April 25 2013

IP Challenges of the 3D Printing Revolution

The spread of 3D printing is apt to challenge the traditional set of IP rights on objects. 3D printers basically produce objects by layering certain materials (plastic, silicone, metal in powder form, even human tissues); this input is given by a 3D-file (industry standard formats are the .stl or the .wrl) which contains the digital 3D design of the object. It is clear that the economic/legal value of the object itself is shifting to being on the digital information, rather than on its physical reproduction.

Websites hosting 3D files are already a well structured reality, while 3D printers are becoming cheaper. The manufacturing industry is likely to face the same challenges well known to the music industry.

As it happened there, the efforts must be addressed to the websites hosting 3D files, since going after any user who downloads a file and “print” the object has no economic sense, both as for legal costs and damage recovery perspectives. The question then is, on which grounds the 3D file is infringing IPRs. The answer maybe not as clear-cut, according to the UK and EU law on patents, trademarks and design.

One of the requirements for a trademark infringement case is that the counterfeited object is used in the course of trade. This may be addressed (if true, i.e. if the objects are sold) against the down-loader, who “prints” an object which is identical to those for which the trademark is registered. The 3D file, though, is likely to be excluded from the products registration list in most cases.

As far as patents are concerned, whether a 3D file is a mean related to an essential element of the invention will have to be established, as this is required for a case of indirect infringement (the direct infringement being making, selling or importing a object falling within the scope of a patent) – to the writer’s knowledge, no cases dealing with the concept of “mean related to an essential element of the invention” have been reported. The 3D file seems rather closer to the patent documents, which explain how to make the invention.
The design law on infringement does not have a provision on indirect liability, both on a UK and EU level. The UK Unregistered Design Act provides copyright protection for the design documents, but 3D scanning the object, or just creating a 3D file by observing and studying it, does not consist of copying the design document. Furthermore, design law also provides that making “a design document recording the design for the purpose of enabling such articles to be made” is an infringement. Both in design law (also EU) and in patent law, though, the private use exception may be claimed in case the 3D file is uploaded by a private user, or shared on a p2p platform.

It will be for the Court, then, to extend the principles of copyright protection – which is much broader – to these fields, at least to the extent that the commercial purpose is required for assessing the liability beyond the private use exception: the recent decision in EMI Records v British Sky Broadcasting & Others [2013] EWHC, for instance, affirms that the up loaders financially benefit from their activity, albeit indirectly, as they rely on the fact that other users will reciprocate. Unless there is such interpretation of the commercial character of the activity, the limits on the law on objects would prevent from assessing an infringement on the IP right on the object.

True, Community designs could enjoy copyright protection if it is so provided by Member states. In Europe copyright scope on design is broad (e.g. the recent decision of the Milan Court in Flos v. Semeraro of Sep 12, 2012, issued after a ECJ referral, ruled that a design can enjoy copyright protection if it possesses per se creative character and artistic value), whereas in UK is narrow (an object enjoys copyright protection only if it is a sculpture or a work of artistic craftsmanship).

This is why, though the extensive power of UK courts, if the principles and the tools of copyright law are decided to be extended to IP law on objects (do we really want that?), then a system will be needed which sets the process of requiring a website to prevent access on those files, as it happens with copyright. The choice would be political, and must be evaluated under the view of not preventing the technology to develop and not frustrating creativity. But certainly this is something that policy-makers have to consider soon, as the history tells that when geeks are involved, the law has always to catch up.

About Priscilla

Priscilla is an Italian IP lawyer currently based in London and enrolled in a LL.M. program at Queen Mary, University of London. Priscilla also collaborates with the IP law department of the Università degli Studi of Milan.

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