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Obstacles And Opportunities From 3D Printing

Fri, 01/24/2014 - 10:16am
Jonathan Moskin, Partner, Foley & Lardner

Imagine you want to get your child a new Star Wars action figure for an imminent birthday. However, you don’t want to wait in lines at stores or even wait for new Sunday delivery from the Postal Service. Or (more sinisterly) imagine that you want a new non-metallic firearm to evade TSA security and your flight is leaving in the morning. Instead of heading to the nearest store, you just download a CAD file, turn on your 3D printer and go to sleep. In the morning the product is ready and waiting. Such scenarios, seemingly snatched straight from science fiction, are already a reality. Indeed, it is already possible to find online computer files enabling the printing of toys, appliance parts, jewelry, food and — yes — guns. Similarly, but at the opposite end of the spectrum from the ridiculous to the sublime, 3D printers can generate new lung tissue, bone replacements and other living structures. We may soon be able to print medicines at home. The falling prices of personal printers and other factors are making them increasingly accessible. Technical advances promise better printed products too.

3D printing comprises a variety of so-called “additive” manufacturing processes allowing the accretive creation of products by adding layer upon layer of material as an alternative to traditional manufacturing methods. Computer files can map the geometries of pretty much any given thing and generate digitized cross-sections of the virtual model that can be applied in layers of various “inks”, be they plastics, metals or even living cells. By referring to 3D printing as an additive process, it can be distinguished from those traditional manufacturing methods, such as casting or machining, in which material is removed by techniques such as cutting or drilling (subtractive processes).

Thus far, there appears to have been very little litigation concerning products made using such methods, but the author has had one such case already and this is bound to change. Although current limitations on the technology make it difficult to mass produce items using additive printing techniques, costs will come down and quality will go up, making the process and products more prevalent. While it may make little sense (now) for Lucas Film (for instance) to commence suit against an individual making a single Darth Vader figure in his or her kitchen, as the technology improves, soon it may be more cost-effective for small commercial enterprises to make such parts in commercial quantities and more cost-effective (and imperative) to pursue legal enforcement actions against them. And as more individuals are able to acquire 3D printers for personal use, it will likely be more common for web-sites to make available CAD files of popular products for downloading and home printing — just as commercial websites currently make available digital copies of music and movies. Pirate Bay, best known as a purveyor of pirated music and movies, has already announced plans to make available image files for downloading. Moreover, local print shops (on an ad hoc or regular basis) will increasingly be able to provide distributed manufacturing services on high-quality 3D printers. It may then increasingly make sense for IP owners to take action against those entities distributing CAD files or providing such printing services.

In something of a hybrid, in a recent litigation handled by the author, the defendant mass-produced infringing action figures and replacement parts for use in connection with the client’s game. The defendant made digital copies of the client’s products (or parts of those products), first printing prototype copies using 3D printers, and then using these printed prototypes to make masters for mass-production by traditional means. The point is that, with relatively little skill and at relatively low cost, one can copy quite complex shapes and properties and produce (or mass produce) them with precision.

Precisely because of the ease with which 3D printing and the digitization of the physical products facilitates widespread copying, certain traditional manufacturers may suffer consequences not unlike those sustained by the music and film industries as a result of digital file sharing. However, the very companies that might be most at risk to be victimized by the new technology may also find the greatest opportunities from distributed manufacturing on 3D printers — not unlike the way Apple and others have found opportunities to turn a profit from digital music and video distribution.

Manufacturers may be able to get ahead of this wave and provide value-added opportunities to their customers from the distributed manufacturing 3D printing permits. Merging practices derived from social media marketing and new methods of distributed manufacturing, a toy maker, for instance, can have available at select stores not only the latest characters it mass produces in its factories but also CAD templates for fans to use and adapt to generate customized products — derivative works, as it were. The customized products can be printed on the spot.

Just as marketers have begun to allow and encourage customers to use social media tools to generate their own content (for example, videos expressing the customers’ experiences with and loyalty to a product), customers can help generate entirely new creative concepts and product development ideas. The same toy company that owns the intellectual property in a character or line of characters can use the same social media tools to encourage fans to participate in development of new products that can be made not only in ones and twos at a local printer, but mass-produced for a wider national or international audience. Traditionally, of course, manufacturers were reluctant (and rightly so) to accept idea submissions that might cloud their ownership of their own creative processes. However, in the age of social media and user-generated content, intellectual property owners are learning to set aside such qualms. Provided the transfer of such new ideas and designs is accompanied by adequate waivers or assignments of rights, the age of 3D printing thus may open an era in which customers and fans can be directly involved in the design process and be rewarded directly for their efforts.

It should come as no surprise that intellectual property owners concerned that their valuable product designs will be copied and traded on the internet (like digital music files and movies), need to focus on the available legal tools to protect product designs — most notably copyright, design patents and laws protecting trade dress in product configurations. (Alternately, lawyers representing those contemplating copying, need to be mindful of the same legal limitations and obligations.)

Copyright affords protection for original works of authorship, including sculptural works such as toys and models. This would include figures such as the Star Wars characters noted above or certain types of jewelry designs and was precisely the issue in the litigation mentioned already, where the defendant was found to have infringed certain characters, the masters for which were produced using 3D printers. However, copyright is limited to exclude “useful articles,” such that a party printing replacement appliance or automobile parts (or a gun) would likely fall outside the scope of copyright. To be protectable, the test is whether a product’s non-utilitarian or aesthetic features are physically or conceptually separable from its utilitarian features. Nor does copyright protect ideas. Thus, certain designs are denied copyright protection because of the so-called “merger” doctrine, under which the design concept is said to merge with the embodiment of the design itself.

To the extent copyright is available, owners have increased incentive to register their works particularly because, in the age of distributed manufacturing (in limited quantities) the threat of statutory damages or attorneys’ fees may be critical to limit such copying. There may be limited incentive to spend the resources to prevent small-scale copying on 3D printers; but the opportunity to recover statutory damages and attorneys’ fees not only may help justify legal action by intellectual property owners but may provide sufficient disincentives to copyists to persuade them to turn off their printers.

3D printing technology may present other interesting questions as to the extent of direct and contributory liability. A party that creates a CAD file or one who then downloads it from the internet and prints a 3D copy would appear to be most at risk for unlawful copying. The mere transformation of media from physical to digital should be no bar to liability. However, less clear may be whether a party infringes merely by uploading the file or simply hosting a website where the file can be accessed, or (in the scenario envisioned above) whether a local print-shop is liable where it facilitates copying by renting out its 3D printers to the public.

Design patent may also be a key tool to prevent digital copying, particularly for those producers of utilitarian items that can be reproduced on 3D printers. Design patents protect ornamental designs of virtually any kind, or, as the statute defines the subject matter, a design patent can protect any “new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171. A design patent can protect the configuration or shape of an article or the surface ornamentation on an article (or both), and a design patent can be tailored to claim only the specific parts of an overall configuration that are likely to be copied.

Not unlike copyright, the test of design patent infringement is (and for more than a century has been) substantial similarity as viewed by an ordinary observer. Although the scope of a design patent is largely limited by what is shown and claimed in the patent drawings, in the case of 3D printing, where copyists may have an incentive to generate copies of replacement parts for appliances, automobiles or the like, it may well be that all that is most needed is a scalpel-like legal tool to prevent copying of the exact item.

Trademarks and trade dress rights in product configurations may well overlap with copyrights or design patents. However, to be protectable under trademark law, the configuration must have become associated with the claimed owner. Following Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), and TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001), as well as the 1999 amendment to Section 43(a) of the Lanham Act limiting protection for unregistered designs, 15 U.S.C. § 1125(a)(3), it is both more important and more difficult to prove secondary meaning and non-functionality of the design for it to be protected.

In the context of 3D printing, rights may also be more difficult to enforce given the need to prove likelihood of confusion, which is the test of infringement. Simply printing a copy of a figure at home for personal use may not be actionable because no one is confused. Liability may, perhaps, only arise when the party making 3D prints is selling them on the market to third parties. However, a party that creates or uploads the file may be contributorily liable if it is encouraging unlawful copying by others, and the same logic may apply to a website that hosts the file or a local print-shop that rents out its 3D printers to the public.

Chuck Hull is often credited as the inventor of 3D printing back in the 1980’s, a process he called stereolithography. With 3D printing just emerging as a viable broad-based technology, it is, of course, impossible to predict the many ways in which the processes will be used or abused. However, as 3D printers create entirely new economies of scale based on the individual unit rather than mass production alone, intellectual property owners can already begin to take steps to take advantage of the technology and to guard against its risks. Gutenberg’s movable type turned the world upside down (although he could scarcely have grasped the changes he wrought) by permitting the mass production of the printed word. The industrial revolution furthered this process of building an economy on the model of mass production. So too, new printing technologies may remake the world as we know it — however, by inverting this model and printing one product after another — one item at a time. The legal challenges promise to be interesting. 

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