Spotlight on 3D Printing: Intellectual Property

Imagine that your dishwasher breaks or you need a set of monogrammed glasses for a last-minute gift. Instead of scheduling a time-consuming service call or waiting two weeks for the glasses to arrive, you'll download 3D design files and have the replacement part and customized glasses 'printed' within hours at your neighborhood UPS Store, public library ' or even at home. This soon may be commonplace through advances in 3D printing technologies.

Unlike traditional manufacturing processes like casting, molding, stamping and machining, 3D printing can create customized objects quickly and efficiently and with little wasted material. A virtual, 3D computer model is created of an object using computer aided design (CAD) software tools or a 3D scanner. The digital file acts as a blueprint for a 3D printer. The printer deposits layer upon layer of material, such as plastic, ceramics, metals, nylon and stone, to create a three-dimensional object. Because 3D printing and more advanced techniques like selective laser sintering can be used to produce goods almost anywhere, without the need for modern factories or long supply chains, this reduces the overall environmental impact associated with production and creates new opportunities for small businesses and those producing mass customized goods.

3D printing technology, also known as additive manufacturing, is nothing new. It has been used for decades by designers and engineers to quickly produce prototypes, scale models and replacement mechanical parts 'on-demand' in the automotive, aircraft, architectural and industrial design industries. Today it is commonly used to create sculptural and decorative objects, jewelry, novelty items, simple household objects and tools. But increasingly, the technology is advancing and is being used to create highly complex, finished goods, customized prosthetics, replacement organs and skin, and even 3D printed vehicles and buildings.

Desktop 3D scanners and printers are becoming more affordable than ever and have greater capabilities. 3D printing services already are available online, via mobile apps, and at specialty retail outlets ' and soon they will be offered at mall kiosks and major retail stores. Many predict we are advancing toward a future in which almost anyone, anywhere, will be able to design and print finished goods. Consumer products and manufacturing companies will face new competitive threats, but also will have plenty of opportunities for growth and innovation. And new challenges to intellectual property rights will emerge.

Implications for IP Rights Holders

The technical capabilities that make 3D printing technologies so useful ' the ability to scan objects and create 3D design files, to modify, distribute and share the files electronically, and to print those products from almost anywhere ' likely will facilitate intellectual property infringement. This has implications for intellectual property owners with patent, copyright, trademark, trade dress, product design and publicity rights.

Patent

Let's assume someone creates a 3D design of a light fixture with a patented technical feature or an innovative design covered by a valid patent. The design file is uploaded to a 3D printing website and 100 users print exact replicas of the light fixture. Because the patent owner has the right to exclude others from making, using and selling the invention, these parties could be liable for patent infringement. If 30 users revise the 3D designs and upload them, now there are 30 more potentially infringing designs available for download and printing. Anyone could then sell the 3D printed light fixtures in competition with the patent holder and established resellers, in global markets with fewer legal protections for intellectual property rights. The patent owner will be required to defend its rights against multiple parties in many different countries.

Trademark and Trade Dress

Trademark infringement, dilution and counterfeiting claims might arise under the Lanham Act and state laws for the unauthorized distribution and sale of 3D printed products that are exact replicas of legitimate branded consumer products. Also, if someone creates and sells 3D printed products bearing a confusingly similar mark, or products that call to mind or tarnish a famous brand, this could be actionable. If a logo or brand name is altered, moved, or omitted from the 3D printed product, yet consumers still recognize the product as originating from a single manufacturer, this also might infringe or dilute the brand. 3D printed products could also infringe trade dress rights, which protect the physical appearance of a product or its packaging. This could include a distinctive product shape, color, configuration, packaging type, or label design.

Another concern is that unauthorized 3D printed consumer products may have not undergone safety inspections or been subject to the same regulatory oversight as legitimate goods. This could endanger consumers and end-users and damage the brand owner's goodwill.

Copyright

Copyright law protects 'original' works of expression, including pictorial, graphic and sculptural works. However, copyright protection does not extend to utilitarian features of these works. Only ornamental features that are separable from the overall function of the article are protected by copyright.

If someone scans a copyrightable work without authorization from the copyright owner and creates a 3D design file, uploads and distributes it online, this may well constitute copyright infringement. The file may be accessible for free to Internet users who can readily download and use them to print infringing products. Creating and selling unauthorized reproductions, interpretations and re-mixes of copyrighted artwork, designs or objects also may be infringing, unless fair use or another defense can be shown. Many 3D printing websites encourage communities of users to engage in these activities.

Some copyright owners may decide to use copy protection technologies and charge for access to certain designs. Others may offer their own 3D printing services or participate in online marketplaces for 3D designs similar to iTunes to gain popularity. Authentise, a California-based startup, has developed streaming technology in which 3D designs are streamed to 3D printers (much like Netflix streams movies) in a way that allows the design to be printed only once and not copied or shared.

Content owners will need to regularly monitor 3D printing sites and send takedown requests and cease-and-desist demands when appropriate. Earlier this year, HBO sent a cease-and-desist letter to 3D printing site nuProto, which was selling an unauthorized 3D printed iPhone dock inspired by the Game of Thrones series on HBO. The site added a disclaimer but eventually stopped offering the product and gave refunds to customers.

Right of Publicity

If a 3D printed product being offered for sale online bears the name, likeness, persona or signature of a well-known celebrity or another person, this may violate the person's right of publicity and result in liability under various state laws.

Theories of Liability

As intellectual property owners begin to encounter more infringements arising from 3D printing activities, inevitably disputes and litigation testing the boundaries of existing law will follow.

Private individuals that create, modify and distribute 3D design files ' and print, distribute and sell 3D objects protected by intellectual property rights ' could potentially face infringement claims. When these individuals are difficult to identify, or have limited resources, rights holders will explore ways to hold additional parties responsible, using theories of contributory infringement and vicarious liability.

This could affect parties offering 3D design, scanning and printing services and their vendors and operators of 3D printing websites and mobile apps. Some might argue that these entities materially contribute to, facilitate and in some ways benefit from, infringing activity. These entities may be able to contractually limit their liability in terms of sale, user and vendor agreements, website terms of use and click-wrap agreements. And 3D printing website operators may invoke the Digital Millennium Copyright Act (DMCA), which offers a safe harbor for certain Internet service providers, as a shield against copyright infringement claims. But unless Congress passes additional legislation, these sites could still face other intellectual property and unfair competition claims.

File-sharing websites like The Pirate Bay and other peer-to-peer networks designed to provide unfettered, free access to digital, copyrightable content likely will be additional targets of infringement lawsuits related to 3D printing technologies.

It's unlikely that manufacturers of 3D printers and scanners used to create infringing 3D products would themselves be liable for infringements arising from the use of their devices. Like digital media recorders and standard laser printers, these devices are capable of substantial non-infringing uses, so courts are unlikely to hold manufacturers liable.

Looking Ahead

As 3D printing technologies advance and become more widely accessible, intellectual property owners should expect to face new enforcement challenges online and around the world.

We likely will see a proliferation of new patents related to 3D printing, scanning and digital rights management technology and disputes over the scope of those rights. 3D printers will become smaller, faster, more flexible, versatile and mobile. They will print finer details, in multiple colors, using combinations of different materials. Some predict a flood of new printers from Chinese companies when a number of laser sintering technology patents expire in the coming year. Also, late last year, Invention Science Fund I, an arm of alleged patent troll, Intellectual Ventures, secured a patent for a 'manufacture control system' or a method for managing digital rights for 3D printing.

Intellectual property rights holders can try to increase their leverage in enforcement actions by identifying proprietary rights early on and registering them in key global markets. They should secure rights from product designers, developers and other third parties involved in the development of products and their packaging. Are there technical or design features that can be protected by a utility or design patent? Is the product shape, color or packaging protectable as trade dress? If not, can steps be taken now to develop evidence of distinctiveness for future registration efforts? Are trademarks registered with the relevant trademark offices and with customs authorities? Does the product have a label or packaging that contains copyrightable artwork? Does the product have decorative features that are copyrightable? A range of intellectual property protections should be considered, given that entire products will be able to be replicated and remedies will differ depending on the type of IP being infringed.

Many rights holders will adopt new business models to control access to proprietary designs and find ways to profit from 3D printing technology. By offering 3D printing services, consumer products and manufacturing companies will be able to extend their relationships and build loyalty with consumers by offering access to new products, design improvements and authorized replacement parts.

These are exciting times for 3D printing. As the technology advances and becomes more widely accessible, new legal questions and business opportunities will arise ' for almost anyone can at least try ' to be a designer and creator of things.