3D Printing – An Extra Dimension to Infringement of Intellectual Property Rights?

August 9, 2013

3D printing (Additive Layer Manufacturing) is a process of making 3 dimensional solid objects from a digital model. Although 3D printing has been available from the 1970’s it is only now with advantages in technology that it has become cheaper and more readily available, particularly to small businesses and individual consumers. Like any disruptive technology it has brought benefits and threats. One recent good news story was that Buttercup the duck was provided with a prosthetic foot manufactured by 3D printing. On the other hand, the world’s first gun using a 3D printer was successfully tested by a group planning to make a blue print available on line.

It is anticipated that 3D printing will present the same challenges to the manufacturing industry as file sharing did to the music industry. In addition to the physical dangers posed by giving the consumer the ability to make objects at will, digital printing also raises various issues in relation to infringement of intellectual property rights. 3D printers make objects using 3D design files. These design files can be obtained from various websites including Shapeways and Thingiverse. These websites have been specifically created for the sale and sharing of 3D blue prints.

3D printing may infringe the following intellectual property rights;

Copyright

Copyright is an unregistered right that arises automatically on creation of creative works. Under the Copyright Design and Patents Act 1988 copyright protects literary and artistic works. 3D printing may produce infringing copies of the artistic category of protection.

Unfortunately the Copyright Design and Patents Act 1988 has been interpreted narrowly so as to provide numerous instances where copyright does not subsist in 3D items or is substantially shortened.

Design Right Protection (both Registered and Unregistered)

Design right protects the shape and configuration of items. The challenge posed by 3D printing is that designs which perform a purely technical function or which must fit or must match other items i.e. (car wing mirror) are generally not afforded protection. More importantly, personal use of 3D printing does  not infringe design right. Presumably the law was enacted at a time when it was not envisaged that consumers would be able to print their own products.

Trade Mark Infringement

Trade marks are a registered right to indicate the trade origin of goods or a “badge of origin”. If a trade mark has not been used in the “a trade mark sense” i.e. it is not being used in the course of a trade, it will not be infringed. Personal use would not seem to infringe trade marks.

Patents

Patent protection is given to novel inventions capable of industrial application. Personal and private use of a patent is permissible under patent law.

Passing Off

This is a common law right to protect the goodwill and reputation of a trader and extends to protection to unregistered brands. It relates to circumstances where a trader misleads consumers into thinking that his goods or services are that of another trader. Passing off only applies to non private use. A private manufacturer of an item on a 3D printer, presumably for personal use, cannot mislead her/himself.

The traditional legal remedies for breach of intellectual property rights are ineffective if the majority of 3D printing is for personal use. Our approach may be to target the 3D modelling files that can be purchased or exchanged rather than the actual 3D item. However, if money is not changing hands it would be arguably for personal use and acceptable. Moreover, the websites have a degree of protection. They usually have sufficiently robust terms and conditions of use to protect them from an infringement claim. Service providers usually have the “innocent conduit” defence in respect of intellectual property infringement. As they are only providing a platform and provided they are not actively engaged in infringement, they should not be a defendant to proceedings.

Like many other areas of the law, intellectual property law has not been able to keep pace with the constant and often extremely rapid advances in technology. To protect creativity and their intellectual property rights, rights owners currently have the following options available:

1. Target business infringes because this will not be able to rely on the personal use exceptions;

2. Target internet service providers directly. Increasingly the Courts have been putting more obligations on internet service providers. If they are put on notice of infringement they may not be able to rely on the innocent conduit defence;

3. Mark products as well as packaging to indicate that it is protected by intellectual property rights. This should deter would be infringers;

4. Take a pro active approach to infringement. Whilst the outlook seems pessimistic, UK Courts have yet to rule on a 3D print case, as such there is no settled law. Litigation or the threat of litigation may be sufficient to encourage an infringer to desist and deter other potential infringers.

The law is but only a means of protecting intellectual property which can be expensive and protracted. Rights owners may also have to consider practical steps to include adapting their business model. One suggestion has been for manufacturers to license design models for sale over the internet rather than actually manufacture products.

Another idea is for the manufacturer to provide something additional to what a consumer can obtain from their own efforts. The actual product should have warranties and be accompanied by instructions and guidance on use.

As 3D printers become more readily available to the general public, manufacturers will have to form a clear strategy for protecting their intellectual rights. The most effective approach is a combination of both legal and practical steps tailored to the particular product.

This is a general guide on the law only. It is not intended nor should it be taken as legal advice. Further advice should be sought from a professional legal adviser.