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The Impact of 3D printing on Intellectual Property Rights

Summer 2016 (snippets)

The term 3D printing encompasses a number of different additive manufacturing methods that enable the production of physical objects without the need for any specific tooling. 3D printing has, for many years, been forecast as the next revolutionary technology,[1] and the growing 3D printing industry is widely estimated to continue expanding rapidly.[2] As 3D printing changes the way that companies (and consumers) manufacture articles, it will also have a significant impact on how enterprises can protect their intellectual property and enforce their rights.

Intellectual Property Procurement

Businesses that make, sell, or distribute 3D printers, parts, accessories and computer aided design (CAD) files have the same opportunities to obtain intellectual property protection as those in other industries. These companies can trademark their brands, copyright their creative works, and patent their technology so long as their intellectual property meets the ordinary requirements for protection. Companies can also copyright original works and patent non-obvious products that are manufactured using 3D printing. Likewise, methods of 3D printing that address challenges unique to the 3D printing process may also be patentable.

However, because of the ability of unsophisticated actors to easily copy 3D printed articles and the uncertainty behind how courts will interpret and enforce other intellectual property protection for 3D printing, companies that manufacture using 3D printing may want to rely on trade secret protection. If a certain object is printed using a sophisticated method that required considerable effort to develop, that method may be best protected as a trade secret. Furthermore, the specific CAD files used to print objects should be closely guarded as trade secrets, because their dissemination could result in perfect copies of the objects.[3]

Protecting IP from Unauthorized 3D Printing

Anyone producing or branding objects that can be 3D printed[4] is susceptible to intellectual property infringement by unauthorized manufacturers. However, the strategy for combating infringement that utilizes 3D printing varies considerably depending on the infringing party. Addressing infringement by a competitor, a customer, or a consumer may each require a different approach.

Infringement by Competitors

Protecting patents, trademarks, or copyrights against large-scale infringement by competitors that use 3D printing to manufacture the unauthorized articles is not inherently different from guarding against infringement that uses other forms of manufacturing. However, forms of intellectual property that can be obtained quickly, such as copyrights and design patents, may become more valuable for protecting against shorter production times and more accurate copies.[5]

Customers Making Replacement Parts

One area where 3D printing is already thriving is in printing replacement parts. Rather than purchasing the replacements from the original manufacturer, some customers print their own replacement parts. To combat this, certain replaceable parts may be individually protectable with copyrights, design patents or utility patents. Of course, suing a customer for replacing broken parts may not be a sound business strategy for many companies. Therefore, alternative methods to address this issue may be preferable. For example, companies may find it beneficial to work with their customers to allow easy replacement of parts using 3D printing, rather than trying to prevent the customers from making the replacements.

Consumers Sharing Infringing Files over the Internet

One area of concern for intellectual property owners is the prospect of 3D printers becoming household items and consumers being able to manufacture goods in their own homes. Professional-quality CAD files, whether stolen or recreated by hobbyists, might be shared over the internet to any consumer with a 3D printer, creating widespread infringement. However, even in this situation, there are strategies available for protecting intellectual property.

Copyright and trademark rights should extend to 3D CAD files of objects that use the underlying intellectual property. Thus, the storing and transfer of the file itself is likely an act of infringement regardless of whether the object is ever printed.[6] In contrast, the rights in a patented product are unlikely to extend to cover a CAD file that can be used to create the product.[7] To address this weakness in patent rights within the 3D printing arena, innovators may wish to pursue patent protection of the CAD files themselves,[8] which would make the creation of a stored copy of the CAD file an act of direct infringement.

Policing infringement will depend on the type of intellectual property involved. Removing files that infringe copyrights from large file-sharing sites should be governed by the Digital Millennium Copyright Act (DMCA), which provides a safe harbor for the file-sharing service and a procedure for having the file removed. In contrast, for trademark and patent rights, the file-sharing services have no safe harbor under current law. Thus, sites that store protected files on a server in the United States could be found liable for direct infringement of either of these rights. The threat of trademark or patent litigation could result in U.S. based file-sharing services to strictly monitor the files uploaded by their users.

On the other hand, the importation of files covering patented products will be difficult to police. It is unlikely that United States patent law will construe either the storage of these files in foreign locations or the act of selling the data (without any physical media) as direct infringement of the patent. Moreover, even if the patent specifically covers the stored CAD file, a recent Federal Circuit case ruled that the International Trade Commission (ITC) could not prevent importation of such files.[9] The court emphasized that the ITC only has the power to prevent the importation of “articles” that infringe, and ruled that the electronic transmission of data does not constitute the importation of an article.[10] The transmission of patented CAD files from foreign countries might warrant inducement liability, but only if the party transmitting the file is aware that the file is directed to a patent protected article. Even then, preventing the transmission of the offending files will only be possible through district court litigation, rather than a faster ITC proceeding.

Liability for Companies in the 3D Printing Industry

While companies in the 3D printing industry face familiar requirements to obtain intellectual property rights, they might face unique challenges to avoid liability for infringing the rights of others. Making, selling, and using 3D printers will invoke the same liability as performing these actions with any product, but companies in the 3D printing industry might also engage in certain activities that increase liability risks of indirect infringement based on the acts of their customers.

Indirect infringement occurs when a party contributes to or induces another to perform the infringing action.[11] Thus, a consumer’s use of a 3D printer to create items that infringe someone’s intellectual property rights can raise a question as to whether the company that sold the 3D printer contributed to or induced the infringement. United States courts have not yet widely addressed the issue of indirect infringement in the context of 3D printing. However, both Congress and the courts have been addressing analogous copyright infringement of music and video files for years. Below we discuss how certain activities might impact liability risks of indirect infringement for companies in the 3D printing industry.

Producing, Distributing, or Selling 3D Printers

Companies that simply manufacture, distribute, and retail 3D printers should be safe from any liability risks resulting from the actions of their customers. The law concerning both patents and copyrights allows entities to sell technology without being liable for indirect infringement, so long as the technology has substantial non-infringing uses and the company does not encourage infringement.[12] Trademark law also allows innocent manufacture and distribution of products that might be used to infringe trademarks, only finding liability for sales to people known to be infringing the trademarks.[13] However, companies that promote their 3D printers for infringing uses, or encourage customers to infringe will risk infringement liability for inducement, which applies to patents, trademarks and copyright.[14]

Hosting Websites with Digital Files for Consumer Download

Certain businesses may wish to provide customers with CAD files to encourage use of 3D printers. Creating such files in-house should not impose any unique intellectual property liability risks, but providing a file-sharing service for users could increase risks if those users are sharing files that infringe intellectual property rights. In particular, if the file-sharing service stores uploaded files for its users or distributes the files to other users, it could be liable as a direct infringer. In the context of copyright, the act of creating a copy of an uploaded file is an act of direct infringement. However, to shield internet-based enterprises from potentially enormous liability, Congress passed the DMCA in 1998, which provides a safe harbor for online service providers.[15] So long as the service provider takes certain actions to remove infringing works and police repeat offenders, the provider is not liable for the uploaded content of its user base.

However, the DMCA only applies to copyright, and there is no statutory equivalent safe harbor for trademark or patent infringement. Distributing CAD files of counterfeit products may result in direct trademark infringement, even if done unwittingly. Direct patent infringement for hosting CAD files may also be possible if the files themselves are patent protected, though most patents do not yet specifically protect such files.[16] A finding of indirect infringement for providing a file-sharing service is less likely, unless the company involved is knowingly inducing or profiting off the infringing activity of its users.[17]

Conclusion

As 3D printing technology continues to become more prevalent, companies that are impacted by the technology should pay close attention to how it influences their intellectual property liabilities and rights. Those in the industry should be careful not to promote the use of 3D printers to infringe the rights of others, and anyone manufacturing small products should consider tailoring their intellectual property strategy to address easy copying of their products.



[1] Saul Hansell, Beam It Down From the Web, Scotty, N.Y. Times, May 7, 2007.

[2] Louis Columbus, 2015 Roundup of 3D Printing Market Forecasts and Estimates, Forbes/Tech, March 31, 2015.

[3] E.g., Ritani, LLC v. Aghjayan, 880 F. Supp. 2d 425, 435 (S.D.N.Y. 2012). The plaintiff alleged that a former employer created two hundred copied jewelry designs by stealing associated CAD files.

[4] Sites for sharing or downloading CAD files, such as Thingiverse and Pinshape, have a multitude of files directed to popular fictional characters, such as Batman.

[5] See Justin E. Pierce and Steven J. Schwartz, IP Strategies for the Rise of 3D Printing, (April 15, 2015), https://www.mondaq.com/unitedstates/x/389148/Trademark/
IP+Strategies+for+the+Rise+of+3D+Printing
.

[6] See 17 U.S.C. § 501; 15 U.S.C. § 1114.

[7] See Daniel Harris Brean, Asserting Patents to Combat Infringement via 3D Printing: It’s No “Use”, 23 Fordham Intell. Prop. Media & Ent. L.J. 771, 789-90 (2013). Though transferring the files might not directly infringe, it would likely fall under inducement if the transferor is aware that the file covers a patented product.

[8] Osborn, supra note 8.

[9] ClearCorrect v. ITC, 810 F.3d 1283, 1289-90 (Fed. Cir. 2015).

[10] Id.

[11] 35 U.S.C. § 271(b)-(c) (defining patent inducement and contributory infringement); Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 794-808 (9th Cir. 2007) (discussing the tests for contributor and vicarious copyright infringement, and contributory and vicarious trademark infringement).

[12] See 35 U.S.C. § 271(c) (stating that contributory patent infringement only convers items that are “not a staple article or commodity of commerce suitable for substantial noninfringing use”); Vita–Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009) (holding “non-infringing uses are substantial when they are not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.”). See also, Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984) (holding “the sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes.”).

[13] See Inwood Labs., Inc. v Ives Labs. Inc., 456 U.S. 844, 854 (1982) (holding that a manufacturer or distributor is contributorily responsible “if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement.”).

[14] See 35 U.S.C. § 271(b) (stating that “[w]however actively induces infringement of a patent shall be liable as an infringer”); C.R. Bard, Inc. v Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 675 (Fed. Cir. 1995) (holding that one “induces infringement under § 271(b) by actively and knowingly aiding and abetting another’s direct infringement.”); Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936-37 (2005) (holding that “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”); Inwood Labs, at 854 (holding that “if a manufacturer or distributor intentionally induces another to infringe a trademark . . . [it] is contributorially responsible for any harm done as a result of the deceit.”).

[15] See 17 U.S.C. § 512.

[16] Professor Lucas Osborn of Campbell University School of Law recommends that companies consider protecting digital versions of their physical products. See Lucas Osborn, Digital Patent Infringement and the ITC, Patently-O, (April 30, 2014), patentlyo.com/patent/2014/04/digital-patent-infringement.html.

[17] See Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1926 (2015) (the court reiterated that “liability for inducing infringement attaches only if the defendant knew of the patent” and that the acts constituted infringement). See also, Metro-Goldwyn-Mayer Studios at 936-37 (the court emphasized that liability was imparted to the defendant because it promoted use of its service for infringement and took affirmative steps to foster the infringement).

 

Colin Wright was a 2016 summer associate at MBHB.

 

© 2016 McDonnell Boehnen Hulbert & Berghoff LLP

 

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