3D Printing: paradigm shift or new wine in old bottles?

3D printing, a popular name for the method more formally known as additive manufacturing (AM), is the practice of making a three-dimensional real-life object from a digital blueprint. The process computes a three-dimensional object into two-dimensional horizontal slices, which are then printed out layer by layer in order to replicate the shape of the object. Today virtually anything can be 3D printed, from industrial components, rocket engines, to prosthetic limbs and even human organs. The technology has been incorporated into the production lines of (to take a few examples) Lego, Alpha Dog Headphones and NASA. Now increasingly 3D printing is destined for the domestic as well as commercial sphere, though currently a home 3D printer costs around £1,000.

Every 3D printed object must begin its life with software in the form of computer-aided design (CAD) files, which have been likened to architectural blueprints for building, or the sewing pattern for a dress. Design files created through CAD software can be downloaded online. They are easily copied and difficult to track. Practically-minded consumers will be increasingly able to print spare parts to repair or maintain their own goods or devices.

This all raises troubling issues for those who own the intellectual property (IP) rights in technologies or designs. How will they be able to protect themselves against the mass copying of their best-selling products?

What IP rights are there in the original object?

Some IP rights arise automatically on creation (such as copyright or unregistered design rights). Others require formal steps and payment of fees before they can exist (like registered designs and patents). Since many different types of objects can be 3D printed, the rights subsisting will vary, according to the following principles:

• Copyright can subsist in sculpture (irrespective of artistic quality) and in works of artistic craftsmanship. But recent English caselaw (Lucas Films v Ainsworth) has indicated that copyright will not normally subsist in practical articles.
• If the work has ‘individual character’ and is novel, it can be protected as a registered design which can last up to 25 years. This will not apply to features dictated solely by technical function. The registration can be obtained for a single EU Member State and/or EU-wide. Comparable (though not identical) regimes exist in other parts of the world including USA and China. The Community Unregistered Design Right has the advantage of not requiring a formal registration process but only lasts for 3 years and gives a somewhat narrower scope of protection.
• Patents can be obtained for 3D objects if the inventions they embody are novel, non obvious and capable of industrial application. Patent protection lasts 20 years. However patents are comparatively expensive and can take years to obtain.
• Turning to trade marks, three-dimensional trade marks are possible. But recent cases such Nestlé’s application to register its four bar KIT KAT shape, which failed, indicate that it may be hard to obtain a 3D trade mark as the applicant must prove that that mark alone, as opposed to any other trade mark which may also be present, identifies the particular undertaking from which the goods originate. Consumers do not ordinarily think of the shape of an article as indicating which manufacturer it came from. The object may also bear a conventional word mark or logo on it which can be reproduced. This is relatively easier to protect.

Assuming some or all of these IP rights can be obtained, then they will generally give a right to prevent reproduction of the object, but the degree to which the reproduction is identical or similar to the original may determine the scope of protection.

What IP rights are there in the CAD file which contains the instructions to ‘print’ the object?

The digital file which contains the instructions to the machine which performs the additive manufacturing is a fundamental part of the 3D printing process. There has been debate in some circles over whether this should be considered a software work (i.e. a species of literary copyright) or whether the emphasis should be put on seeing it as a reproduction of the artistic or inventive work itself. In any event if the owner of the rights in the original object or the design drawings for the object convert these into a CAD file (or, more likely, creates it from the start as a CAD file) then he will have the same rights in the CAD file version as he does in the original. He may indeed also have separate copyright in the CAD file as a software program. Alternatively the CAD file may be considered under US copyright law to be a derivative work from the original.

What are the IP implications of scanning the object into a new file without the rights owner’s consent?

If a third party creates a CAD file version of the object by scanning it, either via a 3D printing machine of even using simple technology such as smartphone, as is possible (the results are imperfect but getting better), then on the assumption there are IP rights in the object itself, the scanned version would prima facie be an infringement of those rights as it would be an unauthorised reproduction. The situation is even more clear cut if the third party copies the owner’s own CAD file without his consent – this would be a straightforward copyright infringement. Offering such unauthorised CAD files for sale commercially would also constitute an act of infringement. Not much new here then.

But what about sharing such files from a peer to peer platform, such as YouMagine, which describes itself as “an online community for everyone who’s eager to explore the world of 3D printing“? Again, we have been here before, with Napster and other music sharing sites. It seems likely that the operators of such a platform would be considered to be in the same position as an ISP: even though they are a ‘mere conduit’, if once the fact that they are enabling the sharing of copyright infringing material is brought to their attention they do not take steps within a reasonably short period to take down the infringing materials, they will incur liability as a secondary infringer.

What about the individual making a file available to others via such a platform? Many IP laws provide an exception to liability where the copying is for ‘personal’ or ‘non-commercial’ use. Patent and design laws across Europe include such an exception; and a trade mark is infringed only when the mark is used in the course of trade. This is potentially a major challenge to rights owners. Not all EU countries have such an exception to copyright. But EU copyright laws require those countries that elect to introduce an exception for private copying into national copyright laws to ensure that rights holders receive ‘fair compensation’ for that activity. The implementation has been variable, and remains fluid. In those countries which do provide a levy system on equipment makers to compensate for private copying, we may see the makers of 3D printers intended for private use being required to make fair compensation to rights holders in the future.

What are the IP implications of ‘printing’ a reproduction of an object?

Creating a reproduction of an object is in principle one of the acts which a rights owner can control. There are some limits to this. In copyright, the reproduction must be of a ‘substantial part’, assessed as to quality not quantity. In registered design law the new object must create the ‘same overall impression’ as the original. In patent law it must fall within the claims of the patent. In trade mark law it must be identical and for identical goods (e.g. a 3D trade mark for a teacup shape ‘printed out’ in chocolate would not count) or there must be an element of consumer confusion.

Assuming these hurdles are overcome, where objects are being printed out on a commercial / industrial basis, the rights owner should have a fairly straightforward claim. However as noted, if here the printing is being carried out by an individual consumer on a one-off or occasional basis for his or her own personal use or consumption, then exceptions to infringement in many IP laws may apply.

What practical steps should businesses be considering now?

If there are any doubts that 3D printing is a real and significant advancement, rather than a fanciful or novel technology, these are likely to be dispelled in the very near future. Thirty years ago, in the age of mainframes, the idea of powerful computers not just in most homes but also on the move seemed a fantasy. If and when cheap 3D printers become widespread, they are likely to have a significant impact, particularly on the spare parts / accessories market. Some businesses may choose to seek brand loyalty by embracing this technology, e.g. by supplying CAD files for spare parts when selling the original object (e.g. washing machine) and building up a subscription maintenance model. It is interesting that Lego, a company which has struggled to prolong protection of the designs of its building blocks, appears to be interested in exploring what possible new opportunities may arise to widen its franchise into 3D printing. Tellingly, it has filed a patent in this area (WO 2014005591 A1).

While the legal issues around 3D develop, businesses using 3D printing would be well advised to adopt a cautious approach to the IP rights relating to what they are printing, lest they inadvertently infringe rights held by others, or have their own rights infringed.

For those on the other side of the fence, an awareness of IP issues around 3D printing may help to head off issues before they arise. Forceful assertions of IP rights may be a tactic, at least in the interim, even without there being 100% certainty of how actually enforceable those rights are. In one of the very few known cases relating to enforcement of IP rights against 3D printers, the parties settled early. Games Workshop used trade mark rights successfully in 2012 to prevent an individual uploading of CAD files of trademarked characters from the table-top battle game WARHAMMER onto an object file sharing website Thingiverse. Games Workshop cited the US Digital Millennium Copyright Act, and Thingiverse dutifully took down the offending things. Whether and how the Act really gave Warhammer rights was not tested in court.

Lobbying can also be effective, for example, with the aim of ensuring that private copying exemptions, if they cannot be stopped, should at least be tempered by fair compensation.

In addition a wise IP owner may also consider technological as well as legal measures to protect their position. Digital rights management (DRM), which can control where and how a consumer uses media, is already being employed to regulate the printing of dangerous objects: a Danish company has developed software which detects when files for gun parts are downloaded and prevents a user from printing from them. We expect the use of DRM in this way to move beyond safety to the protection of IP rights.

Both for those in the industry and those who may be affected by it, 3D printing offers great possibilities but also poses significant risks that businesses will need to keep on top of to protect themselves.