Germany: Counterfeiting, 3D printing and the third Industrial Revolution

The opportunities presented by three-dimensional (3D) printing have been widely discussed and acknowledged. It is commonly predicted that 3D printing will revolutionise production processes by enabling virtually anybody to print products for themselves. This will apply not only to everyday consumer goods, but also to products in many technological fields, such as aircraft parts, medical devices, drugs and even human organs. Apart from economic and social benefits, this emerging technology also has implications in various legal fields, notably that of intellectual property. Due to its relative novelty, legal scholarly publications on the subject are scarce and case law is as yet non-existent in Germany. Rights holders must consider how to adapt their IP strategies – in particular with regard to copyright, designs and trademarks – to meet the challenges of the emerging third Industrial Revolution.

How it works

Traditionally, manufacturing works according to the principle of subtractive manufacturing. The process begins with a piece of material, with the desired object created by taking away the unnecessary materials until it alone remains.

Three-dimensional printing is the exact opposite, as it is based on additive manufacturing. The printing machine builds a 3D object layer after layer out of materials such as plastics, resins, ceramics or metals. The instructions for manufacturing the desired object are usually derived from a computer-aided design (CAD), which contains all the technical information necessary for the printing machine to manufacture the desired object. The files themselves are created with suitable software and can be used to produce an infinite number of 3D objects.

Given the necessary working steps to print a 3D object (ie, creating a CAD file which is subsequently printed), each working step should be legally assessed to determine which IP rights attach to it. In addition, making available a CAD file for 3D printing online will be scrutinised with respect to the various IP rights involved.

Copyright

Copyright is the most important IP right when it comes to 3D printing. Copyright protection under the Copyright Act is relatively easy to obtain, as it requires no registration or formalities – the mere act of creation can result in copyright. However, because no formalities are required, ownership of copyright and the chain of title may be problematic to establish.

As a first condition, the printed object and the CAD file on which it is based must be subject to copyright. In the past, the threshold under German copyright law for works other than works of art to be covered was relatively high. However, a recent decision of the Federal Court of Justice (Case I ZR 143/12, November 13 2013) abandoned this position. Now, any artistic accomplishment whatsoever is sufficient, which means that there is a relatively low threshold for achieving protection. Thus, designed objects are subject to copyright protection under the Copyright Act.

The creation of a CAD file which comprises a copyrighted object without the consent of the rights holder infringes third-party copyright. However, the Copyright Act provides numerous exceptions, the most relevant of which in this respect is Section 53(1), which permits reproductions for private use. This exception is construed narrowly and permits only individual copies of a work strictly for private use, such as for family members and close friends. Apart from this, the distribution of a CAD file is not permitted, whether online or via any storage medium. In particular, making it available via a peer-to-peer network for download and further use constitutes copyright infringement, regardless of whether this falls under the private use exception.

Downloading a CAD file also constitutes a reproduction and thus copyright infringement. In this respect, the private use exception set out in Section 53(1) also applies. The exception does not apply if a model which was obviously produced illegally is used for the reproduction. This obviousness should not be difficult to establish if CAD files for 3D printing are downloaded from file-sharing networks.

Printing a 3D object from a CAD file also constitutes a reproduction of the copyrighted work. The private use exception also applies.

Designs

Any 3D or two-dimensional (2D) object is eligible for protection under the Design Act and the EU Design Regulation (6/2002), provided that the relevant conditions are met. Basically, this means that the objects in question must be new and must have individual character. If this is the case, protection as a registered German design or a registered or unregistered Community design may be awarded.

CAD files should also be eligible for design protection as ‘products’ under German and EU design legislation, because a CAD file is merely a 2D reproduction of a 3D product. For example, the Federal Supreme Court has ruled that 2D reproductions of a protected 3D design may constitute design infringement (Case I ZR 56/09, April 7 2011). Further, the design must be used in the course of business, whereas use for private and non-commercial purposes rules out design infringement.

Consequently, commercial file-sharing internet platforms can be deemed to be acting in the course of business – especially if they charge for downloads of CAD files. If a platform only offers third-party CAD files for download, then the focus will fall on the third party uploading the files. All relevant circumstances will be assessed in order to determine whether it is acting in the course of business – indications accepted by German courts include the amount of products sold within a set period or whether the files on offer pertained to the same or similar field of technology.

The printing of a protected object from a CAD file, as well as its subsequent distribution without the consent of the rights holder, constitutes design infringement. However, design law also provides a private use exception. As a consequence, if an end user were to print spare parts solely for his or her own private use, no design infringement would be deemed to have taken place.

Many industries, including sports, are concerned about the counterfeiting impact that 3D printing could have

Picture: Alexander Kirch/Shutterstock.com

Trademarks

Trademark protection is desirable due to its potentially unlimited term. In order to be eligible for registration as a 3D trademark, an object must be distinctive and non-descriptive with respect to the goods and services that it designates (Sections 8(2)(1) and (2) of the Trademark Act and Articles 7(1)(b) and (c) of the EU Trademark Regulation (207/2009)).

However, the threshold for registering a 3D trademark is high under German case law. The German courts have reversed the relationship of rule and exception compared to 2D marks, holding in several cases that the relevant public will not normally consider 3D marks to be distinctive and non-descriptive, and will do so only if their shape clearly deviates from the state of the art in their respective field of protection and is not of a purely aesthetic nature (Federal Court of Justice, Case I ZB 33/04, December 15 2005). In the absence of such a qualification, the likelihood of registration is low. As a consequence, German case law indicates that many 3D marks have been registered only because trade acceptance was established.

The infringement of a registered 3D mark (as with any trademark) also requires that the mark be used in the course of business. Additionally, the relevant public must consider the 3D object as being used as a trademark (ie, as an indication of origin). If the relevant public considers the 3D object merely as an aesthetic shape, then there is no indication of origin and infringement is ruled out. However, the opposite is also true: if a 3D object is used to distinguish goods from third-party products, it serves as an indication of origin and consequently infringement can be established.

When it comes to printing a 3D object from a CAD file, this constitutes an identical use of the 3D mark for identical goods and is thus an infringement of the 3D mark. The same principle applies to distribution.

Comment

In light of this, it would appear that copyright protection is the best way to prevent counterfeiting when it comes to 3D printing. This is because protection is easy to obtain and the private use exceptions set out under the Copyright Act are rather narrow. However, in the event that it is not possible to obtain copyright protection (eg, because the chain of title cannot be proved), it is also advisable to register the 3D objects as designs. The same is true for 3D trademarks – even though it can be extremely challenging to register these in Germany. Finally, non-legal measures should also be considered – such as applying technologies to identify whether a certain product has been counterfeited (eg, embedding nanoparticles in the printed product in order to mark it as genuine).

Christian Hess
Lawyer
[email protected]

Christian Hess is a certified IP lawyer, with a degree in law from the University of Passau and an LLM on IP and competition law from the University of Stellenbosch, South Africa. He is a member of the German Association for the Protection of Intellectual Property, the International Association for the Protection of Intellectual Property, the German-South African Lawyers’ Association and the Munich Bar Association. Mr Hess specialises in contentious and non-contentious advice and representation in all fields of intellectual property – in particular patent law and trademark law – as well as competition law.