantamount to a disclosure of the design to the public, which triggers UCD protection? Has the design been “made available to the public”, and become known in the normal course of trade? Has the 12-month grace period commenced?

The following part of this paper detects the circumstances under which a design shall be deemed to have been made available to the public. The phrase “made available to the public”, for the purposes of identifying the date on which UCD protection commences, is defined under Article 11(2) CDR. This provision mirrors Article 7(1) CDR, which clarifies when a design has been disclosed for considering questions of novelty and individual character, for both registered and unregistered designs. In fact, all designs made available to the public, prior to the relevant date (indicated at Article 5(1)(a)&(b) and 6(1)(a)&(b)), are to be taken into account to determine whether a design is new and if it has individual character. This, in turn, raises an additional question: should we consider all the CAD models that have been previously uploaded onto 3DP online platforms as antecedent designs in the prior art?

It should also be noted that a disclosure should take place within the territory of the European Union in order to create an UCD. Hence, UCD protection is not afforded to designs that have first been made available outside the EU. On the contrary, this requirement is not imposed under Article 7 CDR, which defines the notion of disclosure that is relevant for determining the state of the prior art.

Articles 7(1) and 11(2) CDR provide some guidance to assess whether a design has been ‘made available to the public’. This is the case if “it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed”. The following part of these provisions set forth the so-called “safe-guard” clause, stipulating that a disclosure shall not be taken into consideration if these events (publication, exhibition, and use in trade) could not have become known “in the normal course of business to the circles specialised in the sector concerned”, operating within the Community.

The EUIPO  [36] ’s case law from 2004 onwards allows enough clearance on which acts constitute a disclosure of a design to the public, which could also become known in the normal course of business to specialised circles.

A remarkable ruling that helps us to understand better whether the publication of a CAD file on an online platform would amount to a disclosure to the public is the Board’s decision in Crocs, Inc. v Holey Soles Holdings Ltd  [37] . The holder of a RCD for Crocs clogs, which was published in the Bulletin of 8 February, 2005, conceded that the design had already been published on www.crocs.com before 28 May, 2003. Nonetheless, the right owner argued that such disclosure on the website did not destroy novelty of the design in question, since it could not have reasonably become known in the Community.

At that time, the website was unsophisticated and virtually impossible to access. The website merely functioned as an information tool for persons “who might have learnt about the clogs from people who had already bought them” and was not used as a large mail order service. Websites that will be regarded as a source of inspiration for developing new designs are those of the established footwear companies, such as Nike or Adidas, whereas Crocs Inc. was not an established manufacturer at the relevant date  [38] .

The Third Board of Appeal dismissed the appellant’s findings. In the first place, the Board found that the Internet is a formidable information tool and is used by designers in footwear as well as in other fields as a resource in the development of their designs. Moreover, Crocs website was an active website already at that date and was configured to function as a sales channel. Henceforth, the audience targeted by the website was not only composed by those who knew Crocs from before  [39] .

Accordingly, when a design is published on a website, it will per se be publicly disclosed and reasonably become known in the normal course of business, even if the circles specialised in the sector were not aware of the website owner at that date  [40] . This is further confirmed in recent case law from the EUIPO. As a matter of principle, information disclosed on the Internet or in online databases forms part of the prior art and is considered to be publicly available as of the date the information was posted  [41] .

Moreover, neither restricting access to a limited circle of people (for example, by using password protection) nor requiring payment for access (in the same way as requiring a payment for subscribing to a journal or purchasing a book) prevent a webpage from being part of the prior art. The European circles specialised in the sector concerned could reasonably meet the accessibility requirement  [42] .

A disclosure shall be deemed to be obscure and irretrievable only in situations in which a design disappears from mankind’s memory over time and is available only in a local museum or traded on a remote local market. This is not the case for prior designs made available online. Users – either the broad public or experts in a particular field of industry – use the service of web browsers, such as Google or Yahoo, to search on the Internet. By using keywords, they can easily find websites dealing with a particular subject matter. Therefore, once a design is published on the Internet it becomes automatically accessible and retrievable  [43] .

For the purposes of applying Articles 5 and 6 CDR, a disclosure could also take place outside the EU, insofar as the design has become known in the trade circles in the European Union. The question of whether events taking place outside the EU could reasonably have become known to persons forming part of specialized circles in the EU is a question of fact, dependent on the particular circumstances of each individual case  [44] . In theory, even where the design has been disclosed to a single undertaking within the EU, a disclosure of that kind may, indeed, be sufficient for that purpose  [45] .

Making a design available overseas, therefore, may destroy novelty on the basis that Article 7(1) CDR is not geographically restricted to the EU. On the contrary, the same disclosure taking place outside the EU may not be sufficient to commence UCD protection, given the territorial qualification contained in Article 11(1) CDR  [46] .

It is therefore maintained that, in principle, the act of uploading a CAD file onto an online platform should be a sufficient ground for “disclosing” the design represented therein, for the purposes of applying Articles 5 and 6 CDR. A CAD file is retrievable and easily accessible by Internet users, including experts in the field. This might be the case for both CAD files that have been made available to the public, subject to a Creative Commons licence, and those offered for sale in 3DP marketplaces.

It follows that whether the design is new and has individual character would need to be considered, taking into account the already-available body of designs, including all antecedent CAD files that have been previously disclosed. In other words, product designs embedded in CAD files that have already been distributed online will form part of the state of the prior art  [47] .

The publication of the CAD file on a EU website can also trigger UCD protection from the date of the first online publication, if the criteria for protection (i.e. novelty and individual character) are met. The designer would then have the option to register the design within one year.

An unsettled issue is whether UCD protection is activated if the CAD file is first uploaded onto a website that is hosted outside the EU (such as Thingiverse). If the website is easily accessible by European users, a positive answer may appear as more appropriate in light of the above-mentioned case law, which focuses on the retrievability of Internet publications, whereas a literal interpretation of Article 110a (5) CDR may suggest the opposite.

It should also be noted that the CAD file made available online should clearly reveal the outer appearance of the product for which protection is sought. Lacking a clear representation of the product design, the act of publishing the CAD file on a website will not constitute a relevant disclosure for the purposes of Articles 7 and 11 CDR.

The option of making CAD files available online, therefore, constitutes an interesting possibility for those designers that want to prevent third-parties from using their 3D models to obtain design protection  [48] . When the CAD file is disclosed, all later designs will have to produce a different overall impression on the informed user.

Articles 5 and 6 CDR state that a design has to be new, has to have individual character, and must not fall foul of any of the stipulated exceptions, in order to enjoy design protection. These requirements will be analysed in turn, focusing on the implications that 3DP carries.

The scope of design protection for the appearance of items represented as CAD files – and the corresponding 3D-printed products – is narrowed by a series of exceptions, set forth in the CDR. The first functionality exclusion, provided in Article 8(1) CDR, states that a Community design shall not subsist in features of appearance of a product, which are solely dictated by its technical function. Such features shall not only be necessary, but essential to obtain a technical result. Thus, the level of functionality required is higher than that provided under trademark law.

In a way, such exclusion emulates the idea and expression dichotomy in copyright law. In fact, in the 1991 Green Paper on the Legal Protection of Industrial Design  [62] , the European Commission made clear that if the designer has a choice among various forms, in order to arrive at the technical effect, the features in question could be protected. This, in turn, means that features of appearance of a product, represented as a CAD file, will not be granted protection if they are only indispensable for achieving a specific technical result. It does not follow, however, that the whole design will automatically be denied protection.

Over and above the general exclusion of “technical function”, Article 8(2) CDR provides the so-called “must-fit” exception or “interface” exclusion. This exclusion is aimed at enabling technical replacement products and ensuring mechanical interoperability. Hence, no protection is given to those features that must necessarily be reproduced in their exact form and dimension in order to permit the product, in which the design is incorporated, to be mechanically connected to another product (for example, exhaust pipes or coupling sleeves are examples of “must fit” designs in the automotive industry). This permits the possibility that either product may perform its function.

This provision turned out to be rather redundant, insofar as spare parts, which are not visible in normal use  [63] , and those that are solely dictated by their technical function, are anyway excluded from design protection  [64] .

One of the most problematic issues the EU legislators had to face concerns the so-called “must-match” exclusion  [65] . This exclusion deals with the visual synchronisation and aesthetic appearance of a complex product, rather than with functionality. In other terms, the must-match provision concerns the design of a component part, which should be used for the purpose of the repair of a complex product so as to restore its original appearance (e.g. the design of a car body panel that is used to restore the original appearance of the vehicle).

The protection of must-match spare parts has occasioned the greatest controversy among a wide range of stakeholders, especially in the automotive industry. The following analysis provides a brief overview of the legislative history on this issue. This will help explain why the dispute is not resolved yet.

The original idea in the 1993 proposals for a Regulation on the Community design  [66] , and for a Directive on the legal protection of designs  [67] , was to introduce a must-match exception in Europe, specifying that only after a period of three years, from the first placing on the market of a complex product, the rights conferred by a RCD could not be exercised to prevent third parties from using the design of a component part, in order to restore the original appearance, or to permit the repair of, the complex product. The Council of Ministers rejected this option.

The European Parliament advanced a different solution in the Amended Proposal for the Design Directive, opting for a compulsory licensing regime that allowed the use of component parts, for repair purposes, immediately after the placing on the market of the complex product, in exchange for a fair and reasonable remuneration of the right holder  [68] . Manufacturers of component parts were required to inform the public as to the origin of their products used for the repair by means of a trademark or trade name. They also had to notify the right holder of the intended use of the design, and regularly inform her as to the scale of such use. Nonetheless, no agreement on the compulsory licensing clause was reached by the European Council.

Ultimately, the disagreement between EU institutions was the subject of a Conciliation Committee meeting, where the Council insisted on its position against a remuneration scheme. It recommended, instead, an extension of the period of exclusivity over component parts for a period ranging from three to seven years.

In such a tense context, the European Union opted for the so-called “freeze plus” solution, stating that until amendments to the Directive are adopted on a proposal from the Commission on this subject, Member States shall maintain in force their existing legal provisions. Member States should only change their laws if they wished to liberalise their market for spare parts, pursuant to Article 14 Directive 98/71/EC. Therefore, Member States had alternative options: they could introduce a clause allowing any use of the design for repair purposes; adopt a remuneration system; provide a term-limited design protection; or craft their own exception, which is a combination of the second and third options.

Article 110 CDR codified another “freeze plus” or transitional provision, mirroring the one set forth in the Directive. Thus, in 2004 the Commission made its third attempt to achieve harmonisation in this convoluted area, issuing a proposal designed to liberalise the aftermarket for spare parts  [69] . This proposal, known as the “repairs clause”, purported to increase legal certainty and allow market operators and consumers to take full advantage of a uniform Internal Market for spare parts  [70] .

In fact, the situation at that time was characterised by opposed regimes, where nine Member States, including Italy and the UK, have liberalised, whereas sixteen Member States had de jure design protection to spare parts (among them, Austria, Denmark, Finland, Germany, Portugal, Sweden). The European Commission found that the status quo – with mixed protection regimes of design protection for spare parts – was altogether unsatisfactory and created trade distortion in the Internal Market  [71] . The non-harmonisation of the must-match exclusion means that independent manufacturers are only able to sell their products and offer their services in some Member States but not in others.

Following a lack of progress at Council level, in May 2014 the proposal was withdrawn. Successively, the Commission launched a comprehensive legal and economic evaluation of the overall functioning of EU design systems  [72] . In the framework of this evaluation, an external contractor, Europe Economics, presented “The Economic Review of Industrial Design in Europe”  [73] . The latter suggests that, among various policy options, full liberalisation, meaning a complete elimination of design protection for spare parts within the EU, would be the best outcome. In an age of widespread availability of 3D printers, consumers and independent manufacturers think that they are entitled to produce their own 3D-printed spare parts for the purpose of repair. Hence, a de facto repairs clause might become inevitable anyway. Insofar as it is impossible to enforce design law against all infringers in the 3DP landscape, a full liberalisation has to take place.

In response to this argument, one could maintain that 3DP makes the introduction of a repairs clause a more delicate issue than it was in the relatively recent past, because 3D printed products might not meet quality and safety standards. Any proposal for full liberalisation should foresee a method to ensure that component parts are safe and useable, when it becomes possible for different industries to manufacture spare parts using 3DP.

In a study commissioned by the UK Intellectual Property Office (“IPO”), Reeves and Mendis stressed, in this regard, that it is rather unrealistic to assume that 3DP will be heavily used, in the near future, to make component parts in certain industrial sectors, such as the automotive aftermarket  [74] . The component parts that, according to the UK IPO’s study, are not yet suited to additive manufacture include: tyres, batteries, oil filters, air conditioning, etc. There are also aftermarket parts whose manufacture is technically possible by means of 3DP, but not economically viable yet, since the production costs would be higher than the current aftermarket value. The latter include: exhaust pipes, distributor caps, water pumps, and radiators  [75] .

As noted by the authors, one of the biggest limitations to the production of 3D printed spare parts lies in the lack of credible design data from which to print. In the Office’s opinion, it is erroneously “assumed that parts can be simply scanned and reverse engineered, with the resulting data then being stored on the cloud” for downstream 3DP. It is of fundamental importance to have access to the original CAD files, to understand “issues such as tolerances, loading conditions and material requirements”.

Hence, whether the impact of 3DP on the liberalisation of the aftermarket sector will be significant in the next future is not altogether clear yet  [76] .

For the sake of completeness, it is also worth recalling a recent Order from the CJEU in Ford Motor Company v Wheeltrims s.r.l.  [77] , dealing with trademark law.

At first instance, in the Italian proceedings, the claimant Ford Motor Company claimed that the defendant, a company operating in the automotive aftermarket, had infringed its registered trademark “Ford”. Wheeltrims was marketing wheel caps bearing the registered trademarks of the original manufacturers – including Ford’s trademark – without the owners’ authorisation. The defendant raised the repairs clause defence, arguing that Article 241 of the Italian Industrial Property Code, implementing Article 14 of the Design Directive, should apply as a defence to trade mark infringement. The use of the trademark “Ford” was justified for the purpose of restoring the original appearance of the complex product, in derogation of the Trade Mark Regulation (EC) 207/2009 and Trade Mark Directive 84/104/EC. The Tribunale Ordinario di Torino made a reference for a preliminary ruling to the CJEU on the interpretation of the repairs clause set forth in the DD and CDR.

The CJEU answered the referred questions by Order, stating that Article 14 of DD and Article 110 CDR must be interpreted as not allowing – by way of derogation from the provisions of the Trade Mark Directive 2008/95/EC and Trade Mark Regulation 2009/207/EC– a manufacturer of replacement parts and accessories for motor vehicles to affix to its products a sign, which is identical to a trademark registered for such products by the original manufacturer, without the latter’s authorisation, on the ground that the use thus made of the trade mark is the only way to restore the original appearance of the complex product.

Hence, the CJEU has made clear that, in its current form, the repairs clause that is anchored in European design law does provide a defence to an alleged trademark infringement. As a result, a third party who replicates by means of 3DP a component part, to which the manufacturer’s own trademark is affixed, may be found liable for trademark infringement, provided that the private use exception does not apply  [78] .

In the event that a design is registered, the holder of a RCD is granted an exclusive right to use it and to prevent any third party not having her consent from using it. Pursuant to Article 19 CDR, the right to use the design covers different sorts of activities, such as the making, offering, putting on the market or using of a “product” in which the design is incorporated. In contrast, an UCD confers the right to prevent the same aforementioned activities, but only insofar as the contested use results from copying the protected design, and is not the result of an independent work of creation.

The owner’s exclusive rights extend towards any third party, without any differentiation between primary and secondary infringers. This, in turn, implies that the holder of a RCD can pursue claims for direct infringement against intermediaries (e.g. online 3D platforms).

Furthermore, as already mentioned, infringement is not confined to the use of the design on the same product, in which the design was incorporated in the first place. Protection extends toward any use of the design, in relation to any products. It is also worth remembering that infringement cannot occur with respect to acts done privately and for non-commercial purposes  [79] , and acts done for experimental purposes (Article 20 CDR).

In light of the above considerations, the question of whether 3D printing a design-protected product from a CAD file constitutes or not an infringing activity is straightforward. There is no doubt that the acts prohibited under Article 19 CDR will encompass the manufacture of objects via 3DP, that is done in the context of a commercial activity and outside the scope of the private use exception (i.e. “making” the design)  [80] . Infringement will not be actionable, instead, against an individual, who 3D prints a design product at home, for private and personal use.

Moreover, the fabrication of products, by means of 3DP, done for scientific research will be exempted, irrespective of whether it is for a private or commercial purpose  [81] . As noted by Suthersanen, this exception should be interpreted narrowly and be only allowed if the experimental usage of the design is in the general interest. A demarcation should always be made between acts of experimental nature, and those that seek to exploit the design  [82] .

Whether the scope of design protection should also include the act of making a scanned representation and/or a CAD file from a design already existing as a tangible article is less clear-cut. Also, does the unauthorized act of copying and marketing a third party’s CAD file, in which a design is incorporated, amount to infringement of the design right?

The unsolved issue, therefore, is whether activities carried out in relation to CAD files fall foul of Article 19 CDR, and constitute an illegitimate “use” of the design. Moreover, who is the party responsible for the infringement: the one who uploads, downloads or markets the CAD file? Should the host of the file-sharing site be held liable too?

A strict interpretation of the law would suggest that the answer to these questions should be no. Just as a design requires there to be a product, infringement should only occur where a person uses a physical product  [83] . The latter should not necessarily be the same product to which the design was incorporated in the first place, but it should however be an industrial or handicraft item.

Furthermore, the CDR does not provide protection against indirect use of a design, differently from patent law. There is no specific provision that confers on the holder of a Community design the right to prevent third parties, not having her consent, from supplying the “means” for using the design (e.g. marketing a complete kit that, when made up, constitutes the design)  [84] . A CAD file could be seen as a “means” enabling the fabrication of the product in which the design is incorporated. As a consequence, making and distributing a CAD file would constitute an authorized (indirect) use of the design  [85] .

Therefore, a crucial issue to address is the extent to which a design right can be used against a new form of exploitation that does not imply the making of physical objects, but the creation and sharing of digital files.

It is here suggested that confining the scope of design protection to use on material products only is overly restrictive, in the light of the current technological change brought about by 3DP. This technology is blurring the line between the physical and the immaterial worlds. An increasing number of undertakings might decide to make their CAD files available online in the course of their business. Digital networks might emerge as an ordinary means of distributing 3DP templates of protected designs. In this way, undertakings would not need to mass-produce or distribute their products any longer.

Once a design is made available in the form of a CAD file, it then becomes extremely easy for anyone to replicate it, either by entrusting a third party with the task of printing the product, or by using personal hardware. Future advancements in personal 3D printers will further expand this capability. Hence, design-based industries have to be equipped for the digitalization of things. In order for alternative business practices to come to light, it is of utmost importance to ensure that material protected by an IP is respected.

This, in turn, calls for a reinterpretation of the legal basis on which right holders shall receive protection. Arguably, they should be exclusively entitled to use – and prevent third parties from using and dealing with – the CAD files of their protected designs.

There are several ways to address this issue. A first option would be to consider the digital representation of a design as a “product” within the meaning of Article 19 CDR. Accordingly, this provision would cover different activities, such as the unauthorized making of CAD files (i.e. the making of a product), sharing of CAD files with other Internet users (i.e. use of the design), and the sale of CAD files on 3DP marketplaces (i.e. offering the product and putting it on the market). Furthermore, a possible interpretation of Article 20 CDR would be that the private use exception exempts from liability a third party who simply downloads a CAD file and saves it on her computer.

One may support this conclusion arguing that requiring products to have some physical form would be unduly limiting  [86] . From a systemic perspective, it seems rather contradictory to allow registration of graphic symbols – including computer icons – and, at the same time, postulate that the notion of “product” is tied to a physical dimension for infringing purposes.

Furthermore, the scope of design protection is not limited to a certain category of products; rather, it covers any use of the design, in relation to “any” product that does not produce on the informed user a different overall impression. As noted by Malaquias, it seems very difficult to ascertain that a CAD file “will produce on the informed user a different overall impression from the protected design, considering that its purpose is to replicate the existing design in three-dimensions”  [87] .

In the opinion of the present writer, the preferable solution is to follow the recommendation, made by the European Commission in the “Legal Review on Industrial Design Protection in Europe”  [88] , to introduce an infringement provision stating that the creation of a design document amounts to an infringing use  [89] .

As suggested by the European Commission, a template for such provision may be Section 226(1) of the UK CDPA 1988, which states that “the owner of a design has the exclusive right to reproduce the design for commercial purposes [...] by making a design document recording the design for the purposes of enabling such articles to be made”.

In the UK jurisdiction, “design document” is defined in Section 51(3) CDPA as: “any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise”. The scope of this provision is wide enough to include CAD files as design documents  [90] .

Furthermore, EU design law could fashion an additional provision similar to Section 226(3) CDPA 1988, specifying that it is a primary infringement of a design right to do or “authorise” another to do, without the design right owner’s permission, anything which is the exclusive right of the design right owner.

In the first place, this provision would clarify that making a CAD file from an existing design-protected product, for the purposes of 3D printing such product, amounts to an infringement of the design right. This provision would also specify that intermediary parties (such as 3DP online platforms) might also be directly liable for “authorising” design infringement. As stressed in the Commission’s review, the benefit of such a provision is that neither actual nor constructing knowledge would be required for a positive finding of infringement  [91] .

A clear message emerges from the arguments developed in this paper. European design law should adapt to the reality of digitized goods and accommodate greater protection for right owners.

To date, the EUIPO accepts 3D digital representation of designs as “representations of the design that are suitable for reproduction”, within the meaning of Article 36 CDR. Such a representation is enclosed in the application form for a RCD to show, in the same way as a photograph, the design for which protection is sought.

It has also been noted that, although the CDR is structured on the concept of “product”, the EUIPO does not take into consideration whether a product is actually made or used, or can be made or used, in an industrial or handicraft fashion. This, means that, in theory, the CAD representations included in the application for a RCD will determine the scope of design protection, regardless of whether the product is actually manufactured or not.

It has also been contented that in case a CAD file clearly unveils the outer appearance of a product, its publication online will be tantamount to a “disclosure” for the purposes of Article 7 CDR. As a consequence, all later products – and CAD files for products – will have to produce a different overall impression on the informed user. By contrast, it is not entirely clear whether publishing a CAD file on a website that is hosted outside the EU will trigger UCD protection from the date of the first online publication, given the geographical limitation contained in Articles 11 and 110(a) 5 CDR.

Hence, there are many issues that have to be clarified. First, who is the informed user of a product represented digitally as a CAD file, as opposed to the informed user of the finished product? Second, is the designer’s degree of freedom enhanced or limited by the fact that she creates a product design using CAD software? Third, if many individuals begin to create their own CAD files for products and upload them online, thereby disclosing the design for which protection is sought, will many market sectors suddenly become overcrowded? Will all subsequent designs have to depart from the considerable amount of CAD models already made available online?

Besides, the ease of converting a CAD file into a physical item leads us to suggest that design owners should be entitled to claim protection for the CAD representations of their designs. In a hypothetical world of widespread 3D printers, it could be that CAD files become almost interchangeable with end products. The owner of a CAD file might be as satisfied as if she possesses the end product itself. A CAD file would then serve as a substitute for a good, offered to the same or actual potential customers.

Many are the fields in which clear-cut rules are needed, since new technologies empower the individual in her creativity and yet should make her responsible for potential infringement of third parties’ exclusive rights.

In this respect, the present writer supports the following recommendations, made by the European Commission in its recent report “Legal Review on Industrial Design Protection in Europe”: first, to introduce a provision that confers upon the design right owner an exclusive right to make a design document, which is a record of the design (i.e. a CAD file); second, to introduce a provision on direct primary infringement by authorisation.

* Viola Elam is a Ph.D. Researcher at the European University Institute, Fiesole, Italy. She is very grateful to an anonymous referee for insightful comments.