updated on 12 September 2017
QuestionUnauthorised 3D printing – what use are IP rights?
3D printing technology is increasingly being used for commercial purposes. Many of the printing systems used are only employed at the prototyping stage, for example, to provide a rapid and accurate method of perfecting a design before mass production methods are employed, with take-up particularly prevalent in the fashion, jewellery and automotive industries. The potential uses of 3D printing go much wider and this provides both opportunity for innovation and a concern for rights holders who worry that unlawful reproduction of their products will become too easy and consequently too hard to combat.
From a counterfeiting perspective, 3D printing technology currently allows easy replication of items using simple materials, making items like buckles, jewellery and reading glasses particularly suitable. Reproducing the designs is easy, exact and fast on a small scale. Counterfeit goods made of basic materials can be produced with precision and look exactly like the real thing. Cheap, industrial scale production to churn out all but the most simple of consumer goods is still a way off. As the technology develops and becomes cheaper, however, counterfeiters will be able to use 3D printing to mass produce goods in their home markets, reducing shipping costs and avoiding potential customs seizures. Enforcement against counterfeiters is likely to face challenges, particularly where multiple production and distribution sites are used within jurisdictions.
Members of the public are also able to produce their own articles without purchasing them directly from retailers. There are already file-sharing websites which allow transfer of the digital files (CAD files) needed to produce copies on the printers. As the technology becomes more accessible, consumers may increasingly use those files to create copies of goods for themselves. Preventing that will be difficult. In most cases, exemptions and exceptions will apply for non-commercial, home-produced copies. That is true of patent, trademark and design law. The one exception is the copying of ''artistic works'': home users cannot make 3D prints of these specific types of products under copyright law as it stands (although, that is currently under government review).
Suppliers of the 3D printers (those who make and sell the printing equipment) will rarely be caught; the current law of joint tortfeasorship is unlikely to make them liable, provided their printers can be said to be for substantially legitimate uses. There is, however, potential for enforcement of copyright and even patent rights against CAD file sharers.
Design law does not recognise the concept of "confusing similarity" which is peculiar to trademark rights. It requires instead that the "same overall impression" be created between the infringing product and the protected design. It also doesn't require that the object be inherently distinctive (although it must be novel). This makes it a particularly suitable tool for preventing unauthorised reproduction of 3D printed products. Such products tend to be identical in appearance, easily creating the ''same overall impression'', but can also be lacking in the level of distinctiveness necessary for trademark registration and enforcement.
For fashion items in particular, unlawful 3D printing (like other modes of unlawful reproduction) will often best be stopped by registered and unregistered design rights. Fashion designs which are unique should be registered in the European Union or United Kingdom to gain long term protection of up to 25 years. It is important not to wait to file for registration - an application must be filed within the 12-month window following release of the design into the public. Without that, unregistered design rights can still be relied on, but they offer more limited protection in the United Kingdom (the test requires an exact or substantial copy of the design) and are of a shorter duration - 10 years in the United Kingdom and three in the European Union.
3D printed objects which are later unlawfully affixed with a word or logo mark will be protected by a trademark registration covering the same or similar word or logo, for the same or similar goods or services. Printed objects which reproduce logo or word marks as part of their shape, such as badges/charms to be clipped to handbags, will be infringing in the same way, without the appropriate licence.
For distinctive product shapes, 3D trademark registrations (which don't necessarily cover the word or logo but can protect just the product shape itself) are also possible. By way of example, the Coca-Cola and Johnnie Walker bottle shapes and L'Oréal's Trésor and Miracle perfume bottle shapes are all protected by trademark registration in the European Union. The registrations cover the shape of the products themselves and not their packaging. These registrations may, however, have limited enforcement value against objects sold with other packaging and design features that clearly distinguish the goods; features which detract from the shape and make confusion or association by the consumer less likely.
3D shape registrations can also be difficult to obtain: shapes which are wholly necessary to perform a function (such as a basic chair shape) are barred from registration altogether. In addition, to be protectable under trademark law, shapes have to be distinctive – unique enough that they are capable of being seen by consumers as a badge of origin. Without this, registration can only be obtained by proving that a reputation has built up in the shape (ie, that the shape has become so recognisable that consumers can identify it as belonging to a single trade source). Demonstrating this is no small feat, particularly in the United Kingdom, where case law has traditionally set a high bar for proving the "acquired distinctiveness" of a shape mark. The European IP registry and courts seem, for now, to accept a slightly lower standard of proof than the United Kingdom regarding acquired distinctiveness. However, to secure a pan-EU registration for a shape mark, this proof is needed for every member state. This can be hard for all but internationally iconic shapes that are very widely marketed and distributed. That is not to say that 3D registrations could not be secured at a national level where there is such proof.
It is possible that the divergence between UK and EU law on this issue will widen post-Brexit, but for those shapes that are presently registered at EU level, it seems likely that the protection will, at least initially, continue to be recognised in the United Kingdom as part of any transition.
Copyright, to the extent a product is covered by it, can be an effective means of preventing unauthorised 3D printed copies. They key consideration is whether or not the original object can be classed as an “artistic work” (this discounts many manufactured articles, but specifically protects “sculptures” and “works of artistic craftsmanship''). A number of products which can be reproduced using 3D printers, including pottery and woollen jumpers, have been held to be ''works of artistic craftsmanship'' in the United Kingdom. Jewellery is likely to fall under that category. More functional consumer items often will not be, for example, a prototype of a sofa was found not to be a work of artistic craftsmanship in the United Kingdom. Producing a 3D object of a 2D artistic work such as a drawing, painting or collage will also be an infringement (where the design of the original work itself is protectable under copyright).
Although an object itself may be not protectable under copyright, the image present on the face of the object might be. These have been found to be protected by copyright where the design has an independent character, for example, the surface of a badge (as in The Flashing Badge Company Ltd v Brian Groves (2007)).
Copying a protected work and providing copies to the public are infringing acts. Anyone (including consumers making copies for private use) engaged in these acts will be infringing regardless of whether or not they knew they were carrying out an infringing act or intended to do so, unless they have a defence or an appropriate licence.
Suppliers of 3D printers are not likely to be infringing copyright in the same way suppliers of twin-deck tape recorders, clearly intended mainly to allow tape to tape recording, were exempted from infringement of music rights in CBS Songs Ltd v Amstrad Consumer Electronics Plc (1988). Copyright is, however, likely to protect the digital CAD files created from the 3D artistic work. It is clear that under the Copyright, Designs and Patents Act 1998, the fact that the work is in a different form is neither here nor there (otherwise musical scores could be copied and distributed en masse). It will be an infringement to use a 3D ''artistic work'' to create an unauthorised 2D file, for example.
Patent registration may be an effective weapon against unauthorised commercial production of products by 3D printing.
Keeping, using, offering for disposal or disposing of a patent-infringing product will be an infringing act, so simply producing a 3D-printed copy of a patented product without permission (other than for private purposes) could be caught under the current law.
Again, suppliers of 3D printing equipment are unlikely to be caught, unless they are aware that a specific, infringing product would be copied using the equipment. That said, those who share digital CAD files may be infringing as the files provide the "means relating to an essential element of the invention" as set out in the Patents Act (1977). File sharers providing the 'ingredients' or 'blueprint' to produce a protected invention may arguably be said to be infringing where it was obvious to a reasonable person the file would be used to make an infringing product.
An array of law exists which will help protect the IP value of objects from the scourge of unauthorised 3D printing in the same way intellectual property laws protect objects produced by more traditional means.
That is not to say that intellectual property rights won't, in some cases, fall short of what is needed to combat counterfeiting by 3D printing:
Jocelyn Clarke is a trademark attorney at Taylor Wessing. She is based at the firm’s London office.