IP and 3D printing

3D printing raises interesting issues in all areas of intellectual property. What types of intellectual property will be used by rights holders and how will copyright, trade-marks, industrial design and patents be enforced against providers and users of 3D printers? I explore some of these issues in an article published today.

The article is published in SLAW as one of my regular columns and reproduced below:

3D Printing and Intellectual Property

Last month, Home Depot announced they would start selling 3D printers in some of their stores. This seems like the next step in the consumerization of technology that began as exclusively for high end users such as automotive manufacturers and architects but is now becoming useable for almost anyone. Even the Toronto Public Library has 3D printers “even for beginners to use.” What effect will the increasing use of 3D printing technology by consumers have on intellectual property and what effect will intellectual property have on the technology?

3D printing is generally a term for additive printing where material is added by a machine to form the desired shape. In some 3D printers, such as the printer I have, plastic filament is melted and extruded layer-by-layer to form the design. This is in contrast to subtractive manufacturing where material is cut away from a larger piece of material.

Many commentators have identified the potential for a revolutionary change due to the technology and compared the possible effect to that of peer-to-peer downloading on digital markets. 3D printing has the potential to change manufacturing from a centralized process with well-known distribution channels, to a distributed system with many points of manufacturing.

Interestingly, one of the reasons identified for the growth in the technology in the last several years was the expiry of several patents on 3D printing technology that allowed smaller companies and individuals to work with the technology. Several patents on laser sintering, another technique for 3D printing, expired earlier this year and may spark additional development.

What intellectual property may apply to the items being 3D printed?

Patents – 3D printers, particularly the higher end printers can easily create mechanical devices out of a variety of materials. For example, Shapeways, a commercial 3D printing company, will 3D print a working 28-geared cube with rotating gears, all printed as one piece. If a design is patented, “making” the invention could be an infringement of the patent.

The Patent Act does not include “fair dealing” or a personal use exemption (although it does allow experiments that relating to the patent under s. 55(6)). Rather than enforcing patents against individuals printing objects on their personal printers, patent owners may try to sue entities hosting the 3D data files used by the printers on the basis of inducing infringement, or companies offering 3D printing services.

Trademarks – Designs having features that are distinctive of source may be protected by trademark law. Trademark law also protects distinguishing guises which may be asserted if the 3D printed objects reproduce the distinctive features. On the other hand, trademark rights and infringement currently require ‘use’, which may not include private non-commercial reproduction. In addition, trade-marks and distinguishing guise do not extend to a “functional use or characteristic” (see s. 13(2) of the Trademarks Act and Kirkbi AG v. Ritvik Holdings Inc., 2005 SCC 65).

Copyright – Copyright law has seen the most debate and application to the online world but it is unclear how successfully it can be applied to 3D printing. The 3D design files used by the printers are likely covered by copyright but the application to the actual printed objects is less clear. HBO has used U.S. copyright legislation to have a 3D printable design for a throne iPhone charging dock inspired by the Games of Throne TV show removed.

There is also a provision of the Copyright Act that design of an article by making the article if a design has been applied to a useful article and more than 50 articles have been made (see s. 64(2) of the Copyright Act), although exceptions exist for trade-marks.

In Crocs Canada Inc. v. Holey Soles Holdings Ltd., 2008 FC 188, the court wrestled with some of these issues on a summary judgment motion considering whether trademark or copyright could be asserted to protect the plaintiff’s Crocs footwear. In the Pyrrha Design Inc. v. 623735 Saskatchewan Ltd., 2004 FCA 423, summarized the application of the Copyright Act:

This legislation provides, therefore, that copyright may exist in a design of a useful article, but if that useful article is produced in a quantity of more than 50, it is not an infringement of the copyright for others to reproduce similar articles. In other words, where copyright exists in such articles produced in what might be considered commercial quantities, an action for copyright infringement may not lie, but the remedy, if any, must depend upon the registration system under the Industrial Design Act, R.S.C. I-9.

Industrial Designs – The Industrial Designs Act protects “features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye”. Unlike copyright arises without registration, industrial designs must be applied for and registered for a 10 year term. Enforcement of a registered industrial design likely would face similar difficulties as enforcing patents, who does the rights owner sue?

What’s Next?

It remains to be seen how the 3D printing ‘revolution’ changes the balance of rights and the ability to enforce those rights. Some companies are trying to jump into the new technology in different ways. Nokia has released 3D design files for its phone shells to allow consumers to 3D print their own cases. Hasbro has recently created a site that allows fans to share original designs based on its My Little Pony brands to be 3D printed and sold.

There is also the rapid consumerization in 3D scanning technology (see for example the Matter and Form Scanner) that will make copying of existing designs more straightforward. The combination of 3D scanning with 3D printing could make it much easier for end users to copy existing objects.

Lots of creative people are pushing the technology and the possible uses in new direction. It remains to be seen how the law helps or hinders the development.