3D printing: on solid ground

Just as the rise of digital media reshaped the landscape of the music and video markets, 3D printing and 3D scanning are already revolutionising the production and sale of physical objects.

Unlike familiar laser or ink-jet printers, 3D printers create a 3D object by additive manufacturing, building layer upon layer of actual material (rather than mere ink). Each layer is a thin slice of the item; the multiple layers are gradually printed one on top of the other to create the finished article.

Using a 3D printer, the output is generally a plastic solid, easily mistaken for an item that has been injection-moulded. However, 3D-printed objects require no physical mould, meaning that a single 3D printer can produce an unlimited catalogue of different products. While injection moulding may still be cheaper for large volume production, for low volume ‘prototype’ runs 3D printers are already the cheapest option.

The cost of commercially available 3D printers, the speed at which they operate, and the historical limitations of being able to print relatively simple solids, have meant that their use in industry is not yet widespread. However, new developments in 3D printing are taking these technologies further forward. Already parts can be printed in a range of materials including metal and even living material. Designs with moving parts that would be impossible to make through injection moulding can be 3D printed with ease.

As the limitations of 3D printing are steadily overcome, and costs fall, the volume below which it makes sense to 3D print instead of injection mould is going to get gradually higher until 3D printing becomes the dominant means of industrial manufacturing. For high-tech manufacturing (aerospace, performance automotive, etc) that tipping point has already been reached, and the trickle-down to other parts of the supply chain is inevitable.

Looking further ahead, as the availability of domestic 3D printers becomes more widespread, manufacturers may promote the home-downloading and printing of replacement parts or accessories. Already an enthusiast can, for a few hundred pounds, build a 3D printer which is capable of manufacturing a number of items including toys, phone cases and spare components for existing goods.

The potential for 3D printing in industry is clear, but what are the legal implications of this technology? When you can print any kind of physical object in your own home, how are designers and manufacturers to protect their intellectual property rights?

Copyright

Using a 3D scanner and 3D printer, it is possible to take a digital copy of a real object and then produce multiple copies or share the resulting digital model file over the internet in the same way that other music and picture files are currently shared.

Where the object being scanned, shared or printed is a sculpture, architect’s model or similar, it is likely to be an “artistic work” within the meaning of section 4 of the UK Copyright, Designs and Patents Act 1988 (CDPA). Any copying of that object (or a substantial part) without the copyright owner’s permission would, on the face of it, be an infringing act.

It is relatively easy to imagine breaches of copyright occurring using a 3D printer—commercial “sculptures” of objects or characters from popular culture (action figures, toys, dolls, etc) are likely to be ready targets for duplication using 3D printers. However, in the UK at least, the courts have so far been relatively hard to persuade that anything that is mass-produced should be afforded protection via copyright as an artistic work. Unless that position changes, copyright might not prove to be the ‘magic bullet’ to address the mass copying of 3D objects.

Unregistered design rights

Unregistered design rights exist in the shape or configuration of an object (section 213[2], CDPA). Clearly, any copying of an object using a 3D scanner and 3D printer will necessarily result in the shape of the object being duplicated. To the extent that any design rights subsist in the object (not necessarily a simple question given case law in this area), then any such copying without permission from the owner of the design right will be an infringement.

A number of brands successfully sell their goods at a premium based solely on the quality of design, and already have to protect themselves against unauthorised imitations. At present, it is generally economic only for such unauthorised imitations to be made in large quantities using industrial manufacturing techniques, but 3D printing is rapidly changing the status quo.

The CDPA limits the scope of unregistered design to an “exclusive right to reproduce the design for commercial purposes” in section 226(1). Therefore, domesticreproduction of a design for personal use might not constitute infringement. If the widespread adoption of domestic 3D printers makes it possible for an individual to copy a designer bracelet, belt buckle or phone case in the home just by hitting ‘print’, then the market for such goods will be radically affected.

The “must fit” and “must match” exceptions (section 213[3][b] of the CDPA) provide further freedom for those who may use 3D scanners or 3D printers to produce spare parts, even where commercial use of the printed item is to be made. Provided that printed parts are not held out as having been produced by the manufacturer they can be created without infringing design rights wherever the shape of the object is dictated by its function—the clearest examples being objects such as a mobile phone case which must necessarily be a certain design in order to fit a specific model of mobile phone.

Registered design rights

Registered designs are protected under the Registered Designs Act 1949 (RDA). To qualify for protection, the design in question must have been registered with the UK Intellectual Property Office, which will assess whether the design is new and of sufficiently individual character.

“The courts have so far been relatively hard to persuade that anything that is mass-produced should be afforded protection via copyright as an artistic work.”

However, even registration will not necessarily protect against domestic copying because section 7A of the RDA provides that a registered design is not infringed by copying for non-commercial purposes and, as with unregistered designs, the RDA provides a “must fit” exception (section 1C). Furthermore, if a design is dictated by technical function, it may not even qualify for protection in the first place.

Patents

It is easy to imagine that patent protection is relevant only to cutting-edge computer processors or biotechnology and not 3D printers specialising in the production of solid plastic shapes. But think, for example, of the kitchenware offered by homeware retailers such as Betterware, Lakeland, etc, which are often relatively simple objects that could easily be printed using a 3D printer.

More worryingly, 3D printers may be used to replicate working machines with interlocking parts. Already, an array of complex 3D models ready for printing can be downloaded from the internet. Over time, these libraries of objects will increase in size and complexity to the point where patent owners may notice a significant impact on sales of more traditionally manufactured merchandise.

Software copyright

The software underpinning 3D printing is itself a potentially complex area for IP and technology lawyers. It is already possible to create digital 3D object files on a computer and upload such files to the internet to be shared and downloaded. Questions immediately arise over the ownership of such files, and whether the hosting and sharing of the files themselves, without being printed, constitutes an infringement of rights attaching to the real-world object that the file represents.

A need for new law?

As we noted above, where digital copying had a profound transformative effect on the markets in music and video, the rise of 3D printing and 3D scanning is likely to do the same for the production and sale of physical objects. This will create both new opportunities and new threats for manufacturers. 3D printing offers the potential for a fast and versatile manufacturing infrastructure. For innovative and forward-thinking businesses, these new technologies offer new opportunities; already there are online stores selling 3D object files to domestic users.

Businesses ignore the threat of 3D printing at their own risk. Such an agile and fast-moving technology makes IP rights in physical objects increasingly vulnerable to infringement.

If 3D designs are to be truly safe from abuse, legislators face the unenviable task of updating IP legislation to address the advances in the fields of 3D printing and 3D scanning. Just as the law needed to be updated to address the reality of games console “mod” chips, which defeated technical measures designed to protect copyright works, there are good arguments that changes are needed to clarify the law in an era where duplicating objects is no longer an act requiring an expensive industrial process or skilled craftspeople.

In the meantime, manufacturers and designers should take care to ensure that their IP is protected as far as possible under the current regimen and seek out ways to meet the challenges posed by these technologies and to profit from the new markets they offer.

Gareth Stokes is a partner at  DLA Piper. He can be contacted at: gareth.stokes@dlapiper.com

Daniel Cowley is an associate at DLA Piper. He can be contacted at: daniel.cowley@dlapiper.com