Counterfeiting fashion through 3D printing The legal implications for the fashion industry

Transcription

1 Counterfeiting fashion through 3D printing The legal implications for the fashion industry Source: Masterthesis LL.M. Law and Technology Tilburg University Tilburg Institute for Law, Technology, and Society (TILT) Name: J.L.A.F. van Halteren ANR: Supervisor: B.C. Newell Second reader: M.H.M. Schellekens Date: 27 June 2016 Defense: 7 July pm at room M232

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3 Counterfeiting fashion through 3D printing The legal implications for the fashion industry Masterthesis LL.M. Law and Technology Tilburg University Tilburg Institute for Law, Technology, and Society (TILT) Name: J.L.A.F. van Halteren ANR: Supervisor: B.C. Newell Second reader: M.H.M. Schellekens Date: 27 June 2016 Defense: 7 July pm at room M232

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5 Foreword I hereby present my thesis about counterfeiting through 3D printing in the fashion industry. I had the ambition to write a thesis about fashion law, because it is a field of law that really interests me. The technology aspect had to be included as well and that is how the idea of writing a thesis about counterfeiting through 3D printing in the fashion industry came to life. I think it is really cool what can already be done when it comes to 3D printing fashion. Writing this thesis really helped me to learn more about these possibilities. I would love to design and 3D print my own fashion goods one day. I'm curious to see what will be possible in the future. Since this thesis is mostly about future developments of the 3D printing industry, not a lot has been written yet on the exact subject I have discussed in this thesis, namely counterfeiting specifically through 3D printing in the fashion industry. Therefore, it was not always easy to apply the current legislation about counterfeiting in the fashion industry to the situation in which the counterfeiting happens through 3D printing. It was, however, an interesting challenge. I would like to take a moment to express some words of gratitude. First, I want to thank my supervisor mr. Newell. His kindness and willingness to help were very motivating whilst writing this thesis. He also gave me some very useful feedback, which helped me to take the thesis to the next level. I also want to thank my second reader mr. Schellekens for his time and for the useful feedback he has provided. Last but certainly not least, I want to thank my family and friends for their support. I hope you will enjoy reading this thesis as much as I enjoyed writing it. Hannah van Halteren June 2016

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7 Table of contents Summary 9 List of abbreviations Introduction Background Significance Research questions Methodology/approach Overview of chapters What is 3D printing? Introduction The technique of 3D printing The current possibilities for 3D printing in the fashion industry The future possibilities for 3D printing in the fashion industry Legal framework on counterfeiting through 3D printing in the fashion industry Introduction Applicable legislation Intellectual property law Trademark law Copyright law Design law Slaafse nabootsing Protection of fashion goods Trademark law Benelux trademark European Union trademark Copyright law Design law Benelux design Community design Slaafse nabootsing Infringements by creating CAD, 3D printing them and spreading them Trademark law Benelux trademark European Union trademark Copyright law 31

8 3.4.3 Design law Benelux design Community design Slaafse nabootsing What can be done against an infringement Trademark law Benelux trademark European Union trademark Copyright law Design law Benelux design Community design Slaafse nabootsing Conclusion Needs and concerns of the fashion industry Introduction Difficulty to protect fashion goods as trademark or copyright Cheap, easy and fast way of 3D printing Legality of private 3D printing Legality of the creation and spreading of CAD Increase of cybercrime Taking actions against counterfeiters Possible liability issues Financial loss Reputational damage Conclusion Conclusions Introduction Conclusions with recommendations 47 Sources 49

9 Summary This thesis is about counterfeiting through 3D printing in the fashion industry. In the future, it is very likely that consumers will be able to buy their own 3D printer and print fashion goods themselves. This will make the 3D printing of fashion goods possible on a large scale. But what are the legal implications of this? Under what circumstances is it actually legal or illegal to 3D print a fashion good? With this comes the question if and when it is illegal to create and spread CAD, Computer Aided Designs that the computer uses to 3D print goods? And what are the consequences of this for the fashion industry? This thesis explores these questions. First, it needs to be noted that infringements only take place if the actions as described below take place in the course of trade or with commercial/economic purposes. Therefore, it is legal for a consumer to 3D print fashion goods in a private environment for private use. Trademark law protects certain elements of fashion goods if they can be graphically represented and serve to distinguish the goods or services of an undertaking. It does generally not protect the fashion good as a whole. This makes it possible to circumvent infringement by copying a fashion good without the protected elements on it. The creation and spreading of CAD that contain trademarks is not illegal. If consumers buy the 3D printed goods instead of the 'real' good, this will give a loss of income for the fashion company. If the quality of the 3D printed goods is not as good as the 'real' good, this could give reputational damage and liability issues. Legislation could be adjusted to make the creation and spreading of CAD illegal to avoid 3D printing on a large scale. Providing more protection for fashion goods as a whole is, however, not a good solution because it could give exclusive rights for a company which gives too many limitations for competitors to design. Copyright law protects the design of a fashion good as a whole if the design is the author's own intellectual creation. The design needs to have an original character and it needs to carry the personal stamp of the creator. These conditions will not be fulfilled easily. Once a fashion good meets these requirements, then the creation and spreading of CAD of fashion goods is illegal, which makes counterfeiting on a large scale more difficult. Obviously, also the 3D printing itself is illegal. Legislation could be changed to provide more protection for fashion goods, but this could mean that the freedom for competitors to design gets limited. Design law also protects designs of fashion goods and it seems that the requirements for protection are not as hard to meet as the requirements of copyright law. The fashion good needs to be new and it needs to carry its own character. However, once protection is granted, copyright law seems to provide more protection than design law because when it comes to (Benelux) design law, the creation and spreading of CAD is legal. This can have the same consequences as with trademark law, as explained above. 'Slaafse nabootsing' only plays a role when intellectual property law is not applicable and unnecessary confusion for consumers takes place. The overall conclusion that can be drawn is that the current legislation applicable in The Netherlands does not adequately meet the needs and tackle the concerns of the fashion industry in regards to restricting or regulating counterfeiting accomplished through the means of 3D printing technologies. This is because there will only be enough protection for a few fashion goods (only the ones that fall within the scope of copyright law) and also because private 3D printing is legal. It is, however, not possible to completely prevent counterfeiting through 3D printing in the fashion industry to take place, even if legislation is changed. Therefore, it is suggested for fashion companies to not only try to fight the 3D print development, but to also look at the possibilities to gain from it.

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11 List of abbreviations 3D Three Dimensional Art. Article Benelux Convention Benelux Convention on Intellectual Property CAD Computer Aided Design(s) CJEU European Court of Justice EU European Union InfoSoc Directive Directive on the harmonisation of certain aspects of copyright and related rights in the information society P. Page/paragraph Regulation Regulation on the European Union trade mark Or Regulation on Community designs (This depends on the field of law that is discussed but this is made clear in the text and footnotes to avoid confusion)

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13 1. Introduction 1.1 Background In The Netherlands, 'Prinsjesdag' is held every year on the 3rd Tuesday of September. On this day, the king of The Netherlands reads the 'Troonrede', which outlines the most important plans the government has for the upcoming year. 1 During this day, all the members of the government are present and they dress up to look the part. Every year, these outfits are broadly discussed in the news. In 2015, there was one minister who wore a very special outfit. Minister Jet Bussemaker had an outfit, made through computer models and Three Dimensional (3D) printing. 2 This particular example shows one of the many possibilities of 3D printing in the fashion industry. The role that 3D printing has in our everyday life is growing fast. Sooner or later, every household will be able to own a 3D printer and this will also make it possible for consumers to 3D print fashion in their own homes. 3 3D printing, however, implicates a large number of legal questions and concerns. 4 One of the unique legal challenges that 3D printing poses to the design and fashion industries is counterfeiting. When 3D printing becomes available to the public, consumers are able to make Computer Aided Designs (CAD) themselves that resemble fashion goods. 5 These CAD create the possibility to 3D print identical replicas of designer fashion goods. 6 This increases the counterfeiting problem in the fashion industry, because a lot more people will be able to contribute to the problem. It will also be possible to upload and share the CAD that can be used to 3D print counterfeited goods. 7 There is even a possibility to create online businesses that focus on selling these designs. This will obviously also increase the counterfeiting problem. So in short, there could be two legal counterfeiting problems when it comes to 3D printing in the fashion industry: counterfeiting through the creation of CAD and the 3D printing of these designs and the uploading and sharing of the CAD that are needed for 3D printing. The fashion industry is already very busy when it comes to tackling counterfeiting. There is a huge market for creating and selling fake designer goods. 3D printing, especially when it enables counterfeiting on a large scale, could add a whole new dimension to this already massive problem. Because this is such a new development, and little has been written on this subject in the context of the fashion industry, this thesis provides an important first examination of the 1 De Rijksoverheid voor Nederland. "Prinsjesdag". De Rijksoverheid voor Nederland. Retrieved 6 November 'De Rijksoverheid voor Nederland "Wetenschappers ontwerpen prinsjesdag outfit minister Bussemaker". De Rijksoverheid voor Nederland. 15 September Retrieved 6 November M.L. Lynch "3D Print Week, New York Fashion Show, and the Effects Consumer 3D Printing Will Have on Online Counterfeiting in the Fashion Industry". Cardozoaelj. 3 May Retrieved 2 October Louwers "3D/additive manufacturing: juridische uitdagingen". Louwers. 27 August Retrieved 7 November F. Eijsvogels and L. Dijkman "Intellectuele eigendom en de derde industriële revolutie, Enkele opmerkingen over de juridische implicaties van 3D-printen". The Next Marketing. 2 April Retrieved 7 November M.L. Lynch "3D Print Week, New York Fashion Show, and the Effects Consumer 3D Printing Will Have on Online Counterfeiting in the Fashion Industry". Cardozoaelj. 3 May Retrieved 2 October Ibid. ~ 13 ~

14 various legal issues confronting the fashion industry in The Netherlands as a consequence of the rapid development of the 3D printing technology. 1.2 Significance Fashion companies want to protect their goods against copying. This is because the ability for consumers to get cheaper look-a-like goods instead of the real thing decreases the income of fashion companies. 3D printing increases the ways in which people are able to copy fashion goods and it is likely that the number of existing look-a-like designer goods will only get bigger if consumers are able to 3D print these goods in their own homes. Some authors argue that we need to rethink intellectual property when it comes to 3D printing. 8 3D printing creates some new implications for the intellectual property law, because of the level of counterfeiting that is possible. Guillermo C. Jimenez and Barbara Kolsun already stated in 2010 that this will put extra pressure on fashion companies to police counterfeiting and that legislation should pay extra attention to this. 9 But is the legislation that is applicable in The Netherlands equipped to regulate it? For example, in The Netherlands, the copying of items in a private environment is not something that a fashion company can prohibit. 10 This research focuses on the question of whether the current legislation applicable in The Netherlands adequately meets the needs and tackles the concerns of the fashion industry in regards to restricting or regulating counterfeiting accomplished through the means of 3D printing technologies and, if not, in what ways the current legislation fall short of fulfilling this goal. Scholarly research on counterfeiting through 3D printing in the fashion industry proves to be rare (fashion is often only named as an example). However, there is literature available on counterfeiting through 3D printing in general and also literature that are based on other industries than the fashion industry (for example 3D printing guns). The literature is often about the protection of CAD and the 3D printed results of these CAD, but not about the question if these could also infringe an existing right. The literature on counterfeiting through 3D printing (in the fashion industry) is often not about legislation applicable in The Netherlands or the legal framework that is given is not complete. Therefore, one of the aims is to create an overview of the legal framework on counterfeiting through 3D printing in the fashion industry in The Netherlands. Some articles have been written about the legal status of 3D printing in The Netherlands in general, but there is no research available that takes that extra step to see if the legislation that is applicable in The Netherlands meets the needs and tackles the concerns that the fashion industry has. With this research, needs and concerns are observed and linked to the legal framework applicable in The Netherlands. 1.3 Research questions The main question that is answered with this research is: 'Does current legislation applicable in The Netherlands adequately meet the needs and tackle the concerns of the fashion industry in regards to restricting or regulating counterfeiting accomplished through the means of 3D 8 T.A. Campbell and W.J. Cass. "3-D Printing Will Be a Counterfeiter's Best Friend". Scientific American. 5 December Retrieved 18 January G.C. Jimenez and B. Kolsun, Fashion Law: A Guide for Designers, Fashion Executives, and Attorneys, p. 20 (New York: Fairchild Books: 2014). 10 F. Eijsvogels and L. Dijkman "Intellectuele eigendom en de derde industriële revolutie, Enkele opmerkingen over de juridische implicaties van 3D-printen". The Next Marketing. 2 April Retrieved 7 November ~ 14 ~

15 printing technologies, and if not, in what ways does the current legislation fall short of fulfilling this goal?' To answer this primary research question, the following sub-questions are addressed over the course of the succeeding chapters: 'What exactly is 3D printing and how does it work?' 'What does the legislation applicable in The Netherlands look like now when it comes to intellectual property and counterfeiting?' 'How is counterfeiting in relation to 3D printing currently regulated in The Netherlands?' 'What are the particular needs and concerns of the fashion industry when it comes to 3D printing in the fashion industry?' 'What are the good points and main flaws in legislation applicable in The Netherlands when it comes to the needs and the concerns of the fashion industry?' 1.4 Methodology/approach In order to answer the main questions, it was important to first make the subject of this thesis a bit more clear. Because it is about counterfeiting in relation to 3D printing, I outline and describe what 3D printing is and how the technology works. I also give some examples on the possibilities of 3D printing in the fashion industry now and in the future. This overview on the technique of 3D printing was made by looking at websites, articles and books. These were found on the internet (in particular Google Search, Legal Intelligence and Google Books) and in the library of Tilburg University (both online and on the campus). The websites were particularly helpful with finding the possibilities of 3D printing, but I was also able to find some information about the technique of 3D printing on websites. However, most of the information about the technique of 3D printing was found in articles and books. Before it was possible to say if the legislation that is applicable in The Netherlands has any shortcomings when it comes to counterfeiting through 3D printing, it was important to first see what the legislation looks like. First, I created a clear overview on the fields of legislation that are applicable in the case of counterfeiting through 3D printing in the fashion industry in The Netherlands. Since counterfeiting falls under the scope of intellectual property, trademark law, copyright law and design law were examined. In The Netherlands, it is also possible to get protection on the basis of 'slaafse nabootsing' when intellectual property law is not applicable. After the creation of this overview, first, the level of protection of fashion goods was described. Second, the question whether the creation of the CAD that are used for 3D printing of fashion replicas, the 3D printing itself and the spreading of the CAD constitute infringements was answered. After that, a brief description about what can be done against those infringements was given. It was not only necessary to look at Dutch law. It was also important to look at international legislation that is applicable in The Netherlands, because some things are not regulated in Dutch law, but they are regulated in international legislation that is also applicable in The Netherlands. This was done by researching the written legislation itself, case law, books and articles. These were found in law books, Google Search, De Rechtspraak, Legal Intelligence and Google Books and in the library of Tilburg University. The law books were particularly helpful with outlining the relevant regulation. The elaboration of this regulation was, however, mostly done by researching books, articles and case law because these contain a lot of extra information about the legislation that you can't find in the law books. In order to answer the main question, it was also important to have a clear overview on what the actual needs and concerns of the fashion industry are when it comes to counterfeiting ~ 15 ~

16 through 3D printing. This information was needed because the applicable legislation had to be examined on the basis of these needs and concerns. This information was found by researching the previous chapters, but also by researching books, academic journals, blogs and news sites. These were found by Google Search, Google Books and in the library of Tilburg University. During the examination of the applicable legislation in The Netherlands, I encountered some problems in the legislation that could become issues for the fashion industry. Next to that, some authors have also highlighted some issues on blogs, news sites or academic journals which I could use. The last part that was necessary to answer the main research question was a clear overview of the good points and the flaws in the law. These good points and flaws in the law were put together by linking the needs and concerns of the fashion industry, as mentioned in the previous section, to the applicable legislation. I also gave some recommendations on how to deal with certain issues. This chapter was created by linking the information of the previous section with the applicable legislation. This legislation was found by researching law books and the information of the previous chapters. 1.5 Overview of chapters In chapter 2, I will explain what 3D printing actually is and how it works. I will also give some examples on what the current and future possibilities are when it comes to 3D printing in the fashion industry. The next chapter, chapter 3, contains an overview on the legislation that is applicable in The Netherlands when it comes to counterfeiting/intellectual property. In this chapter, I address if fashion goods can be protected by the applicable legislation, if the various forms of counterfeiting through 3D printing are illegal on the basis of the applicable legislation and what can be done against infringements. Chapter 4 is about the needs and concerns of the fashion industry when it comes to counterfeiting through 3D printing and what the flaws are in legislation applicable in The Netherlands when it comes to meeting these needs and tacking these concerns. There are also some recommendations provided in this chapter on what to do against these issues, both in legislation and outside of legislation. Chapter 5 is the last chapter in which the main question is answered, which means that this chapter contains if the current legislation applicable in The Netherlands adequately meets the needs and tackles the concerns of the fashion industry in regards to restricting or regulating counterfeiting accomplished through the means of 3D printing technologies, and if not, in what ways the current legislation falls short of fulfilling this goal. ~ 16 ~

17 2. What is 3D printing? 2.1 Introduction This research is about the needs and concerns of the fashion industry when it comes to counterfeiting through 3D printing and if the legislation applicable in The Netherlands adequately meets these needs and tackles these concerns. In order to answer this question, it is important to first look at the actual content of the problem. Therefore, this chapter gives a short overview of what 3D printing actually is and how it works. This chapter is all about the basics without getting too much into the technological details. It also contains some examples of 3D printed fashion goods now and in the future, which highlights the wide range of possibilities. 2.2 The technique of 3D printing Described in a very simple way, 3D printing is "the process of making three dimensional objects from a digital file". 11 These objects are created layer-by-layer, which together form the object. 12 This layer-by-layer creation of the objects is called 'additive manufacturing'. 13 Maurice van Liempd's book 'A Beginner's Guide to 3D Printing: First Edition' contains a very simple but clear image about how 3D printing works. This image will be used here to explain the 3D printing process: Source: M. van Liempd. 14 You obviously start with an idea for an object to 3D print (idea). In order to be able to print the object, you need an online design that resembles the object that you want to print (cad design). 15 There are three ways in which you can get this design: you can download a design online, you can choose to make it yourself with the help of a special program or you can scan an actual item. 16 If the design is done, a request has to be sent to a special 3D printer (printer software) to print the object. The 3D printer will then print the object by building it layer-bylayer (reality). 17 It is possible to 3D print with all kinds of materials and the list of materials that can be used keeps on growing. 18 The material comes out of the printer in the form of wire, liquid or powder and putting layers of the material together eventually creates the whole object. 19 There are lots of 3D printing techniques that can be used to print these materials DPrinting.com. "What is 3D printing?". 3DPrinting.com. Retrieved 14 January Ibid. 13 Ibid. 14 M. Van Liempd, A Beginner's Guide to 3D Printing, p. 6 ( 2013). 15 E.N. Spijkerman. "3D-printen: het nieuwe doe-het-zelven". Aansprakelijkheid, Verzekering & Schade 27(5) (2015) p W. Vermeend, De wereld van 3D-printen, p. 16 (Den Haag: Einstein Books: 2013). 17 E.N. Spijkerman. "3D-printen: het nieuwe doe-het-zelven". Aansprakelijkheid, Verzekering & Schade 27(5) (2015) p Ground3d. "In welke materialen kun je 3D printen?". Ground3d. Retrieved 15 January Llowlab. "3D printen materialen". Llowlab. Retrieved 15 January Ground3d. "3D print technieken". Ground3d. Retrieved 20 January ~ 17 ~

18 Because of the large variety of materials that can be used, it becomes possible to print all kinds of goods, including fashion goods. In this description of how 3D printing works, the two legal counterfeiting problems become clear: the creation of online designs (that can be uploaded and shared online and thereby give more people the opportunity to 3D print counterfeited goods) and the 3D printing of these designs in itself (the actual creation of counterfeited goods). The legal implications of each of these are explained in chapter The current possibilities for 3D printing in the fashion industry Now that it is clear what 3D printing is and how it works, it is interesting to explore what the possibilities are. 3D printing is already used in loads of fields, but now the fashion industry also sees the possibilities. 21 3D printing fashion gives designers the opportunity to create a form of wearable architecture by creating complex fashion objects. 22 This paragraph shows some examples which highlight the wide range of possibilities in 3D printing fashion. This entails not only clothes, but also shoes and accessories. These are goods that could be sensitive for counterfeiting. Chapter 1 already mentioned the example of minister Jet Bussemaker who wore a 3D printed outfit on 'Prinsjesdag'. A designer who likes to experiment with 3D printing in her collections is Dutch designer Iris van Herpen. 23 Some examples of this were seen in her 2015 'Hacking Infinity' collection. 24 In this collection, not only a 3D printed dress was created, but also a pair of 3D printed shoes. 25 This example shows the possibilities to 3D print clothes and shoes, even the most outstanding designs. Source: E. Krassenstein. 26 Source: E. Krassenstein H. Ali. "computer couture". JFK 45(3/4) (2014) p J. Micallef, Beginning Design for 3D Printing, p. 15 (New York: Apress Media LLC: 2015). 23 Ground3d. "Iris van Herpen toont haar biopiracy collection". Ground3d. 11 March Retrieved 15 January E. Krassenstein. "Iris van Herpen Teams with 3D Systems to Create Mesmorizing Crystal-esque 3D Printed Dress & Shoes". 3DPrint.com. 27 March Retrieved 15 January Ibid. 26 Ibid. 27 Ibid. ~ 18 ~

19 Another example of the 3D printing of fashion goods can be found in these bracelets and smartphone covers. 28 The 3D printing of jewelry and smartphone covers is becoming more popular and there are even stores that allow you make your own design online, which will then be 3D printed by the company. 29 An example of a Dutch company that does this is Hema. 30 Source: Hema. 31 One last example is this 3D printed 'Money Madness' Kipling bag. 32 The idea behind this bag was to use innovation (by linking plastic monkeys together) to create a bag with a classic design. 33 Source: T. Starnes. 34 Source: J. Luimstra. 35 The fact that it is possible to 3D print these kinds of items shows that it must then also be possible to copy existing fashion goods by 3D printing them, as long as you have the correct design that can be turned into a CAD to 3D print. 2.4 The future possibilities for 3D printing in the fashion industry Right now, the possibilities of 3D printing fashion are still limited and this has mostly to do with the lack of printable materials and the costs to actually 3D print a fashion good. 36 The 28 Hema. "3D printen". Hema. Retrieved 15 January T. Koslow. "Zazzy Joins Shopify s Massive Online Marketplace for 3D Printing e-shops". 3D Printing Industry. 14 January Retrieved 15 January Hema. "3D printen". Hema. Retrieved 15 January Ibid. 32 Ibid. 33 J. Luimstra. "Hot Or Not? A 3D Printed Monkey Bag". 3DPrint.com. 19 January Retrieved 15 January & T. Starnes. "3D Printed Fashion: Kipling Monkey Madness Handbags". 3D Printer. 20 January Retrieved 15 January T. Starnes. "3D Printed Fashion: Kipling Monkey Madness Handbags". 3D Printer. 20 January Retrieved 15 January J. Luimstra. "Hot Or Not? A 3D Printed Monkey Bag". 3DPrint.com. 19 January Retrieved 15 January J. Dagirmanjian. "The Future of 3D Printing and Sustainable Fashion". Purible. 22 September Retrieved 9 May ~ 19 ~

20 fashion goods that can be printed nowadays are often not wearable in everyday life. 37 Technology, however, develops so rapidly that it will probably only be a matter of time before fashion goods can be printed with a lot more different wearable materials and for a much lower price. Designers are already experimenting with 3D printing in their collections, but with the growing possibilities to print cheaper and with more materials, this will only increase. 38 If the 3D printed fashion goods become cheaper and wearable in daily life more easily, there will also be a bigger market for the goods. In the future, most likely everyone will be able to buy a 3D printer and print fashion goods from their own homes. 39 Fashion companies will probably respond to this development by starting to sell CAD, which makes it possible for consumers to print authentic fashion goods instead of buying them in the store. 40 This will create a whole new market in the fashion industry. 37 R. Sullivan. "Envisioning the Future of 3-D Fashion: Welcome to the Virtual Dressing Room". Vogue. 3 September Retrieved 9 May T. "Met Gala 2016: is 3D printing the future of fashion?". 3Ders.org. 8 May Retrieved 9 May F. Kinsella. "Scan it, print it, wear it: the future of fashion is 3D". RICHES. Retrieved 9 May Ibid. ~ 20 ~

21 3. Legal framework on counterfeiting through 3D printing in the fashion industry 3.1 Introduction Before it is possible to say whether the legislation applicable in The Netherlands falls short on meeting the needs and tackling the concerns of the fashion industry when it comes to counterfeiting through 3D printing, it is necessary to first see what the legal framework looks like. This chapter describes this legislation, while only highlighting useful legislation in the case of counterfeiting through 3D printing in the fashion industry. This is trademark law, copyright law, design law and 'slaafse nabootsing'. First, the level of protection of fashion goods is described. Second, the question whether the creation of CAD that are used to 3D print fashion replicas, the 3D printing itself and the spreading of CAD constitute infringements is answered. After that follows a brief description about what can be done against infringements. 3.2 Applicable legislation This chapter contains the legal framework on counterfeiting through 3D printing in the fashion industry. Therefore, the applicable legislation for this legal framework is explained first. This section consists of two parts, a part which contains intellectual property legislation and a part which contains 'slaafse nabootsing'. The legislation that is discussed in the section about intellectual property law is trademark law, copyright law and design law Intellectual property law Regulation of counterfeiting is a part of intellectual property law. The WIPO Intellectual Property Handbook describes intellectual property law as "the legal rights resulting from intellectual activity in the industrial, scientific, literary and artistic fields". 41 Intellectual property is immaterial, meaning that it is intangible or non-physical property. 42 Owning an intellectual property means that the owner has the legal power to use the property and can legally exclude others from using it. 43 The aim of intellectual property law is to protect creators and other producers of intellectual property by granting them certain rights to control the use of the intellectual creations. 44 The term 'use' is used here in an informal way. The applicable legislation explains what exact acts ('uses') are covered by the exclusive rights. The applicable fields of intellectual property law when it comes to counterfeiting through 3D printing in the fashion industry are trademark law, copyright law and design law. In the next paragraphs, these fields are discussed according to legislation applicable in The Netherlands Trademark law The book 'European Trademark Law' describes a trademark as "a sign that distinguishes and/or individualizes goods and/or services". 45 This distinctive function makes the decisionmaking process of consumers a lot easier and therefore trademarks are necessary to make the market for consumer products work. 46 The ground for protection of trademarks therefore lies 41 World Intellectual Property Organization, WIPO Intellectual Property Handbook, p. 3 (Geneva: World Intellectual Property Organization, 2008). 42 A. Kur and T. Dreier, European Intellectual Property Law, p. 2 (Cheltenham: Edward Elgar, 2013). 43 Ibid. 44 World Intellectual Property Organization, WIPO Intellectual Property Handbook, p. 3 (Geneva: World Intellectual Property Organization, 2008). 45 T. Cohen Jehoram and C. Van Nispen and T. Huydecoper, European Trademark Law, p. 5 (Alphen aan den Rijn: Kluwer Law International, 2010). 46 R. Holzhauer, Intellectuele eigendom, p. 80 ('s-gravenhage: Boom Juridische uitgevers, 2008). ~ 21 ~

22 in their capacity to convey information which enables consumers to make informed choices by distinguishing the goods or services based on their origin. 47 A trademark does not protect the good or service itself, but only (a) part(s) of the good or service. Trademark law is not regulated in Dutch legislation. It is, however, regulated in Benelux, European and International legislation, which is applicable in The Netherlands. 48 According to the Benelux Convention on Intellectual Property (Benelux Convention), it is possible to get a trademark, which is valid in the Benelux. 49 The Benelux Convention regulates and organizes both trademark law and design law and it harmonizes legislation. 50 Because of the Regulation on the European Union trade mark (Regulation), it is also possible to obtain a trademark, which is valid in the entire European Community. 51 This means that the trademark on the basis of the Regulation is an unitary right. 52 On the basis of the Madrid Agreement, it is also possible to register a trademark in an international depository, which gives protection in all the countries that adjoined the agreement. 53 Currently, there are 97 Contracting Parties from all over the world and The Netherlands is one of them. 54 Therefore, the registration in the international depository gives a wide range of protection, although it has to be kept in mind that all countries can (under certain circumstances) refuse the registration. 55 Article (art.) 4 of the Madrid Agreement explains that the level of protection of the trademark in each country is the same as if the trademark was registered there. 56 This means that Dutch legislation will be applicable for the international trademark that is requested in The Netherlands. Therefore, International trademark law is not discussed separately Copyright law Copyrights protect original works in the field of literature, science and art. 57 One of the ideas behind copyright law is that creative expressions are the most personal possessions, and that this needs protection. 58 Copyright law gives an exclusive right to makes sure that the creator can exploit his or her work and to ensure the integrity of the intellectual creations. 59 Copyright comes into existence automatically once a work is completed, without any formalities. 60 The regulation of copyright is mainly a national affair. 61 The Directive on the harmonization of certain aspects of copyright and related rights in the information society (InfoSoc Directive), however, was created to harmonize certain aspects of copyright and related right in the information society between the Member States of the European Union (EU). 62 In The 47 A. Kur and T. Dreier, European Intellectual Property Law, p. 157 (Cheltenham: Edward Elgar, 2013). 48 R. Holzhauer, Intellectuele eigendom, p. 9 ('s-gravenhage: Boom Juridische uitgevers, 2008). 49 Ibid. 50 T. Cohen Jehoram and C. Van Nispen and T. Huydecoper, European Trademark Law, p. 27 (Alphen aan den Rijn: Kluwer Law International, 2010). 51 Council Regulation (EC) No. 207/2009 on the European Union trade mark, 26 February 2009, PbEG 2009, L78/38, last adapted 26 March A. Kur and T. Dreier, European Intellectual Property Law, p. 160 (Cheltenham: Edward Elgar, 2013). 53 Ch. Gielen, Kort begrip van het Benelux merkenrecht, p. 181 (Deventer: Kluwer, 2006). 54 World Intellectual Property Organization. "WIPO-Administered Treaties: Contracting Parties > Madrid Protocol (Total Contracting Parties: 97)". World Intellectual Property Organization. Retrieved 8 June Ch. Gielen, Kort begrip van het Benelux merkenrecht, p. 181 (Deventer: Kluwer, 2006). 56 Arrangement de Madrid concernant l'enregistrement international des marques de fabrique ou de commerce, 15 June 1957, Trb. 1958,75, last adapted 15 December A. Kur and T. Dreier, European Intellectual Property Law, p. 241 (Cheltenham: Edward Elgar, 2013). 58 TH. Limperg, Het ABC van het auteursrecht, p. 13 ('s-gravenhage: VUGA Uitgeverij, 1985). 59 R. Holzhauer, Intellectuele eigendom, p. 21 ('s-gravenhage: Boom Juridische uitgevers, 2008). 60 A. Kur and T. Dreier, European Intellectual Property Law, p. 241 (Cheltenham: Edward Elgar, 2013). 61 Ibid. at p Ibid. at p ~ 22 ~

23 Netherlands, copyright is regulated in the Dutch Copyright Act, which implements the InfoSoc Directive Design law Design law deals with the protection of product design and it covers the exterior of products. 64 It protects 2D and 3D designs. 65 Designs are protected because design is an important sector of cultural achievement and designs have a strong commercial impact. 66 Designs could, under special circumstances, enjoy protection in other legal fields, such as copyright law and trademark law, but there is specific design legislation applicable as well. 67 The Netherlands does not have specific design legislation. It is, however, regulated in Benelux, European and International legislation. 68 On the basis of Benelux Convention, it is possible to get a design right, which is valid in the Benelux. 69 The Benelux Convention regulates both trademark law and design law in an organized way and it harmonizes legislation. 70 Because of the Council Regulation on Community designs (Regulation), there is also the possibility to obtain a design right that is valid in the entire European Community. 71 Contrary to the European Union Trade Mark, registration for the Community design right is possible but not necessary. 72 Because of the 's-gravenhage Agreement, it is also possible to obtain an international design right, which gives protection in the countries requested by the rightsholder. 73 There are 65 Contracting Parties to choose from. 74 Art. 7(1)(b) of the 's-gravenhage Agreement explains that the national legislations from the countries are applicable. 75 This means that Dutch legislation will be applicable for the international design right that is requested in The Netherlands. Therefore, International design law is not discussed separately Slaafse nabootsing Outside of intellectual property law, there is another ground in The Netherlands on which illegal imitation can take place. This is on the basis of 'slaafse nabootsing', which has its legal basis in the unlawful act of art. 162 of book 6 of the Dutch Civil Code. 76 'Slaafse nabootsing' is only applicable in cases where a work or working method is not protected by an intellectual property right. 77 The main goal of 'slaafse nabootsing' is to prevent unnecessary confusion for consumers Auteurswet, 23 September 1912, Stb 1912, 308, last adapted 1 July A. Kur and T. Dreier, European Intellectual Property Law, p. 354 (Cheltenham: Edward Elgar, 2013). & A. Engelfriet. "3D printen: revolutie of de nieuwe Napster?". Tijdschrift voor Internetrecht 5(11) (2011) p R. Holzhauer, Intellectuele eigendom, p. 115 ('s-gravenhage: Boom Juridische uitgevers, 2008). 66 A. Kur and T. Dreier, European Intellectual Property Law, p. 354 (Cheltenham: Edward Elgar, 2013). 67 Ibid. at p R. Holzhauer, Intellectuele eigendom, p. 9 ('s-gravenhage: Boom Juridische uitgevers, 2008). 69 Benelux-verdrag inzake de Intellectuele Eigendom (merken en tekeningen of modellen), 25 February 2005, Trb. 2005, 96, last adapted 21 May T. Cohen Jehoram and C. Van Nispen and T. Huydecoper, European Trademark Law, p. 27 (Alphen aan den Rijn: Kluwer Law International, 2010). 71 Council Regulation (EC) No. 6/2002 on Community designs, 12 December 2001, PbEG 2002, L3, last adapted 18 December R. Holzhauer, Intellectuele eigendom, p. 120 ('s-gravenhage: Boom Juridische uitgevers, 2008). 73 Arrangement de La Haye concernant le dépôt international des dessins ou modèles industriels, 6 November 1925, Trb. 1961, 40, last adapted 1 August World Intellectual Property Organization. "WIPO-Administered Treaties: Contracting Parties > Hague Agreement (Total Contracting Parties: 65)". World Intellectual Property Organization. Retrieved 8 June Arrangement de La Haye concernant le dépôt international des dessins ou modèles industriels, 6 November 1925, Trb. 1961, 40, last adapted 1 August L. Smeets and B. Bijl, "3D-printen: de derde industriële revolutie?", Amsterdams Balie Bulletin (3) (2015) p Rb. Arnhem 23 November 2012, ECLI:NL:RBARN:2012:BY6496, p Rb. Breda 23 November 2011, ECLI:NL:RBBRE:2011:BU5696, p ~ 23 ~

24 'Slaafse nabootsing' deals with the imitation of the work or working method of someone else, which constitutes an unlawful act under certain additional conditions. 79 Because everyone should be free to give its industrial product as much reliability and usefulness as possible, it should not be forbidden to use the in the product revealed results of effort, insight or knowledge brought about by others, even if this can cause confusion to consumers. 80 This should, however, not be limitless and therefore 'slaafse nabootsing' was brought to life Protection of fashion goods If fashion goods are not protected by specific rights, there can be no infringement of these rights. Therefore, this section explains if fashion goods are protected under the several forms of legislation applicable to counterfeiting through 3D printing in The Netherlands. Trademark law, copyright law, design law and 'slaafse nabootsing' are all discussed Trademark law In the fashion industry, designers often use certain logos, names, designs, etc. to distinguish their goods from other designers. This section deals with the protection of fashion goods on the basis of Benelux and EU trademark law Benelux trademark Art. 2.1(1) of the Benelux Convention explains that a trademark protects "signs". The signs that can become trademarks are names, designs, imprints, stamps, letters, numbers, shapes of goods or their packaging and other signs that can be graphically represented and which serve to distinguish the goods or services of an undertaking. 82 What can be a sign is interpreted very broadly, with the only limitation that the public must be able to perceive it as a sign. 83 A sign that is not graphically represented can't become a trademark. 84 A sign does not have to be visually perceptible to be represented graphically and become a trademark. 85 This is the case if it is graphically representable in another way, in particular by means of figures, lines or letters, and if it is clear, accurate, complete easily accessible, understandable, durable and objective. 86 This was explained in the case Sieckmann, in which it was decided that smells of perfumes can't be represented graphically. 87 An example of a sign that is not visually perceptible but that can be represented graphically is a sound, which can be represented graphically by musical notes in the form of a stave. 88 A trademark fulfills its distinctive function if it enables the relevant public to distinguish the goods with a trademark from other goods and if the trademark individualizes the goods. 89 The elements of fashion goods that are stated in the previous section can become a trademark, but usually not the fashion good itself, which would be the shape. 90 Shapes, and therefore the fashion good as a whole, can only obtain trademark protection when the shape of a company 79 R. Holzhauer, Intellectuele eigendom, p. 129 ('s-gravenhage: Boom Juridische uitgevers, 2008). 80 Rb. Breda 23 November 2011, ECLI:NL:RBBRE:2011:BU5696, p Ibid. 82 Benelux-verdrag inzake de Intellectuele Eigendom (merken en tekeningen of modellen), 25 February 2005, Trb. 2005, 96, last adapted 21 May T. Cohen Jehoram and C. Van Nispen and T. Huydecoper, European Trademark Law, p. 69 (Alphen aan den Rijn: Kluwer Law International, 2010). 84 Ch. Gielen, Kort begrip van het Benelux merkenrecht, p. 12 (Deventer: Kluwer, 2006). 85 T. Cohen Jehoram and C. Van Nispen and T. Huydecoper, European Trademark Law, p. 69 (Alphen aan den Rijn: Kluwer Law International, 2010). 86 Ch. Gielen, Kort begrip van het Benelux merkenrecht, p. 12 (Deventer: Kluwer, 2006). 87 HvJ EG 12 December 2002, C-273/00 (Sieckmann), p. 55 & HvJ EG 27 November 2003, C-283/01(Shield Mark), p T. Cohen Jehoram and C. Van Nispen and T. Huydecoper, European Trademark Law, (Alphen aan den Rijn: Kluwer Law International, 2010) p Rb. Amsterdam 1 November 2007, ECLI:NL:RBAMS:2007:BB6923. ~ 24 ~

25 gets integrated into society and this is obviously rare. 91 This happens when a shape of a particular company is used so much that society sees the shape as a shape that belongs to that company. 92 However, shapes that give substantial value to a product can't be trademarks, even if they are integrated into society. 93 An example could be the shape of a crop top, because it is necessary for a top to be short to be a crop top. It is not wanted that a company gets an exclusive right to a certain shape that limits the freedom for its competitors to design. 94 This also counts for colors, because the availability of colors that can become trademarks may not be unduly restricted. 95 One example in which integration into society of a color of a company took place is the red sole that Christian Louboutin uses for his shoes. 96 Some signs are easier to protect than others, because it can be hard to see if consumers perceive signs as decoration or as a trademark. 97 If consumers distinguish the sign from those created by others, the sign can also be decoration. 98 Therefore, it is important if consumers see a sign as a brand or not. 99 In order to obtain trademark protection, according to art. 2.2 of the Benelux Convention, the trademark needs to be registered in a Benelux or International depository European Union trademark Art. 4 of the Regulation outlines what types of signs can become a trademark. These are signs, particularly the ones named in the article, that are capable of distinguishing the goods or services of an undertaking and that are represented on the Register of European Union trade marks in a manner that enables authorities and the public to clearly and precisely understand the subject matter of protection. 101 The answer to the question if fashion goods can be protected does not differ from the Benelux trademark. 102 The EU trademark, however, also needs to be represented on the Register in such a matter that precise subject matter of the protection is clear. If this is not the case, then protection is not granted, even if the fashion good has enough distinctiveness. The duty of registration of the subject-matter of the trademark is also named in art. 6 of the Regulation Copyright law Now that trademark law, in general, only protect certain elements of fashion goods, let's see if copyright law provides more protection for the fashion good as a whole. According to art. 1 of the Dutch Copyright Act, a copyright is the exclusive right of a creator (or its assignees) of a work in the field of literature, science or art to make it public and to reproduce it. 104 Only works that are named in art. 10 of the Dutch Copyright Act can be protected. 105 Fashion goods are not named in this article, but the last sentence of art. 10(1) states that every product in the field of literature, science or art, regardless of the way or shape that was used for expression, can be a work. 106 In the Infopaq case, the European Court of 91 N. Admiraal, "Copyrightconflict", Kwintessens (12) (2013) p Ibid. 93 HvJ EG 20 September 2007, C-371/06 (Benetton Group/G-Star International), p HvJ EG 25 January 2007, C-321/03 (Dyson/Registrar of Trade Marks), p HvJ EG 6 May 2003, C-104/01 (Libertel/BMB), p Rb. 's-gravenhage 18 April 2013, ECLI:NL:RBDHA:2013:BZ7844, p N. Admiraal, "Copyrightconflict", Kwintessens (12) (2013) p HvJ EG 23 October 2003, C-408/01 (Adidas/Fitnessworld), p Hof 's-gravenhage 30 June 2015, ECLI:NL:GHDHA:2015:1845, p Benelux-verdrag inzake de Intellectuele Eigendom (merken en tekeningen of modellen), 25 February 2005, Trb. 2005, 96, last adapted 21 May Council Regulation (EC) No. 207/2009 on the European Union trade mark, 26 February 2009, PbEG 2009, L78/38, last adapted 26 March See for more information paragraph Council Regulation (EC) No. 207/2009 on the European Union trade mark, 26 February 2009, PbEG 2009, L78/38, last adapted 26 March Auteurswet, 23 September 1912, Stb 1912, 308, last adapted 1 July Ibid. 106 Ibid. ~ 25 ~