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Hall of Mirrors: 3D printing and IP law

By creating replicas of existing objects, 3D printers raise a host of intellectual property concerns. This article examines the protections afforded IP owners under current law in the face of the technological upheaval that lies ahead.

Gartner, Inc. touts itself as “the world’s leading information technology research and advisory company.” Accordingly, intellectual property lawyers should heed Gartner’s prophecy that the “escalation of 3D printing capabilities will change retail models and threaten intellectual property.” Gartner’s predictions include:

  • 3D printing will result in the loss of more than $100 billion per year in global IP revenue by 2018.
  • At least seven of the world’s top 10 multichannel retailers will be using 3D printing technology to generate custom stock orders by 2018.
  • The rapid advancement of 3D printing for the production of living tissue and organs (“bioprinting”) will foster major ethical debates.
  • There will be an explosion in demand for 3D technology to meet medical needs in underserved emerging markets (such as 3D-printed prosthetic limbs).

There is little dispute that 3D printing technology will give rise to multiple intellectual property issues in the coming years.

What is 3D printing?

0217-3d-printerTraditional methods of manufacturing require expensive machinery and molds or casts, and the high cost of such equipment acts as a barrier to entry into the market. It also restricts variation and customization. 3D printing (also known as “additive manufacturing”) creates or “prints” a desired object layer by layer using a variety of raw materials—including plastics, metals, clays, and even chocolate (Hershey and 3D Systems offer a chocolate 3D printer capable of creating elaborate shapes in dark, milk, or white chocolate).

3D printers work from a blueprint in the form of a computer aided design (CAD) file. The CAD file can be created manually or via sophisticated 3D scanners capable of scanning three-dimensional objects.

3D printing has already been widely used in major industries such as automotive (auto design and parts); aerospace (NASA sends 3D printers into space for emergency replacement parts and tools); healthcare (custom implants and orthotics); and military (3D printers provide on demand replacement parts in the field). Small business and consumer use will continue to increase rapidly as 3D printers become more affordable and certain key patents continue to expire. For those who think 3D printers are too big, clumsy, or cost-prohibitive for widespread adoption by consumers, recall the early stages of the computer revolution. (“I think there is a world market for maybe five computers,” said Thomas Watson, president of IBM—in 1943).

Because 3D printers copy and create replicas of existing 3D objects, they raise a host of intellectual property concerns. Many fear the erosion of non-legal deterrents to infringement (for example, high capital costs) will result in widespread infringement rendering traditional legal enforcement useless and devaluing intellectual property.

The music industry is frequently cited for comparison. Leading commentators argue 3D printing will change the manufacturing industry in much the same way digitization altered the music industry. The coming years will see a host of intellectual property cases, issues, and legislative activity involving 3D printing.

COPYRIGHT
“Pictorial, graphic and sculptural works”

U.S. copyright law protects original “pictorial, graphic, and sculptural works.”1 This includes three-dimensional works of art. Examples of such works include dolls, toys, jewelry designs, models, sculptures, and figurines. Traditional copyright laws will afford protection to copyright protected work duplicated by a 3D printer. Several variations merit discussion.

“Useful articles”

Copyright protection is generally not available to articles that have a utilitarian function. Copyright protection for such “useful articles” extends only to “features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” “Useful articles” are defined as those goods “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”2

Determining the scope of copyright protection for useful articles is a fact-intensive enterprise and yields indefinite results at best. Generally, the exclusion of “useful articles” from copyright protection will ensure that 3D printers can lawfully supply objects used in our everyday lives.

Computer software

Computer programs are protected as “literary works” under the Copyright Act.3 Both source code and object code are considered “literary works” because they are original works of authorship “expressed in words, numbers, or other verbal or numerical symbols or indicia.”4

The underlying CAD files that facilitate 3D printing constitute computer software eligible for copyright protection. Accordingly, U.S. copyright law will prohibit the unauthorized distribution of copyright-protected CAD files for use with 3D printers. In order to be eligible for copyright protection, the subject CAD file must meet the requisite “originality” requirement. The U.S. Supreme Court set a low bar for meeting the originality requirement in Feist Publications, Inc. v. Rural Telephone Service.5 In order to qualify, a work must: 1) be independently created by the author (as opposed to copied from other works); and 2) possess at least some minimal degree of creativity.

Commentators argue scans of 3D objects in the public domain will not pass the originality test:

There is a solid argument that no originality is involved in [scanned] design[s] at all. A 3D scan that is not modified cannot be compared to a photograph, which is an original (and copyrightable) work that combines reality with the expression of the photographer. A person who uses a scanner to get an exact copy of an object, by contrast, contributes nothing to the result.6

In support of their contention, Desai and Magliocca cite to Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc.7 In Meshwerks, the 10th Circuit held that a 3D scan using older technology was not sufficiently original to be entitled to copyright protection. The court explained Meshwerks’ process as follows:

Meshwerks took copious measurements of Toyota’s vehicles by covering each car, truck, and van with a grid of tape and running an articulated arm tethered to a computer over the vehicle to measure all points of intersection in the grid. Based on these measurements, modeling software then generated a digital image resembling a wire-frame model. In other words, the vehicles’ data points (measurements) were mapped onto a computerized grid and the modeling software connected the dots to create a “wire frame” of each vehicle.

Despite Meshwerks’ painstaking efforts, the court determined the resulting files were not original and therefore not amenable to copyright protection. According to the court, the files were “not so much independent creations as (very good) copies of Toyota’s vehicles” and “depict[ed] nothing more than unadorned Toyota vehicles—the car as car.” Based on this reasoning, a scanned 3D CAD file would presumably likewise not merit copyright protection.

Derivative works

A derivative work is a work based on or derived from one or more already existing works.8 The right to create derivative works is one of the exclusive rights of a copyright holder.9 At least one commentator has suggested CAD files created using copyrighted-protected 3D objects constitute derivative works.10 (“A CAD file distributor could thus be… infringing the copyright in the article itself by having made, copied, and distributed a derivative work of the article.”)

DMCA take-down notices

The Digital Millennium Copyright Act (DMCA) notice and takedown provisions provide a vehicle for copyright owners to force online service providers to discontinue infringing activity by third parties. Upon proper notification by the copyright holder, online service providers can insulate themselves from liability by removing infringing files. The DMCA’s “safe harbor” provisions may provide an effective tool for copyright owners to combat the online sale or distribution of infringing CAD files and/or 3D printed articles.

PATENTS
Direct infringement

Direct infringement is the unauthorized making, using, selling, offering for sale, or importing of the patented invention.11 Accordingly, the printing (making), sale, or use of patented products will constitute direct infringement.

While traditional direct infringement claims will be effective against large commercial 3D printers and sellers of patented products, this is not the anticipated business model. Rather, the head of the distribution chain will generally sell or distribute CAD files for end use by small businesses and consumers. This poses obstacles to relying on direct infringement theories.

Are sellers of CAD files offering for sale and selling the patented invention under §271(a)? If so, they would be directly liable for patent infringement. At least one scholar makes a compelling argument that CAD files are not the equivalent of the underlying infringing product:

The requirement under §271(a) that the sale be of “any patented invention” implicates the particular claims of the patent, since “[i]t is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” If a patent claims a physical product, that physical product is what must be sold or offered for sale in order to satisfy §271(a).12

If the sale of CAD files does not constitute direct infringement, patent holders are left with a high volume of small value direct infringement claims against end-user consumers. The music industry taught us that pursuing such claims is not practical or feasible. Accordingly, patent holders will likely be forced to rely heavily on theories of indirect infringement to attack the head of the distribution chain.

Indirect infringement

Section 271(b) makes it unlawful to “actively induce infringement of a patent.” Active inducement occurs when one encourages another to engage in infringing activity with “knowledge that the induced acts constitute patent infringement.”13 The requisite knowledge standard is one of “willful blindness,” requiring: 1) subjective belief that there is a high probability infringement exists; and 2) deliberate actions to avoid confirming such infringement. Despite the heightened knowledge standard, active inducement claims are a viable tool for pursuing flagrant sellers of CAD files having as their sole purpose the production of infringing products.

Contributory infringement

Contributory infringement is defined as the sale, or offer to sell, within the United States or the importation into the United States of “a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use.”14

In order to establish contributory infringement, a patent owner must show: 1) that there is direct infringement; 2) that the accused infringer knew that the combination for which its components were being made was both patented and infringing; 3) that the component has no substantial noninfringing uses; and 4) that the component is a material part of the invention.15

Observers question whether a CAD file will be found to constitute a “component” for purposes of contributory infringement in light of the Supreme Court’s narrow interpretation of “component” in Microsoft Corp. v. AT&T Corp.16 Microsoft construed the meaning of “component” in the context of §271(f). Section 271(f) makes it an infringement to export unassembled “components” of a patented invention to induce assembly of the invention outside the United States in a manner that would infringe the patent if such combination occurred within the United States.

Microsoft involved software that allegedly rendered the subject computers it was installed on infringing. Microsoft denied liability on the grounds that the subject software, which was sent overseas and installed abroad, did not constitute a “component” within the meaning of §271(f). The Court adopted a narrow interpretation of “component” in the software context. According to the Court, software constitutes mere information and detailed instructions akin to “a blueprint… schematic, template, or prototype.” Accordingly, software cannot constitute a “component” until such time as it is expressed on a computer-readable medium. CAD files for use with 3D printers are amenable to the same argument.

LICENSING MODELS: IF YOU CAN’T BEAT ‘EM…

The inherent difficulties of relying on traditional legal theories when combating infringement in the digital age has caused certain manufacturers to borrow from the iTunes playbook. Can a licensing model succeed in the 3D printing arena despite the availability of free alternatives? Certain scholars believe it can:

Although the entertainment industry makes a credible complaint that “it is impossible to compete with free,”… if given the opportunity, rational consumers will purchase digital content that is appropriately priced, free of viruses, and of high quality. With physical products, consumers will consider printable designs that they know will work and are virus free, if those designs are priced appropriately.17

Consistent with this theory, Hasbro partnered with 3D printing pioneer Shapeways to make its popular “My Little Pony” brand available to fans online via 3D printing. Nike uses 3D printing technology to produce high-performance sport cleats. Such cleats will inevitably be available for home production in the near future—swoosh and all—via licensed CAD files.

Are predictions of the demise of IP due to 3D printing greatly exaggerated? (See VCR and Napster.) Or will 3D printing be the next “internet” and spawn a new industrial revolution with evolving forms of intellectual property? Time will tell.


MICHAEL M. LAFEBER co-chairs Briggs and Morgan’s Intellectual Property section. He specializes in defending and maximizing the value of his clients’ intellectual property. Mike has litigated more than 100 intellectual property-related matters in United States district courts around the country.  He is a member of the Minnesota Intellectual Property Law Association’s Board of Directors and co-chair of the ABA’s Intellectual Property Roundtable Committee. 


Notes

1 17 U.S.C. §102(a)(5).

2 17 U.S.C. §101.

3 17 U.S.C. §102(a)(1).

4 17 U.S.C. §101.

5 Feist Publications, Inc. v. Rural Telephone Service, 499 U.S. 340 (1991).

6 Devan Desai and Garard Magliocca, Patents Meet Napster: 3D Printing and Digitization of Things, 102 Geo. L.J. 1691 (2014).

7 Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258 (10th Cir. 2008).

8 17 U.S.C. §101.

9 17 U.S.C. §106(2).

10 Daniel Harris Brean, Asserting Patents to Combat Infringement Via 3D Printing: It’s no “Use” 23 Fordham Intell. Prop. Media & Ent. L.J. 771.

11 35 U.S.C. §271.

12 Supra note 10.

13 Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011).

14 35 U.S.C. §271(c).

15 Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010).

16 Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007).

17 Supra note 6.

 

 

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