The Applicability of Intellectual Property to 3D Printing
3D printing (or additive manufacturing) refers to technologies that produce three-dimensional objects by depositing layer upon layer of material during the manufacturing process. New applications for 3D printing emerge weekly, if not daily. Some have predicted that 3D printing will have a greater impact on economies and society than the Internet.1 For instance, 3D printing could eliminate the need to ship repair parts from a manufacturing facility to a distribution center or even an end user. The ECONOMIST has called 3D printing the “third industrial revolution.”2
3D printing primarily implicates three types of intellectual property: copyrights, patents, and trademarks/trade dress. A brief discussion of the 3D printing process will assist in explaining the applicability of each type to 3D printing.
The process starts with a 3D model—or digital blueprint—for a physical object in a computer file. A designer may create a 3D model by using a computer-aided design program. A CAD program eliminates the need to make a physical prototype. Alternatively, a 3D scanner may collect digital data on the object’s shape and generate the digital blueprint. A designer may alter that data and change some aspect of the scanned object’s shape. When completed, a 3D model controls how a 3D printer applies successive layers of material to make an object. So a 3D printer converts a digital blueprint into a physical object called a 3D print.
3D printers can use a variety of materials, including plastics, ceramics, metals, foodstuffs, and biological tissue. Different technologies utilize different materials in different ways. As an example, a laser-based stereolithography process typically employs photopolymer resins that react with the laser and harden to form a solid.3 As another example, a freeform fabrication process generally uses a heated nozzle that melts a metal or plastic filament and then deposits the molten material at predetermined locations, building an object from the bottom up.
An understanding of the respective rights conferred by copyrights, patents, and trademarks/trade dress will aid in considering the applicability of each to 3D printing.
Copyright protection applies to “original works of authorship fixed in any tangible medium of expression.”4 So copyright rests on three elements: originality, expression, and fixation. Copyright law sets a low threshold for originality. Originality simply requires that the creator produced the work by his or her own intellectual effort rather than copying an existing work.5 As for expression, a copyright protects a specific expression of an idea but not the idea itself. As for fixation, the work must exist in a form capable of reproduction (or copying).7
Copyright law explicitly excludes from protection ideas, concepts, principles, procedures, processes, and methods of operation.8 In addition, copyright law does not protect facts, titles, names, slogans, and short phrases.9 Similarly, if only one or very few ways exist to express an idea, copyright law does not provide protection because the expression has “merged” with the idea.10
Nevertheless, many forms of expression enjoy copyright protection, including literary, musical, and dramatic works, pictorial, graphic, and sculptural works, motion pictures, sound recordings, and architectural works.11 Computer programs generally fall within the category of literary works.12 Jewelry designs generally fall within the category of pictorial, graphic, and sculptural works.13
Copyright protection applies to unpublished as well as published works.14 In general, copyright protection exists from the moment of creation in a tangible medium of expression until 70 years after the creator’s death.15
The term “useful article” refers to a product with a utilitarian purpose or function that goes beyond portraying appearance or conveying information.16 Examples include clothing, furniture, eating utensils, and mechanical tools. A useful article’s design constitutes a pictorial, graphic, or sculptural work—and thus protectable by copyright—only if the design incorporates aesthetic features that can exist independently of the article’s utilitarian aspects.17 For useful articles, copyright protection exists only to the extent the article’s aesthetic features can be identified separately from its utilitarian aspects.18
For instance, copyright protects a printed design appearing on a coat because the design exists separately from the coat’s utilitarian purpose. But copyright does not protect the coat’s overall design since the coat serves a utilitarian purpose.
A copyright gives the owner the exclusive right to, among other things, make copies, distribute or sell copies, and prepare derivative works.19 The term “derivative work” refers to a new work based on or derived from one or more already existing works.20 Common derivative works include translations, abridgments, motion pictures based on books, sculptures based on drawings, drawings based on photographs, and new versions of computer programs.21
Copyright may protect the computer file containing the 3D model.22 Copyright law defines a “computer program” as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.”23 The computer file containing the 3D model satisfies that definition because that file includes the instructions used by the computerized printer to make the 3D print.24 But only the file parts “that represent nonessential, creative expression receive protection.”25
If a designer uses a CAD program to produce a 3D model for a creative object (as opposed to a useful article), that effort should suffice to satisfy the originality requirement, and copyright should apply to the 3D model.26 An exception may apply if the 3D model produced with the CAD program constitutes one of only a few ways to digitally depict the object such that the expression and the idea have “merged.”27 If that exception does not apply, someone who copies the 3D model and makes a 3D print of the creative object from the model infringes, first, by copying the computer file and, second, by printing the object.28
In contrast to a 3D model produced with a CAD program, if someone uses a 3D scanner to generate a 3D model, copyright should not apply to the 3D model because it lacks sufficient originality to qualify for protection.29 Still, if copyright protects the scanned object, using the 3D model to make a 3D print of the scanned object infringes unless the owner authorized the printing.30
Two types of patents can protect different aspects of 3D printing technologies: utility patents and design patents. A utility patent can cover “any new and useful process, machine, manufacture, or composition of matter” and any improvements.31 A design patent can cover “any new, original and ornamental design for an article of manufacture . . . .”32 An article’s ornamental design includes its configuration or shape, the surface ornamentation applied to it, and the combination of configuration/shape and surface ornamentation.33 But if an article’s configuration or shape results solely from functional considerations, the design is not ornamental and a design patent is inappropriate.34
In short, a utility patent for an article can protect what it does, how it functions, or how it is used, while a design patent can only protect an article’s appearance. Design patents typically have a relatively narrow scope limited to the patented design and any “colorable imitation” of it.35
In contrast to a copyright, which exists the moment an original work becomes fixed in a tangible medium of expression, an inventor must file an application for a patent with the U.S. Patent and Trademark Office.36 The PTO then decides whether the invention set forth in the application satisfies patentability requirements.37
Utility and design patents give the owner the right to exclude others from making, using, selling, and offering to sell the patented invention in the United States.38 Because utility and design patents cover different aspects of an article, both types of patents may issue for articles having inventive utilitarian and ornamental features.39 Also, design patents can protect articles subject to copyright protection.40
There are, however, significant timing and cost differences between utility and design patents.41 Generally, a utility patent expires 20 years after application filing, while a design patent expires 15 years after issuance. For a utility patent, the patentee must pay maintenance fees at various times after issuance to keep the patent in force until its ostensible expiration date.42 A design patent remains in force without any maintenance fees.
On average, utility patents issue about 26-28 months after application filing.43 Design patents typically issue about 17-20 months after application filing.44 Although the average time to obtain a utility patent exceeds the time to obtain a design patent by less than a year, the costs for the two types of patents differ markedly. A 2012 law review article estimated that “an average patentee will spend approximately $22,000 to successfully prosecute a [utility] patent application.”45 Estimates for the average overall cost to obtain a design patent range between $2,000 and $4,000.
Utility patents may protect 3D printer hardware features, printing methods, printing materials, and functional aspects of 3D prints. As for a utility patent directed to 3D printer software features, the patent must cover something “significantly more” than an abstract idea.46 Specifying well-understood, routine, and conventional features at a high level of generality, such as generic hardware components, does not suffice for something “significantly more.”47
Design patents may protect the appearance of 3D prints. Design patents may also protect the appearance of 3D printers, although a competing printer manufacturer could likely avoid a design patent by making a printer with a sufficiently distinct shape or surface ornamentation.
A trademark is any word, phrase, symbol, design, device, color, or combination of these things used by a manufacturer or seller to identify its products and distinguish them from products sold by others.48 A trademark serves as a source identifier for consumers even if a consumer does not know the source’s actual identity.49 For instance, a trademark assures a potential customer that a particular product associated with the mark comes from the same source as other similarly marked items that he or she previously purchased.50
Trademark protection prevents others from using the same mark or any confusingly similar marks.51 But it does not prevent others from selling the same kind of product under a clearly different mark.
Trade-dress protection is similar to trademark protection but relates to product design and packaging. Trade-dress protection applies when a product’s design or packaging acquires a distinctiveness that serves to identify the product with its source.52 As with a design patent, trade-dress protection does not cover a product’s functional features.53 In general, a feature is functional and does not qualify for protection if (1) it is essential to the product’s purpose or use or (2) it affects the product’s quality or cost.54
Copyrights and patents serve to encourage the creation of new things by giving creators various rights. Trademarks serve a different purpose: to protect consumers by preventing consumer confusion in the marketplace.
Because trademarks seek to prevent confusion in the marketplace, merely making an exact copy of an object including a trademark should not generally violate trademark rights. But a violation would occur upon selling, distributing, or advertising the copy. If someone scanned an object including a trademark, altering the object’s 3D model to remove the trademark should avoid trademark issues. But that alteration would not avoid trade-dress issues if the object’s design has acquired distinctiveness to consumers.
In any event, if designers include their own trademarks in 3D models, that should at least hinder counterfeiting and sales of bogus copies.
Enforcement Issues Relating to 3D Printing
3D printing permits production to occur in numerous places rather than a central manufacturing facility. A file containing a 3D model can readily traverse the Internet to a 3D printer’s location. Decentralizing production makes enforcement of intellectual-property rights more difficult.
For example, if an infringer produced discs containing copyrighted music or movies at a single facility, the copyright owner could file one lawsuit against the infringer seeking to enforce its exclusive right to make copies. And if the infringer produced a patented product, the patent owner could also file one lawsuit against the infringer seeking to enforce its exclusive right regarding making the patented invention.
Because 3D printing permits infringement to occur at the 3D printer’s location, unauthorized copies of copyrighted works or patented products could be made in many places. If a rights owner wanted to take action against everyone who made an unauthorized copy, it might need to file numerous lawsuits throughout the United States. Further, if each of the various infringers made only a few copies, the cost of pursuing a lawsuit against any one infringer might exceed the amount a rights owner could recover as damages.
Copyright law addresses that issue to some extent by providing for statutory damages as an alternative to actual damages.55 A copyright owner who registers the work with the U.S. Copyright Office before the infringement commences or within three months of publishing the work may receive statutory damages ranging between $750 and $30,000 per work.56 The amount of statutory damages should correspond to the nature of the violation, including the infringer’s motive and culpability.57 Alternatively, a copyright owner can recover (1) the actual damages resulting from the infringement and (2) the infringer’s profits attributable to the infringement insofar as those profits “are not taken into account in computing the actual damages.”58
A copyright owner must elect which measure of damages to seek “before final judgment.”59 If the owner elects to recover statutory damages, a court may increase the award up to $150,000 per work for willful infringement.60 If, however, the owner elects to recover actual damages, copyright law does not allow enhancement for willful infringement.61
Unlike copyright law, patent law does not provide for statutory damages. Instead, a patent owner should generally receive damages “no . . . less than a reasonable royalty for the use made of the invention by the infringer.”62 And if the owner can prove that it would have made profits “but for” the infringement, the owner can recover its lost profits as damages.63 For a design patent—but not a utility patent—the owner may elect to receive the infringer’s profits as the monetary remedy.64 But the owner cannot obtain a reasonable royalty or its lost profits in addition to the infringer’s profits.65 Where a reasonable royalty corresponds to a percentage of the infringer’s profits, damages for design patent infringement could exceed damages for utility patent infringement.
But if a design patent owner elects to receive the infringer’s profits as the monetary remedy, patent law does not allow enhancement for willful infringement.66 In contrast, the general patent damages provision permits a court to “increase the damages up to three times the amount found or assessed.”67 An award of increased damages requires proof of willful infringement.68
When numerous infringers make copies of copyrighted works or patented products in many places, suing the 3D printer manufacturer as a contributory infringer does not seem viable since the 3D printer has substantial noninfringing uses.69 Those noninfringing uses include printing public-domain objects and licensed items. For instance, many 3D models are open source and freely downloaded from various websites such as Thingiverse.com.70
Further, establishing contributory infringement of a patent generally requires proof that the contributory infringer knew about the patent and knew that its actions would cause infringement.71 As for inducing infringement by causing, urging, or encouraging a user to print a patented product, contributory and induced infringement require the “same knowledge” for liability.72 That knowledge requirement presents an impediment for suing a 3D printer manufacturer with “deep pockets” for patent infringement.
Another issue arises for patents because liability for contributory infringement rests on selling or offering to sell a “component” of a patented product or a “material or apparatus” for a patented process.73 A file containing a 3D model may not constitute a “component” of a patented product produced by the model.74 When considering a related provision in the patent law that referenced the “components of a patented invention,” the Supreme Court distinguished design information, such as blueprints or schematics, from a “component” in a patented combination.75 It said, “A blueprint may contain precise instructions for the construction and combination of the components of a patented device, but it is not itself a combinable component of that device.”76 Because a 3D model corresponds to a digital blueprint, the Court might distinguish a 3D model from the product that it produces.77
When digital music and movie/video files enabled widespread online copying and distribution, e.g., through peer-to-peer file sharing, copyright owners confronted enforcement issues similar to those likely to arise with 3D printing. For instance, the Recording Industry Association of America (RIAA) initially sought to stop the illegal copying and distribution of music files by suing entities, such as Napster, who provided software and operated centralized servers that facilitated peer-to-peer file sharing.78 The RIAA succeeded in stopping Napster.79 But users switched to newer networks lacking centralized servers.80
After initially unsuccessful attempts to stop companies who supplied software that facilitated decentralized peer-to-peer file sharing, such as Grokster, the RIAA started suing individual users.81 Ultimately, the Supreme Court sided with the copyright owners by ruling that the software suppliers could be liable for inducing infringement because they took active steps to promote or encourage infringement by users.82
Nevertheless, the lawsuits against the users were largely viewed as failures since (1) they did not stop peer-to-peer file sharing, (2) they eroded customer goodwill, and (3) the RIAA spent much more on legal fees than it recovered.83 After suing at least 15,000 people, the RIAA decided in 2008 to “drop its legal assault” against users.84 The “lawsuits targeted, among others, several single mothers, a dead person and a 13-year-old girl” and “created a public-relations disaster for the industry.”85
The Digital Millennium Copyright Act (DMCA) gave copyright owners a mechanism to help enforce their rights by specifying website takedown procedures for online service providers in response to infringement notices. Under that procedure, if an online service provider receives an appropriate infringement notice from a copyright owner, the service provider should promptly remove or block access to the allegedly infringing material and promptly inform the alleged infringer of that action.86 The alleged infringer may send a counter notification to the service provider explaining its position.87 If so, the service provider must put the material back up within 10–14 business days after receiving the counter notification unless the copyright owner files suit against the alleged infringer.88
The DCMA also enabled copyright owners to subpoena a service provider and seek information about an alleged infringer before filing a lawsuit.89 But that subpoena power extends only to service providers who store data and not those who merely act as conduits by transmitting data.90 So a copyright owner cannot obtain a presuit subpoena to seek information about infringers who employ peer-to-peer file sharing.91
The patent statute does not contain any provisions analogous to the DMCA. So a patent owner who discovers a 3D model for an infringing product on a website can send a conventional cease-and-desist letter to the website host. And if the patent owner can identify the model’s designer or any users who copied the model, it can send similar letters to those individuals.
But the patent owner may just know the Internet Protocol (IP) addresses assigned to the computers that uploaded and downloaded the 3D model.92 While an IP address permits the patent owner to identify the pertinent Internet service provider, only the service provider can match a particular IP address with an individual’s actual name and physical address.93
If an Internet service provider refuses to supply that information voluntarily and the patent owner has sufficient evidence of infringement, it could (1) file a complaint for induced infringement (or perhaps contributory infringement) against the model’s designer as a “Doe” defendant, (2) subpoena information about the defendant from the Internet service provider, and (3) amend the complaint after receiving that information.94 Since at least the early 2000s, copyright owners have filed “Doe” suits against unidentified defendants as a means of enforcing their rights.95
Copyright owners have learned, however, that identifying defendants based on IP addresses results in a significant risk of misidentification.96 “An IP address provides only the location at which one of any number of computer devices may be deployed, much like a telephone number can be used for any number of telephones.”97 “The fact that a copyrighted work was illegally downloaded from a certain IP address does not necessarily mean that the owner of that IP address was the infringer. . . . Indeed, the true infringer could just as easily be a third party who had access to the internet connection, such as a son or daughter, houseguest, neighbor, or customer of a business offering an internet connection.”98 An attorney representing a copyright owner “estimated that 30% of the names” associated with allegedly infringing IP addresses “are not those of individuals who actually downloaded or shared copyrighted material.”99
As for users who copy a 3D model for a patented product, copying the computer file does not equal making the patented invention. To infringe, a user would have to make a 3D print from the 3D model.100 So simply knowing that the 3D model was copied at a particular IP address may not suffice for a good-faith basis for filing suit and naming a “Doe” defendant.101
Enforcing intellectual-property rights relating to 3D printing may present formidable issues. Detecting infringement by end users who make 3D prints for their own use should prove problematic. If rights owners can identify infringing end users, enforcement costs may well exceed amounts recoverable as damages. Targeting a few infringers as examples may appear arbitrary and result in negative publicity. But targeting thousands may provoke a consumer backlash and still not end infringement.
Rights owners will no doubt confront difficult challenges detecting, preventing, or even controlling widespread infringement by individuals. Protecting rights relating to 3D printing will require resourcefulness, creativity, and well-crafted actions.