3D Digitisation and Intellectual Property Rights (17 January 2014)

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1. Introduction
2. Analysis of IPR Required by a 3D Digitisation Project
2.1 Copyright
2.2 Moral Rights
2.3 Design Rights
2.4 Trade Marks
2.5 Passing Off
2.6 Patents
3. Conclusion
4. Want to Know More?

1. Introduction

What’s in this guidance?

This guidance is intended for staff in colleges and universities and related organisations involved in 3D digitisation projects, and focuses on the intellectual property rights (IPR) issues.

What is 3D digitisation?

This paper deals with the IPR issues surrounding making a digital copy of a three-dimensional object, which can then be examined or manipulated via a computer or may be reproduced in either a 2D or 3D format. Such subjects might include fossils, historical artefacts, sculptures, works of artistic craftsmanship, industrial objects. 

There are IPR which need to be considered when embarking upon a 3D digitisation project.

 

Example

Sheffield Hallam University and Museums Sheffield collaborated on a Jisc funded project to digitise and develop interactive 3D content for the Designated Metalwork collection managed by Museums Sheffield.  The project used state-of-the-art fast 3D scanning technologies developed at Sheffield Hallam University to capture 3D images of objects such as Sheffield-made pewter which can be experienced over the Internet using standard web browsers.


2. Analysis of IPR Required by a 3D Digitisation Project

Copyright, design rights, moral rights, trade marks and patents are all intellectual property rights which may require consideration when embarking upon a 3D digitisation project.

2.1. Copyright

Copyright is enshrined in the Copyright, Designs and Patents Act 1988 (CDPA).  Depending upon the object to be digitised copyright may protect the item as an artistic work.  Artwork (such as a painting, artefact or sculpture) is likely to be considered an original ‘artistic work’ protected under the CDPA.  Section 4(1)(a) defines an artistic work as:

”a graphic work, photograph, sculpture or collage, irrespective of artistic quality; a work of architecture being a model or a model for a building, or a work of artistic craftsmanship.“

For copyright protection to apply the work must be original. In assessing whether a work is original two elements apply: the work must not be copied and the author must have expended more than negligible labour, skill and effort in the creation of the work.

The duration of copyright for artistic works is the lifetime of the author/creator plus 70 years from the end of the calendar year in which the author/creator dies (s.12 of the CDPA).  Where the work is located in another country, this term may vary.

A useful matrix which describes the existing law with regard to the duration of copyright in the UK is published in Tim Padfield’s book Copyright for Archivists and Records Managers (Facet Publishing) and available at:  http://www.bl.uk/reshelp/pdfs/copyrightflowchart.pdf

Literary works will also be relevant where a college or university is digitising, for example, an original manuscript to produce virtual books like those available in the British Library.  The British library’s ‘Turning the Pages™’ software enables readers to leaf through books like ‘Alice’s Adventures Under Ground’ written and illustrated by Lewis Carroll and magnify the details. [http://www.bl.uk/onlinegallery/virtualbooks/index.html#]

2.1.1. Is digitisation a copyright restricted act?

Digitising is copying (making a digital copy) and the right to do this is reserved to the copyright owner.  Publishing and making available to the public likewise are acts restricted to the copyright owner which can only be done by the copyright owner, with the copyright owner’s permission or in reliance on one of the exceptions in the CDPA. 

2.1.2. Do any of the statutory exceptions apply to digitisation?

Non-commercial research or private study

The fair dealing exception for private study or non-commercial research purposes is described in s.29(1) and (2) of the CDPA and allows the making of single copies and short extracts of works for non-commercial research or for private study.  The exception applies to literary, dramatic, musical or artistic works (which includes photographs) or the typographical arrangement of a published edition.  To constitute fair dealing there must be sufficient acknowledgement of the source and the use must not be detrimental to the economic interests of the rightsholder.  The exceptions for non-commercial research and private study are explained at http://www.ipo.gov.uk/types/copy/c-other/c-exception/c-exception-research.htm.

While a student or academic making a single 3D digital image of a copyright work for the purpose of non-commercial research or study may be justified under s.29, fair dealing for private study or non-commercial research will not apply if an image is copied further or disseminated to third parties.

Criticism and Review

Section 30 of the CDPA provides a fair dealing exception which permits the limited use of a copyright work for the purpose of review and criticism of that or another work or of the performance of a work provided that it is accompanied by sufficient acknowledgement and provided that the work has been made available to the public.  In order for the defence to apply use of the work must be truly connected with review and criticism and not purely for illustrative or enhancement purposes, and the use must be fair (i.e. it must not impinge upon the copyright owner’s rights of exploitation, and must not go beyond what is needed for the review/criticism).  Where these conditions are satisfied, there will be an arguable case the use falls under s.30, subject to acknowledgement and the work having been made available to the public previously.

In establishing an argument for the applicability of the s.30 defence the use of lower resolution images which do not compete with the copyright owner’s rights of commercial exploitation of the images is likely to increase the chances of the use being ‘fair’. 

Works on public display

Section 62 of the CDPA provides an exception to copyright infringement in relation to the representation of certain artistic works on public display.  The exception applies to buildings and sculptures, models for buildings and works of artistic craftsmanship, if permanently situated in a public place, or in premises open to the public.  The copyright in such works is not infringed by (a) making a graphic work representing it, making a photograph or film of it, or making a broadcast of a visual image of it.  Nor is the copyright infringed by the issue to the public of copies, or the communication to the public, of anything whose making was, by virtue of this section, not an infringement of the copyright.

It would therefore not constitute infringement of copyright for a college or university to create a 3D digital image of a building or of a sculpture, a model for a building or a work of artistic craftsmanship permanently exhibited in a museum open to the public regardless of the fact that such works are still in copyright.

The 3D digital image could be included in the college or university’s VLE or in an OER without infringement.  In the case of a sculpture, model for a building or work of artistic craftsmanship located in a museum or gallery it is worth noting that the gallery or museum may have terms and conditions of entry restricting photography which would be breached by creating a 3D digital image.

Where a work is in copyright and a copyright exception does not apply it may be possible to digitise the works by obtaining the permission of the copyright owner.

Design Documents and Models

Section 51 CDPA provides it is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.  Furthermore there is no infringement where anything made in accordance with this exception is issued to the public or included in a film or communicated to the public.

This exception is only a defence to copyright infringement in the work.  It is worth noting that such activity may still infringe any design rights which may subsist in the relevant design. 

In the context of this paper, digitising the design documents or making a 3D digital image of the model would still infringe copyright as neither act constitutes the making of an article to the design.  They would be copying the design document or model.

 

Scenario

A university intends to digitise a plaster cast model for a marble carving of a head and produce a marble carving using a 3D printer.  It is likely that the plaster cast model is an artistic work in which copyright subsists.  As the marble carving would also be an artistic work, the plaster model embodies the design for an artistic work and s.51 would not apply.  Both, digitising the plaster cast model and making the marble carving would constitute copyright infringement if done without the permission of the rightsholder.


Scenario

A university has access to a model for a wind turbine and intends to make a 3D digital image of the model.   It is possible the model itself might be considered a sculpture or a work of artistic craftsmanship in which case it would be an artistic work in which copyright subsists.  The making of the 3D digital image would infringe copyright in the model if carried out without permission from the rightsholder.  The model would also be a design for a non artistic work, namely a wind turbine therefore s.51 would limit its copyright protection.  Making a wind turbine from the model would not infringe any copyright subsisting in the model. 

Effects of exploitation of design derived from artistic work

The law is due to change, but currently where copies of an artistic work have, with the licence of the copyright owner, been made by an industrial process and marketed in the UK or elsewhere it will not, after 25 years from the end of the year in which the copies are first marketed, be infringement of copyright to copy the work by making articles of any description or to do anything for the purposes of making articles of any description.  Furthermore, anything may be done in relation to articles so made without infringing copyright in the work (s.52 CDPA).

There are exclusions from s.52.  References to articles do not include films such that s.52 does not apply where the artistic work has been exploited by the making and marketing of films and a person may not copy the artistic work by making a film after 25 years.  Section 52 will not be triggered where the artistic work has been exploited by the making of works of sculpture (other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process), wall plaques, medals and medallions and printed matter primarily of a literary or artistic character for example book jackets, stamps.

Articles made by an industrial process do not exclude articles which are made by hand.  Industrial in this context refers to more than fifty articles which all fall to be treated as copies of the artistic work and which do not all together constitute a single set of articles or goods manufactured in lengths or pieces which are not handmade.

In the context of 3D digitisation, where an artistic work such as a stained glass window has been exploited in the form of making mirrors then 25 years after the end of the calendar year of first marketing of such mirrors, a college or university could potentially create a 3D digital model of the stained glass window.  

Section 52 CDPA is due to be repealed by s.74 of the Enterprise and Regulatory Reform Act 2013 (which received royal assent in April 2013), on a date to be appointed by a commencement order.  A decision on when to implement the repeal of s.52 awaits the outcome of a government consultation following which the government will make the necessary secondary legislation. 

When the repeal is put into effect the exception in s.52 CDPA will disappear, and any artistic work, whether 2-dimensional or 3-dimensional, which qualifies for copyright protection will enjoy the full term of copyright protection namely life of the creator plus 70 years.  The likely impact of the change on 3D digitisation projects is to limit the objects which can be digitised without requiring permission and thereby increase the workload in terms of clearing rights for those involved in creating 3D digital models.

Until the repeal comes into force, it is lawful to make 3D digital models of artistic works that are older than 25 years and have been made through an industrial process.


2.1.3. Where an object to be digitised was created in the course of employment who owns copyright in the object?

Section 11(2) CDPA deals with ownership of copyright in works created during the course of employment.  Copyright vests in the employer unless there is agreement otherwise.  In the context of 3D digitisation relevant exceptions to s.11(2) are employee created material not created in course of employment and material created when working for a previous employer.

This means that where an object to be digitised has been created by an employee in the course of employment then the employer will be the relevant party to contact to obtain permission to digitise the object.


Scenario

A university has in its archives a model, created by an architect in 1929, for an art deco building and has decided to create a 3D digital model which they will make available to users on their library website.  

The model of the building is likely to be considered an artistic work and is within copyright assuming that the architect died less than 70 years ago.  The university will need to obtain permission from the firm employing the architect at the time the model was created in order to create the 3D digital model.  Permission will need to include making the 3D model available online for non-commercial purposes. 

Where an institution wants others to be able to modify and build upon the 3D model they have created the licence under which they make the model available will need to cover this and where the object digitised is a copyright work permission will be required from the author to make the 3D model available in this way.

2.1.4.     Where a staff member at a college or university digitises a work that is out of copyright - can the college or university claim a new copyright in the digital image?

Digitisation of an out-of-copyright work, if it involves enough skill and judgement to be considered to have made an identifiable original contribution, will result in a new copyright in the digital image. 

A 2D digitised version of a journal article is unlikely to create new copyright in the digitised version.  It is a copy of the original and is unlikely to involve more than negligible effort in the creation of the digital copy.  A 2D digitised version of a journal article is unlikely to demonstrate an ‘element of material alteration or embellishment which suffices to make the totality of the work an original work.’ (Interlego AG v Tyco Industries Inc. [1989])

There is likely to be more potential for claiming copyright in a 3D digital image (for example, digital images of 3D works such as sculptures or artefacts), since you will have selected a particular view of the work.  It was held in the case of Antiquesportfolio.com v Fitch [2001] that photographs of antiques (3D objects) are protected by copyright because the taking of such photographs involves judgement - the positioning of the object, the angle from which the picture is taken, the lighting and the focus. 

In digitising a work it is important to remember that you will not gain a copyright in the original work itself, which means that someone else could produce their own digital copy of the original without infringing any copyright you might have in the digital image.  In certain, very limited, cases you might acquire a publication right in unpublished works.


2.1.5. If a 3D digital image of an object is sufficiently original to constitute a copyrightable work, will the digital image be a computer generated work or an artistic work?

A computer generated work is one which is generated in circumstances such that there is no human author of it.  Provided such work satisfies the other copyright criteria the work can benefit from copyright protection.   Copyright in a computer generated work will be owned by the person by whom the arrangements necessary for the creation of the work are undertaken.

Where a scanned image is digitally enhanced or manipulated by an individual using a mouse and software and cannot be considered to have been created automatically then the copyright work will be considered an artistic work.  The key issue is whether there has been human intervention in order to create that original element which makes the work a copyright work.

2.1.6. If copyright subsists in a 3D digital image/digital model; where does ownership in the new copyright work lie?

Where staff create copyright works in the course of their employment, the employing institution will own the copyright unless there is an agreement to the contrary (s.11(2) CDPA).  What falls within the course of employment is defined by the contract of employment.  Even if works are created outside normal working hours, outside the institution's buildings, and on the tutor's own computer, they may still have been created towards fulfilling the employment contract, and so are likely to be within the course of employment.

Where students create copyright works, they will be the owner of copyright, unless there is a valid agreement to the contrary.  It is likely that, in many cases, claims by universities and colleges to student IPR will fail due to the application of a fairness test in relevant legislation (the Unfair Terms in Consumer Contracts Regulations 1999).  Factors relevant to whether a claim is fair will include whether a real choice was given to the student, and the contribution made to the work by the institution (both in terms of expertise and facilities).  For more information on this, refer to the Jisc Legal Report on IPR and Student Work (http://jiscleg.al/StudentWorkIPR).

Where the university or college commissions the creation of a copyright work, ownership will remain with the author or creator of the work unless there is an agreement to the contrary.  It is therefore important for colleges and universities to consider when commissioning work, if they want to specify the transfer of copyright in order to allow future reuse.

2.1.7. What licence can I use to make a digitised 3D image available for example, as an open educational resource?

A college or university may decide to make a digitised 3D image available as an open educational resource under an open licence such as a Creative Commons licence.  The main issue with applying a Creative Commons licence to the materials will be to ensure that all necessary rights and permissions are in place to allow the materials to be licensed openly without restriction.  Where any content is owned by third parties permission or a licence to do so is required. 

For example where a university creates a 3D digital model of an artistic work like a sculpture and has obtained the copyright owner’s permission to create the model because the work is still in copyright and s.62 CDPA does not apply, it will be important to ensure that the permission from the copyright owner includes permission to make the 3D digitised image/model available as an open educational resource.

Selecting an appropriate Creative Commons licence for the digitised 3D image/model will involve choosing a licence which is compatible with the intended use, re-use and permissions/licence granted.  Creative Commons provides open licences which are popular as they are clear and easy for users to understand.  It is important to choose your licence carefully as CC licences are irrevocable.  The Creative Commons wiki provides a lot of helpful information regarding the licences including some very useful FAQs (http://wiki.creativecommons.org/FAQ) and a licence compatibility chart outlines which licence can be applied to a resulting work where a work is derived or adapted from a work offered under a Creative Commons licence.   

By starting from the viewpoint of how you would like a user to be able to use your original resource the table can help you select an appropriate licence to apply to the original resources you want to release as an open educational resource.  For example, using the table as a guide, where an institution wishes to create a resource which they want users to reuse for non-commercial purposes only and which they do not want users to be able to adapt then the choice of appropriate Creative Commons licence will be limited to CC BY-NC-ND (Attribution-Non-Commercial-No Derivatives).   


2.1.8. Can a 3D digital model created of artwork in a museum or gallery be included in an OER?

Creating a 3D digital model of artwork (being a copy of the artwork) is likely to be copyright infringement, unless copyright in the artwork has expired or permission has been granted by or on behalf of the copyright owner or the artwork in question is a sculpture, or other work to which s.62 CDPA applies.  Any subsequent publication/release of an infringing model would also be infringement.

Where copyright has not expired, the institution requires permission from the copyright owners to create a 3D digital model of the work and then to use it in a VLE and OER.  So, firstly the institution must determine who holds the rights in the artwork.  This may be a time consuming task.  The museum may own the work but this does not mean they necessarily own the copyright.  The museum, or other rightsholder, may also charge a fee to allow the resource to be scanned and displayed in this way, although it may be lower, or waived, where it is for non-commercial and/or educational purposes.

Any permission received should be confirmed in writing in order to be relied upon.  Ideally, this should contain explicit permission from the copyright owner to allow the model to be placed into the VLE and OER and accessed by users.  Any restrictions imposed by the rightsholder should be made clear to users of the resource.  There is some helpful guidance available for seeking permissions on the Web2Rights project website.  Specific templates can be accessed under section 3:  http://www.web2rights.org.uk/documents.html.


Scenario

A university wants to create an open educational resource on Chinese art and a local museum hosts a collection of earthenware figures from the T’ang Dynasty.  What issues need to be considered in order for the university to create 3D digital models of the collection and make it available as an OER?

The earthenware figures would likely be considered artistic works; however copyright will long since have expired therefore permission would not be required under copyright law to create a digital model of the artistic works.   However, creating such a model may be in breach of the terms of entry to the museum and the college or university may then be liable for damages on that basis (e.g. if the release of an open copy of the model affects the museum's ability to sell licences for reuse).  In practical terms it is likely that permission will be required from the museum in order to have access to the objects in order to create digital models.

Where the digital model has been created by a member of staff, ownership of copyright in the model needs also to be considered.   If the employee, within the course of his/her employment, created the model then s.11(2) of the CDPA provides that the employer (institution) will own the copyright in the work, unless there is an agreement to the contrary.  Otherwise, the member of staff will own the copyright in the work and the institution would require permission from the staff member in order to use it in another resource.  

 

Scenario

A

A university wants to create an open educational resource on modern art and include a painting hosted in a local museum.  What issues need to be considered in order for the university to create a 3D digital image of the painting and make it available as an OER?

The painting will be considered an artistic work and if the work is still in copyright permission will be required from the artist to create a digital image of the painting.   Creating such an image may be in breach of the terms of entry to the museum and the college or university may then be liable for damages on that basis (e.g. if the release of an open copy of the model affects the museum's ability to sell licences for reuse commercially). 

Where the digital image has been created by a member of staff, ownership of copyright in the image needs also to be considered.   If the employee, within the course of his/her employment, created the model then s.11(2) of the CDPA provides that the employer (institution) will own the copyright in the work, unless there is an agreement to the contrary.  Otherwise, the member of staff will own the copyright in the work and the institution would require permission from the staff member in order to use it in another resource.  

There are transitional provisions in the CDPA in relation to copyright works created prior to the commencement of the CDPA.  It is outside the scope of this paper to deal with those provisions.

2.2. Moral Rights

Moral rights (enshrined in Chapter IV of the CDPA) also need to be considered.  Moral rights are specific rights that the author of an original literary, dramatic, musical or artistic work, and the director of a film, enjoy in their creation.  Moral rights include the right to be identified as author or director of a work when the work is commercially published or otherwise issued to the public (paternity right) and the right to object to derogatory treatment of a work (integrity right).

In the context of 3D digitisation artistic works are the most directly relevant copyright works.   Authors of artistic works have a moral right to be identified as such but that right needs to be asserted by giving notice (usually in writing) to those seeking to use or exploit the artistic work.  Where the creator of an artistic work has asserted their moral right of paternity, then a college or university creating a 3D digital image/model needs to identify the creator of the original artistic work as such in a form which brings the creator’s identity to the notice of those receiving the disseminated work.  Where copyright subsists in the 3D model itself the creator of the 3D digital model will need to be identified as such. 

It is worth noting that for employees, moral rights (the right to be identified as the author of a copyright work and the right to object to any derogatory treatment of the work) do not apply in copyright terms, to works created as part of their employment. Employees cannot object to subsequent treatment of those works.

Non employees, including students and guest speakers, may choose to assert their moral rights in any works created by them. 

The author of a work has the right to object to ‘derogatory treatment.’  Where a 3D digital model is created of a derivatives-permitted CC licensed work for inclusion in an OER, the creator of the OER should consider whether there is a risk the creation of the 3D model would be considered prejudicial to the honour or reputation of the author to avoid infringing moral rights or the CC licence. If a work is subject to a No Derivatives (ND) CC licence then an author or director will be able to challenge the creation of an adaptation or derivative work as being contrary to the licence terms irrespective of whether or not treatment can be shown to be derogatory.

For further information on moral rights refer to Jisc Legal’s paper Moral Rights and OERs – Essentials

Scenario

Your university wants to digitise a sculpture created by a PhD student in 1998, a copy of which is currently held in the university archives and to make the digitised image available as part of an OER.

The PhD student will usually own copyright in the sculpture as it is an artistic work.  This means that the institution will require permission from the student to digitise the object and make it available as part of an OER. The PhD student will also have moral rights in the artistic work.   It is most likely that the institution will require the student to license the rights to digitise the object for stated purposes rather than assign copyright in the artistic work.  The license should include a statement as to whether the student retains their moral rights in the artistic work or waives those rights in favour of the institution. 

The institution may have agreed with a student that they assign their IPR to the institution.  Where this is the case the student will have a moral right to be identified as author of the work (paternity) where they have asserted this right in the written instrument assigning copyright to the institution.  The right to object to derogatory treatment does not require to be asserted therefore where copyright has been assigned the student will have the right to object to derogatory treatment where for example the institution chooses to digitise the object and this is considered prejudicial to the rights of the student.

2.3. Design Rights

Designs protect the physical appearance and visual appeal of products.  In the UK, designs are protected in two ways: registered designs and unregistered designs (design right).

2.3.1. Registered designs

A registered design is a legal right which protects the overall visual appearance of a product in the geographical area in which it is registered. The visual features that form the design include such things as the lines, contours, colours, shape, texture, materials and the ornamentation of the product which, when applied to the product, give it a unique appearance. It is also possible to register a design showing the ornamentation alone e.g. a pattern to go on a product or a stylised logo.

Registered design protection does not apply to the features of appearance of a product which are dictated solely by technical functionality. (Registered Design Act 1949 (as amended) (RDA) s.1C(1).  This means that a design cannot be registered if it is the only possible design by which the product in question could perform its function.  (Bailey (t/a Elite Anglian Products) v Haynes (t/a RAGS) [2007]) 

A design or design element may not be registered if it comprises features of appearance of a product which must necessarily be reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around or against, another product so that either product may perform its function. (RDA s.1C(2))

It is also not possible to register a design which is contrary to public policy or to accepted principles of morality. (RDA s.1D)

Further information on registered design rights is available on the Intellectual Property Office website (http://www.ipo.gov.uk/types/design/d-about/d-protect.htm)


2.3.2. Unregistered designs - design right

If a design is not registered, it may still have some automatic protection by unregistered rights. A design right protects the design from copying.

These are made up of:

·         UK design right

·         Unregistered community design

·         An automatic copyright in the design drawings

UK design rights apply to original, non-commonplace designs of the shape or configuration of products. Design right arises on the creation of the work in the UK, and for community design rights when the design is made available to the public. Design right protects the design from being copied. Protection for UK design rights is only available to nationals of certain countries.  The exclusions from unregistered design right replicate the exclusions for registered design right.

Further information on design rights is available on the Intellectual Property Office website (http://www.ipo.gov.uk/types/design/d-about/d-designright.htm)

2.3.3. What constitutes infringement of registered design?

Registered design gives the proprietor the exclusive right to use the design and any design which does not produce on the informed user a different overall impression.  Infringement of a registered design occurs where, without permission from the registered proprietor,  a product  in which the design is incorporated or to which it is applied is made, offered, put on the market, imported, exported or used or where such a product is stocked for those purposes. (RDA s.7)

There is an exception to infringement of registered design right for an act which is done privately and for purposes which are not commercial. (RDA s.7A(2)(a))  This is likely to mean that where a student copies a registered design by creating a 3D digital image of a product and printing it using a 3D printer for the purposes of private study registered design would not be infringed.

Similarly there is an exception for acts done for experimental purposes (RDA s.7A(2)(b). For non-private educational purposes, there is a “fair dealing” exemption, (RDA s.7A(2)(c)) but this only applies where the use does not prejudice normal exploitation of the design for example by substituting for purchase of the item itself.  This means that where a college or university creates a 3D digital model of a product to which registered design right applies and creates a physical copy of the product through 3D printing if this was done for the purpose of a course on design for example, the exception would apply.  If the registered design was copied in order to avoid buying a new product then this would be an infringement.


2.3.4. What constitutes infringement of unregistered design?

With regard to unregistered design right there is no express provision in the CDPA allowing private non-commercial reproduction of a registered design.  However, s.226(1) provides that:

“(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes - (a) by making articles to that design, or (b) by making a design document recording the design for the purpose of enabling such articles to be made.”

Section 226(1), taken together with s.263 CDPA which provides that an act done in relation to an article for “commercial purposes” refers to its being done with a view to the article in question being sold or hired in the course of a business, implies that the exclusive right does not apply to non-commercial use.  Where a university or college creates a 3D digital model of an object in which unregistered design right exists and uses 3D printing technology to produce a copy of the object for research purposes then there is unlikely to be infringement of unregistered design right.  However the 3D digital model in this scenario is likely to be considered a design document recording the design therefore if the 3D digital model is created for the purpose of enabling the college or university or a commercial partner to make articles to the design for commercial purposes then the college or university are likely to infringe design right in the design.

2.4. Trade Marks

Trade marks are symbols that differentiate goods and services in the marketplace (like brand names and logos). They can be used as marketing tools so that customers can recognise particular products or services. The trade mark can be, for example, words, logos or a combination of both and distinguishes particular goods and services from those of competitors.

A trade mark must be distinctive in terms of the goods and services provided, i.e. it must be recognisable as a sign that distinguishes one organisation’s goods or services from someone else's.   Where trade marks are relevant to 3D digitisation is in the fact that an article which is copied through 3D digitisation may bear a trade mark.  The definition of trade marks is sufficiently broad to include shapes and combinations of colours.  For example the distinctive narrow-waisted Coca-Cola bottle is a trade mark of the Coca-Cola company, and making a bottle of that shape using 3D printing technology in the course of trade may infringe it.


2.4.1. What constitutes trademark infringement?

Infringement of a trade mark occurs when an identical or similar mark to a registered trade mark is used in the course of trade for identical or similar goods if the use creates the likelihood of confusion on the part of the public.  Infringement may also arise in cases where a trade mark has a significant reputation, where use of the same or a similar mark damages or takes unfair advantage of the reputation of the registered mark. (Trade Marks Act s.10)

The requirement that a trade mark must be used ‘in the course of trade’ means that private use of a trade mark for example by a student in the course of his studies will not constitute infringement. 

The ECJ, in Arsenal v Reed [2002], stated that uses which are in the context of commercial activity with a view to economic advantage and not as a private matter constitute use ‘in the course of trade.’  With specific reference to education the Advocate General’s opinion in the case stated that non-trade uses such as those for educational purposes fall outside of the scope of the protection afforded to the proprietor.  Using a 3D digital model which incorporates a trade mark in the classroom is unlikely to infringe trade mark. 

There are, however, circumstances where 3D digitisation projects may result in trade mark infringement.  For example, where a college or university works with a commercial partner to create a 3D digital model of an object the shape of which is a trade mark or which incorporates a trade mark as surface decoration and uses the model to make objects using 3D printing technology which the commercial partner then sells such activity is likely to infringe trade mark. 

There is a risk that a college or university may be liable for indirect infringement by facilitating infringement where it makes a 3D digital model available in an OER and a third party uses the model in order to make products for sale which incorporate the registered trade mark.


2.5. Passing Off

The law of passing off entitles a business to prevent other businesses from unfairly using its goodwill.  Essentially, someone must not sell their own goods under the pretence that they are the goods of someone else.  Passing off would be relevant where a business uses 3D printing technology to make reproductions of another business’ products for sale.  It is unlikely to be relevant to 3D digitisation projects within colleges and universities.

2.6. Patents

A patent protects new inventions and covers how things work, what they do, how they do it, what they are made of and how they are made.  In the UK obtaining a patent involves making a formal application to the Intellectual Property Office.  To qualify for patent protection an invention must be new, have an inventive step that is not obvious to someone with knowledge and experience in the subject, and be capable of industrial application.  Possessing a patent makes it illegal for anyone except the owner or someone with the owner’s permission to make, use, import or sell the invention in the country where the patent was granted.

There are statutory exceptions to patent protection under s.60(5) of the Patents Act 1977 (PA) which include use of a patent privately and for purposes which are not commercial  and use for experimental purposes.

Where a 3D object has inventive technical features then these features may be protected by patent.  It is worth checking whether patents apply to an object a college or university wishes to digitise.   Where an object is subject to patents then it is advisable to obtain permission from the owner of the patent to avoid infringement unless one of the statutory exceptions applies. 

 

Scenario

A student wishes to create a 3D digital model of a mechanical object which is subject to a UK patent and use 3D printing technology to make a copy of the object for the purpose of a PhD thesis.

This activity is unlikely to infringe the patent due to the existence of the exception in s.60(5)(a) PA for anything done for private and non-commercial  purposes.   Should the research be published the exception will not apply   However the exception in s.60(5)(b) for anything done for experimental purposes may apply depending on the purpose of the student’s research.


Scenario

A university research project involves creating a 3D digital model of a wind turbine which is subject to patent and producing a wind turbine.

Whether the exception in s.60(5)(b) PA will apply will depend upon the purpose of the research project.  Where the purpose is to test whether the 3D printing technology is capable of producing a wind turbine for example the defence may not apply as the experiments performed must relate to the subject matter of the invention.

Section 60(2) PA provides protection for rightsholders against others providing the means to infringe a patent.  It is possible that a college or university could infringe a patent where it makes available in an OER a 3D digital model which enables a third party to produce the patented invention.

3. Conclusion

There are a number of intellectual property rights namely copyright, patent, trade marks, designs, moral rights which may have an impact on 3D digitisation projects.  There are no blanket exceptions for education and the defences to infringement differ depending upon which IPR is being considered.  Consideration should be given to IPR and its consequences at the outset of a project in order to minimise the institution’s risk of infringement.

4. Want to Know More?

Bently, Lionel and Sherman, Brad, Intellectual Property Law (Third Edition, Oxford University Press 2009)

Garnett, Kevin; Davies, Gillian and Harbottle, Gwwilym, Copinger And Skone James on Copyright  (Fifteenth Edition, London Sweet & Maxwell 2005)

Padfield, Tim, Copyright for Archivists and Records Managers (Fourth Edition, Facet Publishing 2010)

Stokes, Simon, Art and Copyright (Second Edition Hart Publishing 2012)

Lachmansingh, Annie, ‘3D printing: a new dimension for IP?’ In-House Lawyer 2012, 200(Ma), 23-25

Bradshaw, Simon, Bowyer, Adrian and Haufe, Patrick, ‘The Intellectual Property Implications of Low-Cost 3D Printing’, (2010) 7:1 SCRIPTed 5, http://www.law.ed.ac.uk/ahrc/script-ed/vol7-1/bradshaw.asp 

Bradshaw, Simon (2013, May 23) ‘3D Printing Update’ The Society for Computers and the Law,  www.scl.org/site.aspx?i=ed32362

Richards, John ‘ Life in 3D’ Intellectual Property Magazine 2012, Mar, 30-32

3D scanning of Sheffield metalwork collection: http://www.jisc.ac.uk/whatwedo/programmes/digitisation/rapiddigi/metalwork.aspx

IPO table summarising IP which may subsist in a design,  http://www.ipo.gov.uk/types/design/d-applying/d-before/d-needreg.htm

Sheffield project – 3D images subject to a Creative Commons licence (CC BY-NC-ND 2.0) – can be downloaded for academic and research purposes providing copyright is attributed to Museums Sheffield

Jisc Legal Report on IPR and Student Work - http://jiscleg.al/StudentWorkandIPR

UK Government Call for Evidence: Transitional Provisions for repeal of Section 52 of the Copyright, Designs and Patents Act 1988, Intellectual Property Office website, http://www.ipo.gov.uk/consult-2013-sec52.pdf

Posted on 17/01/2014