Sometimes, clients call for our free IP/ICT Technology legal consultation and ask a question that cannot be answered in full at the time. Imagine that a 3D printing design business (which we will call ‘3DWorx’) creates a design for a professional client that the client plans on printing out on their own. Is 3DWorx allowed to use this design for others?
By Hub Dohmen, lawyer at Dohmen Advocaten
The first question you have to ask is: what country is 3DWorx located in? And secondly: what country is the client located in? Now, let us suppose that the answer to both of these questions is The Netherlands and let me address the Dutch situation as an example of how complicated it can be…
The exterior of the object for use may be subject to copyright and design right. It is important to know that design right, almost exactly like copyright, is something that comes about ‘automatically’: registration is possible, but not necessary; describing the differences between designs that are or are not registered is unnecessarily extensive for the purposes of this example.
Design in the legal sense
When there is a utility article involved, it is automatically considered a design in the legal sense: copyright has a much higher threshold than design right, more specifically: an ‘individual, original character’ and the ‘personal stamp of the creator’. In short, ‘original’ means that the form cannot be borrowed from another work. ‘Personal stamp of the creator’ means that there has to be innovative human work involved, and therefore creative choices.
To register for design protection, it is only necessary for it to be ‘new’ and have ‘an individual character’. To be a design (with or without registration), it is only necessary for it to involve ‘the external appearance of a product’. Meaning that if the appearance of an object is eligible for copyright, then it is also an object that is eligible for design protection. This does not work the other way around: the exterior of an object for use (a design) is not always eligible for protection as a model and does not always have copyright. Bear this in mind.
Benelux Convention on Intellectual Property
The BCIP (Benelux Convention on Intellectual Property) indicates that there is a special regulation for an assignment to create a design that is not for one-time use, but “with a view to commercial or industrial use of the product in which the design is incorporated”, freely translated: for mass production by the principle for the purpose of trade. If so, the client (of 3DWorx) is the hypothetical designer of the design and thereby possesses copyright—even if there is no design registration for it.
In our case, the first questions have been answered: 3DWorx is Dutch and the client is Dutch as well. In order to answer the following question: “Can 3DWorx use this design for others”, we need to be asking what it is that the client is going to use 3DWorx’s design for. I will dive into this in week 40.