Maryland Bar Bulletin
Publications : Bar Bulletin : March 2014

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As each decade passes, new technologies are brought to the marketplace and change our way of life. Over the past decade or so, we have seen the widespread adoption of the iPhone and other smart phones, social networking via Facebook and Twitter, and the iPad and other tablets. New legal issues regarding ownership of consumer content and privacy of consumers are being tackled every day. Now, advancements in 3D printing technologies are on the verge of placing a cost effective 3D printer in the consumer’s home in the next five to ten years, giving consumers new capabilities to manufacture some items right in their homes. Intellectual property law will be challenged and may even be amended to keep up with these changes in 3D printing technology. 

Hundreds of years ago, product designers developed a set of detailed drawings with multiple views of the product. From these detailed drawings, highly skilled machinists and factory workers manufactured the product. Over at least 25 years ago, computer aided design made possible the creation of 3D electronic design models of a product, and computer aided manufacturing allowed for machining in a factory setting of that product out of selected materials. 3D scanning technologies were also implemented to inspect actual products, and such scanning data was then used to perform quality control checks against the 3D electronic design models. 

Today, the progress being made in 3D printing technology offers the potential to allow consumers to manufacture some types of products in their homes. 3D printing is a process of making a 3D object of virtually any shape from a 3D digital model. 3D printing – also known as additive manufacturing – is achieved using a process where successive layers of material are laid down in different shapes, effectively building up a solid object. 

Consider the example of a simple toy car. Initially, a consumer can download or otherwise obtain use of a 3D design model of the product from an online database. But eventually, a 3D scanner can be used to scan an existing product and create the 3D model. A consumer can create multiple copies of a toy car that is already sold in the marketplace by a popular brand. Sales of the branded toy car will be impacted if millions of consumers can simply 3D print the toy car.   

Intellectual property rights regarding product design and manufacturing using 3D printing will become even more critical. A well thought out strategy to protect intellectual property rights will be needed, and protection with respect to copyrights, trademarks, and patents should be considered.   

Copyright law may protect the design of the toy car. Copyright law protects works of authorship fixed in a tangible means of expression. Copyright protection applies to objects copied using 3D printers that are purely design-oriented. For example, a party who scans and prints a copy of an artist’s sculpture will likely infringe the artist’s copyright. The scan itself is also a copy of the artist’s sculpture. Similarly, 3D design files that direct 3D printers to print unique sculptures and other artistic objects enjoy copyright protection – as do the products that are 3D printed from these files.  

However, useful items are ineligible for copyright protection. For example, a chair is useful and not protectable. However, a design on the back of the chair may be ornamental and is protectable. Similarly, a coffee cup is useful but may also include ornamental design items that have copyright protection.

Trademark law may protect the brand used in connection with the toy car. Trademark law protects a party’s use of its trademark for its products and services from likelihood of confusion with another party’s use of a mark. While such trademark protection is available, the toy car made by the consumer may not even have a brand. But trademark law also provides protection for trade dress so long as it is non-functional. One example is the shape of the Coca-Cola bottle. So there is a possibility that some 3D printed products may infringe upon trade dress of another party.     

Patent law protects novel and non-obvious inventions. Patents may exist on the printing processes, and the 3D printer companies can fight amongst themselves with respect to their 3D printing technologies. But the consumer is granted the right and license under the patent rights to use the 3D printer that the consumer purchases. The printer manufacturer may try to provide a limited license for personal use only, and not for commercial resale. But some consumers will likely use the 3D printers to make and sell the toy cars anyway. The printer manufacturers may modify the printer to refuse to print, just like a music player refuses to play, if the digital rights do not evidence appropriate payment by the consumer.  

A 3D printed product may be substantially similar to a patented invention and be infringing upon those patent rights. In that case, a patent holder may send a cease and desist letter and even bring a lawsuit against the consumer who manufactures an infringing 3D printed product. But the manufacturer will now be placed in the position of policing and protecting its rights against many individuals that may not be so easily identifiable – each able to more easily manufacture the product without the need and expense of complex molds and tooling. 

One can envision that the operator of the online website for 3D design models will desire no liability for the infringing 3D design models in its database. For comparison purposes, under the Digital Millennium Copyright Act (DMCA), a copyright owner may have infringing material taken down by sending notice to a content host, such as YouTube. Patent law could be amended to provide for a patent notice and takedown system would be much like that established by the DMCA. 

In conclusion, intellectual property law may need to be amended to address the issues that arise from making 3D printing capability available to consumers in their home. Regardless, one must have a well-developed strategy for intellectual property protection – one which combines the various forms of protection as best applicable to each unique 3D printing situation.

Vasilios Peros is founder of Law Office of Vasilios Peros, P.C. His practice is focused on business, technology and intellectual property law.

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Publications : Bar Bulletin : March 2014

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