3D Printing Legal Update

Even someone with a long-standing interest in 3D printing has to be surprised by its sudden ascent to the mainstream. Simon Bradshaw puts surprise to one side, reviews the latest legal reaction and trends which affect or will come to affect 3D printing and essays some predictions.

In early 2008 I was trying to find a suitable dissertation topic for my LLM in IP and IT law at the University of Edinburgh. As an engineer-turned-lawyer I was particularly interested in the way that 3D printing, until recently an expensive technology confined to design labs, was coming within reach of small businesses and enthusiasts, and I wondered how far anyone had looked at its intellectual property (IP) implications. To my surprise, a literature search turned up nothing, and so it was with some trepidation that I proposed a dissertation into what seemed to be an unexplored area. I'm most grateful that my supervisor, Dr (now Prof) Burkhard Schafer, encouraged me to go forward, and my research led to a paper that formed one of the early analyses of the implications on 3D printing of copyright, trade mark, design and patent law.[1]

Other researchers have considered the topic from a US perspective[2] and, as accessible 3D printing technology has moved over the last couple of years from a hobbyist curiosity to a fast-growing market, more recent studies have been able to cite a growing number of real-world issues arising from 3D printing.[3] Indeed, if there is one aspect of the earlier paper I would wish to amend it would be the prediction that it would be some considerable time before 3D printing became commonplace and good enough that legal disputes might arise. As Dr Dinisha Mendis has observed in her recent paper on the topic, reality has caught up with what only a few years ago looked like science fiction.[4]

The sort of objects that might be reproduced with 3D printers can be protected with various IP rights. (See 'IP Rights – a very short introduction' or skip on past it if you are IP aware.) 

For detailed consideration of how such rights impinge on 3D printing, see both the paper I co-authored with Dr Adrian Bowyer and Patrick Haufe, and Dr Mendis' recent paper. It turns out that copyright and design rights are the most significant rights, with copyright being most relevant to artistic object such as jewellery and sculptures, and design rights applying more to mass produced items. Under UK and European law, there are some interesting implications for the use of 3D printers; for instance, purely private use of a 3D printer will not infringe design rights, but often would infringe the copyright of more artistic objects. Furthermore, it will in many cases be possible to print even on a commercial basis items such as spare parts and accessories, because of the exemptions in law intended to preserve a market for such items, or because very functional designs will not fall within either copyright or design right protection.

In short, a lot of the sort of items that someone might want to make with a 3D printer – be it a hobbyist desktop one, or a commercial one in a print bureau – can be printed out without transgressing IP rights. But equally, there are many things that can be done with a 3D printer that will be an infringement, and we are now starting to see examples of this.

This article will look at how the sort of problem I thought speculative only three or four years ago is now coming to pass. I will also summarise some recent changes to IP law that may have a bearing on what you can and cannot legitimately do with a 3D printer. Finally, I will have a quick look at developments beyond IP that may have legal implications for 3D printing.

 

IP Rights – a very short introduction

Copyright protects literary, artistic, musical and dramatic works. 2D artistic works are protected (drawings, paintings, photographs, diagrams) as are some 3D works. In particular, sculptures are protected by copyright, as are 'works of artistic craftsmanship'. (The latter is a famously ill-defined term, which was considered at length by Mr Justice Mann in Lucasfilm v Ainsworth [2008] EWHC 1878 (Ch) at [124]-[135]. The learned judge accepted that in essence it meant a work that combined aesthetic appeal with the skill of a craftsman.)

Design Rights protect the shape and configuration of products – typically ones not 'artistic' enough to be protected by copyright. There are two design rights: registered designs, which last for 25 years but require filing of a design; and unregistered design right (UDR), which lasts 10-15 years but arises automatically so long as a design is original and not purely functional. Both forms of design right have exceptions to allow the manufacture, with certain constraints, of spare parts and accessories.

Trade Marks originated to protect customers by showing the origin of goods, although there is a more recent drift towards recognized them as protecting a manufacturer's brand. They may be words or symbols, so long as they are distinctive and not too similar to other trade marks for related goods or services. Distinctive shapes can now be protected as trade marks.

Patents protect the workings of an invention, which must be original, genuinely inventive and fully described by the patent.

 

IP Disputes – Out of academia and towards the courtroom

My prediction that real-world IP disputes involving 3D printers would be some time away has proved unduly cautious. But if I got the timescale wrong, I was at least spot-on in identifying the subject matter. In the section of our 2010 paper that considered domestic uses of 3D printing, I specifically suggested 'model figures for wargaming' and cited the cost of even relatively small such items from Games Workshop as a possible motivation for enthusiasts to print such items themselves.[5]

Of course, if you go beyond printing generic figures into making exact reproductions of commercial products then IP rights may be engaged, as was discovered by US-based wargaming enthusiast Thomas Valenty. Valenty used a  MakerBot 3D printer to reproduce figures from Games Workshop's 'Warhammer' range, and, keen to share his work, uploaded the design files to Thingiverse, a site that hosts data for 3D printing.[6] Games Workshop issued a takedown request under the Digital Millennium Copyright Act against Thingiverse, complaining that Velenty's designs infringed its IP.[7]

Games Workshop took action via a statutory complaint process, and on the basis of US copyright law. It took advantage of the takedown route as it was only the design that was being disseminated. But there is nothing to suggest that had Valenty lived in the UK it could not have brought a valid claim for infringement of design rights or possibly copyright.[8] Such claims could be brought against those who manufactured items via 3D printing, or indeed those accused of facilitating infringement by printing such designs. At a recent exhibition of 3D printing I spoke with the owner of a 3D printing bureau who admitted to harbouring occasional doubts as to the rights ownership of items he was paid to print, but who assumed that any legal action would be against the designer.

Someone in this position who helps print copies of commercially-valuable designs might quickly learn two points appreciated by lawyers: firstly, the concept of 'joint liability'; and secondly that when enforcing a claim against a designer of perhaps limited means and a print bureau owner possessing commercial-grade 3D printers, a rights-holder will probably focus on the one with visible assets.

Changes to Design Law

Following the Hargreaves Review of Intellectual Property Law, the Intellectual Property Office (IPO) ran a consultation regarding modernisation of design protection. The IPO has now announced its proposals,[9] which are to be given effect by the Intellectual Property Bill recently introduced in the House of Lords. Of these changes, the most relevant are those that change the definition of UDR, provide for statutory defences against allegations of infringement, and introduce criminal penalties for commercial infringement of registered designs.

Clause 1 of the IP Bill amends the definition of UDR by removing the words 'any aspect of' from the CDPA 1988, s 213(2). This change is meant to reduce the scope for spurious allegations of infringement based on the supposed copying of very small elements of a UDR-protected article. The definition will still refer to the shape or configuration of 'the whole or part of an article' so there will still be scope for a rights-holder to point to partial copying, but it should reduce the risk that someone using a 3D printer is accused of copying on the basis of a very small part of the overall design.   

Clause 4 of the IP Bill inserts a new s 244A into the CDPA 1988, providing for statutory defences against allegations of infringement of UDR in respect of certain acts of copying.  Section 244A will provide that non-commercial and private copying  of designs will not infringe UDR, nor will copying for experimental purposes or for teaching, although the latter exception will apply only where the copying is compatible with fair trade practice and the source is acknowledged.

These defences mirror those that already exist for registered designs and indeed are arguably implicit in the existing definition of UDR infringement under s 226. Nonetheless, by expressly defining the scope of non-infringing copying they make it clear that home and educational use of a 3D printer is unlikely to infringe UDR, although as Dr Mendis notes there may still be questions as to whether publishing details of how to print a UDR-protected item is a 'private' activity.[10]

Finally, clause 13 of the IP Bill inserts new ss 35ZA to 35ZD into the Registered Designs Act 1949, making it a criminal offence to copy a registered design in the course of business. To date, such infringement has been actionable only as a civil tort; the new provisions bring the position closer to that for copyright and trade marks, where infringement in the course of business can attract criminal sanctions.[11] The maximum penalty for a breach of s 35ZA will be 10 years' imprisonment, although sentences for even substantial counterfeiting in respect of copyright and trade mark offences have typically been far below this (rarely over two years' imprisonment)[12] and I would expect sentences for registered design infringement to be in line with this. However, s 35ZC provides for forfeiture not only of any copied items but also of "an article which is specifically designed or adapted for making copies of a registered design."

The forfeiture provision may raise the question of whether a 3D printer is such an article. By its very nature a 3D printer is a generic item that is no more specifically designed for making copies of a registered design than a conventional printer is designed for making copies of a work protected by copyright. Indeed, even devices such as a tape-to-tape recorder have been held not to have been intended to facilitate infringement as they had lawful as well as unlawful uses,[13] although a chip sold to bypass copy protection of computer games was found to be so intended.[14]

It might perhaps be argued that once programmed to reproduce a registered design a 3D printer was an article specifically adapted for making copies of it. The language of the new s 35ZC of the Registered Designs Act 1949 is close to that of the Trade Marks Act 1994, s 5(a) and the CDPA 1988, ss. 24 and 114A regarding items specifically designed or adapted for making copies. Such cases as have been reported in relation to these provisions generally concern articles that were designed from the outset to facilitate infringement[15] and I would suggest that 'adapted' should be interpreted as meaning a physical modification rather than simply being programmed. Nonetheless, I would not be surprised to see attempts made to rely upon the new forfeiture provisions, particularly where any copying has been done via more expensive commercial-grade 3D printers rather than hobbyist desktop machines.

Repeal of the CDPA 1988, s 52

The IP Bill has only recently been introduced to the process of becoming law. Rather further along in the process is the Enterprise and Regulatory Reform Act 2013 (ERRA), which received Royal Assent on 25 April 2013. Although many parts of it have yet to be brought into effect, it touches on many areas of law, including IP; its most relevant provision as regards 3D printing is likely to be the repeal of the CDPA 1988, s 52.

Any comparison of the various forms of IP right subsisting in the UK is likely to note the disparity between the term of copyright, typically creator's life plus 70 years, and that of design right, which lasts 25 years for registered designs and between 10 and 15 years for unregistered ones. But in some circumstances the two are effectively harmonized, thanks to s 52. This provision has the effect of radically shortening the copyright term of many sorts of artistic work if they are 'industrially exploited' – in other terms, mass produced.

By no means all copyright works are affected by s 52. Works that are of their very nature reproduced in bulk – books, maps, films and so on – are excluded, as are sculptures.[16] But if a painting or photograph is reproduced not as a print but as decoration on a mass-produced product such as a biscuit tin, then its copyright term for further such reproduction is reduced to 25 years from the date of such mass reproduction (mass reproduction being 50 or more copies). The same applies to 3D works of artistic craftsmanship that have been so reproduced.[17]

The effect of s 52 is that artistic works are treated like industrial designs if they are reproduced and sold like industrial designs. The consequences are far-reaching. A 3D artistic work other than a sculpture – say a piece of jewellery – will, if reproduced in significant numbers, only get 25 years of copyright protection. Furthermore, the same can apply to 2D works where they have been used as decoration on mass-produced items. A picture of a cartoon character would normally enjoy the full copyright term. But if it is applied by the owner to a mass-produced product (say a lunchbox) then after 25 years anyone can copy that picture and apply it to any other item, such as a mobile phone cover, without infringing the copyright in the original work.

The mobile phone cover is not an example chosen at random. Such items are readily produced with even hobby-level 3D printers, and have been popular with 3D print enthusiasts. Indeed, in January 2013 Nokia released a "3D Printing Development Kit" for its Lumia 820 phone to facilitate printing of customised covers for it.[18] Online 3D print bureaux offer a wide range of printed phone cases,[19] some with the option of customisation by embossing a customer-provided image.[20] If I were to photograph an artwork applied to a mass-produced product before 1988 and use such a service to print it on a phone cover, by virtue of the CDPA 1988, s52 I would not be infringing copyright. There are no doubt many owners and licensees of lucrative copyrights who would be most concerned at this.

This provision has long been an anomaly within the EU; only Estonia and Romania have similar provisions.[21] In 2012 the Intellectual Property Office announced proposals to repeal it[22] and sure enough the ERRA 2013, s 74 will do so. Although s 74 has yet to be brought fully into effect, the 25-year limit on copyright for industrially-applied works will disappear when it is.[23] Incidentally, this change to IP law does not seem to have arisen as a result of the Hargreaves Report on reforming IP, but rather from the European case of Flos v Semeraro,[24] in which it was held that Italy could not by statute deprive a work of copyright protection it would otherwise enjoy. The UK Government appears to have taken this as meaning that s 52 is incompatible with EU law and can no longer stand.

The effect of the repeal of s 52 will thus be to deprive users of 3D printers of a hitherto extensive source of works – both 3D works of artistic craftsmanship, and 2D artworks applied to the surface of products – where those works have been mass-reproduced more than 25 years ago. The decision to repeal s 52 seems to have arisen from concerns that it was incompatible with European law and after lobbying by furniture manufacturers complaining about imitations of classic designs rather than because of any intent to stymie the development of 3D printing. Nonetheless, owners of 3D printers hoping to safely mine pre-1988 mass-produced products either as items to print in their own right, or as a source of surface decoration, are likely to be disappointed by this repeal.

IP Small Claims Track

Whatever the legal position regarding IP disputes involving 3D printers, until recently many IP lawyers would probably suggest that the inherent low value of such disputes – 3D printing being of its nature a small-volume technology – would make it unattractive to pursue them through the courts. However, on 1 October 2012 an amendment to Part 63 of the Civil Procedure Rules introduced a small claims track for low-value IP claims.[25] The value limit for such claims was originally £5,000, although it was increased to £10,000 on 1 April 2013 in line with amendments to the general small claims track procedure.

IP litigation in the High Court and even the Patents County Court is often regarded as extremely expensive. The IP small claims track allows claims to be brought for a low fee and, more significantly, without the prospect of costs being awarded against an unsuccessful claimant.[26] A small enterprise seeking to prevent infringement of its designs or copyright materials via 3D printing may now find it viable to pursue such a claim against an alleged infringer. Equally, a firm or individual accused of infringing IP rights via a 3D printer may be able to point to the low value of such a claim as a reason for it to be allocated to the small claims track, so being able to defend the claim while avoiding the risk of hefty legal costs.

Printing guns, and the possible legislative consequences

In view of my interest in the interaction of 3D and the law I have a standing Google news search set up to look for stories featuring these terms. Until early 2013 it produced perhaps one or two new search hits per week, but in the last few months it has generated two or three a day. The increase is attributable almost entirely to one story: the efforts of Texan law student Cody Wilson, through nonprofit group Defense Distributed,[27] to make a 3D printed gun.[28]

I do not intend to discuss here the ethical and political implications of the Defense Distributed project, which continue to be extensively debated in print and online media. Rather, it is relevant because it has put the legal implications of 3D printing squarely in the public eye and has led to efforts to control the distribution of the design files for the gun. Even before printing its first gun, Defense Distributed ran into legal issues in the form of the terms of service of crowd-funding platform Indiegogo (which froze fund-raising for the project[29]) and 3D printer manufacturer Stratsys rescinded the lease of one of its printers to Wilson.[30] Soon after the prototype gun had been demonstrated though, the US State Department banned Defense Distributed from disseminating the plans for its printable gun, citing international arms control laws.[31] Unsurprisingly, the ban has done little to stop the plans circulating online.[32]

Guns are already very tightly controlled in the UK, and not only are there more traditional ways to make or obtain improvised firearms but the question of ammunition remains. But the concern caused by this project is putting the spotlight onto 3D printing as a novel and disruptive technology, and the reaction of governments to novel and disruptive technologies is often to consider regulating them. Governments may seek to impose legal controls on the creation and dissemination of 3D design files, and it is quite likely in my view that there will be pressure from creative and manufacturing industries to include reproduction of protected designs among the acts to be controlled. By seeking to make a point about gun control, Cody Wilson may actually have opened the legislative door to measures aimed at restraining the infringement of IP rights via 3D printing.

Some final predictions

With my hit-and-miss record I should perhaps be wary of making further predictions about 3D printing and the law. However, I am throwing caution to the wind and making three:

1.     The legislative changes I have described above arose from matters other than 3D printing, but nonetheless have consequences for it. I predict though that within the lifetime of the current government we will see further amendments to UK IP law specifically in response to and directed at 3D printing.

2.     A claim for infringement of IP rights via 3D printing will be brought in the English or Scottish courts before the end of 2014.

3.     Also before the end of 2014, someone in the UK is going to do something very stupid indeed with a 3D printer such that a prosecution will result, or there will be a media panic, or both.

Actually, I will make a fourth prediction, although this is a completely safe one: there will be a lot more articles to come about the legal issues arising from 3D printing.

 

Simon Bradshaw of Cornwall Street Chambers graduated from Imperial College and served as an engineer and project manager in the RAF before qualifying as a barrister in 2009. He has a particular interest in the legal issues arising from new technology.



[1] S Bradshaw, A Bowyer and P Haufe, "The Intellectual Property Implications of Low-Cost 3D Printing", (2010) 7:1 SCRIPTed 5, <www.law.ed.ac.uk/ahrc/script-ed/vol7-1/bradshaw.asp> (accessed 15th May 2013).

[2] M Weinburg, "It Will Be Awesome if They Don't Screw it Up: 3D Printing, Intellectual Property, and the Fight Over the Next Great Disruptive Technology" (2010), Public Knowledge, < http://publicknowledge.org/it-will-be-awesome-if-they-dont-screw-it-up> (accessed 15th May 2013).

[3] D Mendis, "'The Clone Wars': Episode 1' - The Rise of 3D Printing and its Implications for Intellectual Property Law—Learning Lessons from the Past?" (2013) European Intellectual Property Review 35(3), 155-169.

[4] ibid, at 159.

[5] S Bradshaw, A Bowyer and P Haufe, op cit, footnote 19.

[6] 'Thingiverse – Digital Designs for Physical Objects', <www.thingiverse.com> (accessed 22nd May 2013).

[7] '3-D Printing's Legal Morass', Wired, 30th May 2012, <www.wired.com/design/2012/05/3-d-printing-patent-law/> (accessed 22nd May 2013).

[8] In Britain v Hanks (1902) 86 LT 765 it was held that a model soldier was a sculpture (so protected by copyright) rather than a toy. In Lucasfilm v Ainsworth [2009] EWCA 1328 the Court of Appeal emphasized the distinction in such matters between works created for appreciation and works created as toys, a point not dissented from by the Supreme Court. I would suggest that the Warhammer figures would probably fall on the 'toy' side of this divide and so not attract copyright protection in the UK, although they would likely be protected by UDR or be capable of being registered as protected designs.

[9] 'The Consultation on the Reform of the UK Designs Legal Framework Government Response – April 2013', Intellectual Property Office.

[10] D Mendis, op cit, at 166.

[11] CDPA 1988, s 107; Trade Marks Act 1994, s 92.

[12] Current Sentencing Practice, B13-7.3 Copyright Offences – Recent Decisions.

[13] CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013.

[14] Sony Computer Entertainment Inc v Owen [2002] EMLR 34.

[15] ibid.

[16] The Copyright (Industrial Process and Excluded Articles) (No.2) Order 1989 (SI 1989/1070).

[17] 'Work of artistic craftsmanship' is a famously ill-defined term. It was considered at length by Mr Justice Mann in Lucasfilm v Ainsworth [2008] EWHC 1878 (Ch) at [124]-[135]; the learned judge accepted that in essence it meant a work that combined aesthetic appeal with the skill of a craftsman.

[18] 'Everything you need to know about the Lumia 820 and 3D printing' <conversations.nokia.com/2013/01/18/everything-you-need-to-know-about-the-lumia-820-and-3D-printing/> (accessed 15th May 2013).

[19] E.g. Freshfiber <www.freshfiber.com>.

[20] <www.freshfiber.com/products/sculpture/>

[21] 'Goodbye Section 52? Proposed copyright extension for industrially produced designs', 7th June 2012 <aandalawblog.blogspot.co.uk/2012/06/goodbye-section-52-proposed-copyright.html> (accessed 15th May 2013).

[22] 'Information notice: Proposed changes to UK copyright legislation included in the Enterprise and Regulatory Reform Bill', 25th May 2012 <www.ipo.gov.uk/about/press/press-release/press-release-2012/press-release-20120525.htm> (accessed 15th May 2013).

[23] The Department of Business, Innovation and Skills has indicated in the House of Lords that items made under s 52 when it was still in force will not become infringing, but that further copies of such items would infringe copyright. (Hansard, House of Lords, 11th March 2013, Columns 19-20).

[24] Case C-168/09 Flos v Semeraro.

[25] 'HMCTS Guide to the Patents County Court Small Claims Track', September 2012, <www.justice.gov.uk/downloads/courts/patents-court/patents-court-small-claims.pdf> (accessed 22nd May 2013).

[26] 'The new Small Claims Track in the Patents County Court', Intellectual Property Office, October 2012, <http://www.ipo.gov.uk/news/newsletters/ipinsight/ipinsight-201210/ipinsight-201210-1.htm> (accessed 22nd May 2013).

[27] 'Defence Distributed: Home of the Wiki Weapon Project', <defdist.org> (accessed 21st May 2013).

[28] 'Working gun made with 3D printer', BBC, 6th May 2013, <www.bbc.co.uk/news/science-environment-22421185> (accessed 21st May 2013).

[29] 'Indiegogo shuts down campaign to develop world's first printable gun', DailyDot, 27th August 2012 <www.dailydot.com/news/indiegogo-3D-printed-gun-campaign/>

[30] '3-D Printer Company Seizes Machine From Desktop Gunsmith', Wired, 1st October 2012, <www.wired.com/dangerroom/2012/10/3D-gun-blocked/> (accessed 21st May 2013).

[31] 'State Department orders firm to remove 3D-printed guns web blueprints', The Guardian, 10th May 2013.

[32] 'The Pirate Bay to continue offering 3D-printed gun blueprints', Digital Journal, 11th May 2013, <www.digitaljournal.com/article/349924> (accessed 21st May 2013).

 

Published: 2013-05-23T10:54:52

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