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A 3D Printer’s Guide to Intellectual Property Rights

When objects are copied without permission, there is a distinct possibility of infringing third party rights. Here is a guide to the various intellectual property rights which could well protect those objects. We explain what will and will not amount to infringement1.

April 2013

Contents of this article

Patents

A patent gives the owner an exclusive and absolute right to exploit the invention covered by the patent. It gives the owner 20 years of protection. In order for a patent to be valid, there must be an invention which is new and inventive (not obvious to a person skilled in the art). It must also be capable of industrial application and not within a list of excluded inventions.

Products that may have patent protection

tubeAlthough many patents are for complex products with a number of constituent parts, there are some simple patented products that are capable of being produced by 3D printing. For instance, simple items where the invention is the combination of a number of features, e.g. plastic laboratory equipment with patented ‘twist to lock’ sealing mechanism between parts, could be produced by 3D printing. SLS 3D printing can produce some more complex items with moving parts which could have patent protection for instance certain medical devices. In addition, small parts could be 3D printed and then assembled to form a patented product or used to replace broken parts from a larger patented product.

Infringing acts and infringers

Unauthorised commercial production of patented products by 3D printing may constitute an act of patent infringement by the user of the printer. In addition, keeping, using, offering for disposal or disposing of the resulting infringing product can amount to infringing acts2.

There is a defence where otherwise infringing acts have been carry out for private, non-commercial purposes. This defence is likely to apply to many of the patented products that are produced by users at home for personal use3.

Does making spare parts constitute patent infringement?

Whilst it seems clear that the manufacture of a whole patented product, for instance the plastic laboratory equipment described above, will constitute patent infringement, the position regarding the manufacture spare parts and their incorporation into patented products, regardless of whether they were produced by 3D printing or by traditional manufacturing methods, is not as clear-cut.

In some cases, the replacement of a part of a product protected by a patent will constitute a non-infringing “repair” rather than an infringing “making” of the patented article. In a recent case, the Supreme Court found that the making of replacement bottles for placement in large metal cages was non-infringing4.

Copyright

BookCopyright gives a bundle of rights to the rights owner (usually the creator or the creator’s employer) to prevent other people from copying, using or exploiting their works (works which involved intellectual creation). UK copyright comes into existence automatically when the relevant work is created. This can make it a powerful right, because not only are no formal steps needed before it is relied on (registration is unnecessary) but it lasts for 70 years after the death of the creator. Where artistic works5 are made by an industrial process (50 articles or more made to that process), the period of protection is reduced to 25 years from the end of the year in which the work was marketed6.

Products that may be protected

An object may be protected by copyright where it can be classed as an “artistic work” (this discounts many manufactured articles but specifically protects “sculptures” and “works of artistic craftsmanship”7). Attempts to rely on copyright to protect functional objects before the UK courts have been largely unsuccessful.

The following have been found not to be sculptures: (1) moulds for making cartridges8 ; (2) a model of a dental impression tray9 ; (3) a Stormtrooper helmet10. Equally, It is difficult to successfully assert an article is protected as a work of artistic craftsmanship11. A prototype for a sofa was found not to be protected by copyright as a work of artistic craftsmanship. Works found to constitute works of artistic craftsmanship have included: hand knitted woollen sweaters and pottery. Original pieces of handcrafted jewellery are also likely to be protected as works of artistic craftsmanship.

Even where the form of an object is not protected by copyright (e.g. the shape of a vase), it may be possible to rely on copyright in the object’s surface design to prevent copying12. For example, the graphic design for the surface decoration of a badge has been found to be protected by copyright13. The design had an existence independent of the badge to which it was applied, i.e. the design could be applied to the surface of other articles.

Infringing acts and infringers

ownershipOnce a rights holder has established that copyright protects an object which is being copied, there are various options.

Copying a protected work and providing copies to the public are acts restricted to the copyright owner14. Where a third party (such as a third party printing service) does either of these things without a licence and a defence, this will amount to infringement. Knowledge of infringement and intention are irrelevant for acts of primary infringement.

Currently, there is no private copying defence under copyright law. Technically, a consumer who copies an artistic work by printing a replica will be liable for copyright infringement unless he or she has permission from the copyright owner.

Later this year, the Government will be introducing a limited private copying exception into English law which will apply to all types of copyright works15. The defence will be limited to people who already own a lawful copy of a protected work and will allow that person to copy that work for their personal use. So, if you bought a piece of handcrafted jewellery protected as an artistic work by copyright, you would be able to reproduce this for your own benefit. However, you would not be able to print a copy for someone else without infringing copyright.

Design Rights

InkIn some cases, objects will be protected by design rights. There are four different types of design right and the law is relatively complicated (read more about it). Where an object is protected by these rights, the rights will be infringed where an unauthorised third party makes a copy. Designs rights will often be the most useful form of intellectual property rights for the purposes of challenging 3D printing. They are the right most readily found to subsist in every day objects.

Commercial reproduction using 3D printers could well amount to design right infringement. Intention and knowledge that actions amount to infringement are irrelevant. However, there will be no infringement where an act is done privately and for purposes which are not commercial16. Therefore, if an object is copied by an individual in his home for his own personal use, there will be no infringement. The position will be different if the private individual then sells the items he has printed. This would constitute infringement.

Where 3D printers are used for commercial purposes to produce spare parts for articles, the position is less favourable for rights holders. It will not be an infringement for a third party to copy any features of a protected design that enables their own design to be connected to or matched with the protected design. Design features enabling one product to be functionally fitted or aesthetically matched to another are specifically excluded from protection17.

Trade Marks

trading namesA company’s trading names, brand names and logos can all be protected as registered trade marks (subject to certain registrability rules). Where not registered, they may be protected by the law of passing off (similar to the law of unfair competition in other jurisdictions). Registration confers a statutory monopoly in the use of that trade mark in relation to the goods or services for which it is registered and in relation to similar types of goods and services.

Where trade marks appear on objects which are then copied, there is a risk that the copier infringes those trade marks. In certain circumstances, trade marks can also be registered for the shape of products although this form of protection is notoriously difficult to obtain.

A commercial 3D printing service would be using the trade mark in the course of trade when reproducing a rights holder’s trade mark on a printed object. This is likely to amount to infringement. Intention and knowledge that actions amount to infringement are irrelevant. As for design law, for there to be an infringement, the trade mark must be used “in the course of trade”18. Where a private individual prints an object which includes a registered trade mark, it is unlikely that they will be doing so “in the course of trade” unless they then go on to sell what they have printed.

Manufacture and supply of 3D printing equipment

A claim that the manufacturers of 3D printers authorise copyright infringement19 is unlikely to succeed. In the case of CBS Songs Ltd v Amstrad Consumer Electronics plc20 , the House of Lords rejected the argument that placing twin-deck tape recorders on the market, which were very likely going to be used for infringing purposes, constituted authorisation. While the tape recorders facilitated unauthorised recording of copyright works, this did not mean that Amstrad authorised copyright infringement. Amstrad was able to rely on its advertising which made clear that it could not grant permission to copy protected works.device The House of Lords rejected the argument that Amstrad was jointly liable with consumers. Following sale of the tape recorders, Amstrad had no control over how consumers used the products. A close analogy can be drawn here to the sale of 3D printers. Provided that those printers are accompanied with warnings such as those adopted by Amstrad in the CBS Songs case, it hard to see how manufacturers and suppliers of 3D printing equipment could be held liable for copyright infringement.

If you have any questions on this article please contact us.


1This analysis is confined to English law and does not address cross border infringements.

2Section 60(1)(a) Patents Act 1977.

3Section 60(5)(a) Patents Act 1977.

4Schützv v Werit [2013] UKSC 16 (13 March 2013).

5With the exception of some printed works, such as stamps.

6This shorter term of protection may be abolished by the Enterprise and Regulatory Reform Bill when it becomes law.

7Section 4, Copyright, Designs and Patents Act 1988.

8Metix v G H Maugham [1997] FSR 718.

9J&S Davis (Holdings) v Wright Health Group [1988] RPC 403.

10Lucasfilm Ltd v Ainsworth [2011] UKSC 39.

11George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd[1976] AC 77.

12Section 51(3) Copyright, Designs and Patents Act 1988.

13The Flashing Badge Company Ltd v Brian Groves [2007] EWHC 1372 (Ch) (14 June 2007).

14Section 17 Copyright, Designs and Patents Act 1988.

15 Modernising Copyright

16For UK registered design, see section 7A(2)(b) Registered Designs Act 1949; for UK unregistered design, see section 226(1) Copyright, Designs and Patents Act 1988; for EU design rights, see Article 20(1) Community Designs Regulation 6/2002.

17For UK registered design, see section 1C(2) Registered Designs Act 1949; for UK unregistered design, see section 213(3) Copyright, Designs and Patents Act 1988; for EU design rights, see Article 8(2) Community Designs Regulation 6/2002.

18Section 10(2) Trade Marks Act 1994 and Article 9(1) Community Trade Mark Regulation.

19Section 16(2) Copyright, Designs and Patents Act 1988.

20[1988] AC 1033.

open book

"Where trade marks appear on objects which are then copied, there is a risk that the copier infringes those trade marks. In certain circumstances, trade marks can also be registered for the shape of products although this form of protection is notoriously difficult to obtain."