A NEW TECHNOLOGY CHALLENGES THE
EXISTING INTELLECTUAL PROPERTY FRAMEWORK
by PERRY J. VISCOUNTY, ANDREW M. GASS, and KYLE A. VIRGIEN
16
ORANGE COUNTY LAWYER
3
D printing has made great strides
in the past decade. Some believe
this technology will usher in
a second industrial revolution.
But disruptive technologies do
not disrupt only markets; they
occasionally present challenges
for pre-existing legal frameworks as well.
In the case of 3D printing in particular, some of the very characteristics
that make the technology innovative
also raise legal questions with no easy
answers. As this technology develops,
cutting-edge businesses may find that
some of their products slip between the
cracks of traditional intellectual property fields, and may profit from planning
accordingly with creative legal strategies.
What Is 3D Printing?
A 3D printer is a machine that can
turn a blueprint into a physical object.1
Send a 3D printer a design for a wrench,
and it will build a physical working
wrench.2 Scan a coffee mug with a 3D
scanner, send the file to the printer, and
produce hundreds of identical mugs as
holiday gifts for your co-workers.3
3D printing differs from typical mold
or cast manufacturing.4 Instead of
taking a block of material and cutting
away until it produces an object, a digital
image is created using a Computer Aided
Design (CAD) file.5 The CAD file is a
detailed plan used to “print” the desired
object layer by layer using a mixture of
inks and additives ranging from plastics
to metals and specially developed clays,
depending on the end product.6
Some commentators expect 3D printing to usher in nothing less than a
second industrial revolution.7 In 2013,
the McKinsey Global Institute named
the technology as one of twelve disruptive innovations that will transform
life, business, and the global economy.8
Recent advances, including the expiration of certain first-generation patents
and the wider availability of key 3D
manufacturing components like lasers,
have also sparked rapid development of
this promising technology.9
Companies in turn are staking their
claims. Over the last decade, more
than 6,800 applications related to 3D
printing were filed at the Patent and
Trademark Office.10 Experts expect an
annual economic impact of $235-$250
billion by 2025.11
www.ocbar.org
A survey conducted by 3D printing
consultants, Wohlers Associates, found
that 3D printing is already used for
manufacturing in many sectors, including the consumer-products, automotive, health, and aerospace industries.12
Applications currently range from the
creation of visual aids to direct product
manufacturing.13
In fact, designers already use 3D printing to create skateboards,14 haute couture
dresses,15 and parts of jet engines.16 The
U.S. military uses 3D printing to manufacture tools at will on the battlefield.17
Scientists have also used 3D printing to
replace damaged sections of coral reefs (a
process that normally takes thousands of
years),18 in addition to printing out 3D
models of ultrasounds so that parents
can see their child in three dimensions
before birth.19
In the 3D-printing
context, just as
in other domains,
design patents could
proscribe the use
or distribution of
a copycat product
with features
that infringed a
protected original.
Perhaps more intriguing are the prospects for the near future. Some observers
expect that entire living spaces will be
printed with extremely large machines.20
MIT is laying the foundation for printing food.21 The potential medical applications include applications ranging from
customized wrist splints22 to replacement
tissue, organs, bone, and cartilage.23
3D Printing and the Existing
Intellectual Property Framework
While the potential applications of
3D printing are astounding, this tech-
nology will present novel challenges in
the legal realm.
The fact that 3D printing depends
substantially on digital technology
means that the Internet will be an
important medium for both authorized
and unauthorized distribution of 3D
designs. Some business models will profit
from this ease of replication, while others
will see it as a liability to be thwarted. By
the same token, some will derive significant advantage from the legal ambiguity surrounding certain subtleties of the
domestic and international intellectual
property regimes as applied to 3D printing, while others will find the lack of
clarity stifling. For all involved, an accurate and informed understanding of the
status quo ante is a necessary first step in
developing sustainable business models,
proposed public policy revisions, and
other responsible reactions to the promise afforded by this new technology.
To that end, we present here a very
brief overview of relevant principles from
three U.S. fields of intellectual property
law: copyright, patent, and trademark.
Copyright
U.S. copyright law deals primarily with creative works such as books,
movies, photographs, and the like, but it
also protects certain limited categories of
technical products such as architectural
drawings and computer software. At a
high level, copyright’s treatment of 3D
printing will likely work as follows:
For 3D-printed objects themselves,
some will be at least partially protected
by copyright, but many will not,
under the longstanding principle that
so-called “useful articles” fall outside
copyright’s purview.
The CAD files that generate
3D-printed objects will be protected
by copyright. But just as other forms of
computer software receive a “thin” scope
of protection, 3D-printing CAD files
may in some instances lack a copyright
robust enough to prevent third parties
from creating their own, very similar
files that generate the exact same objects.
The copyrightability of three-dimensional objects is an issue that U.S. law
has wrestled with for many decades. The
fact that a particular object was “built”
using a 3D printer vel non does not affect
the operative legal inquiry.24 In general,
a physical object such as a lamp,25 a bicyOCTOBER 2014
17
cle rack,26 or a belt buckle27 is protected the CAD file. One line of cases suggests
by copyright to the extent that its that regardless of whether the resulting
purely creative or aesthetic features are object is protected by copyright, using a
“conceptually separable” from its utili- copyright-protected CAD file to run a
tarian function.28 Thus, a 3D-printed print job creates a temporary copy of the
statuette of Mickey Mouse would computer program itself in the printer’s
clearly be protected by copyright, while random access memory (RAM), and
a 3D-printed spoon devoid of artistic thus runs afoul of the rightsholder’s statembellishment would not.
utory entitlement to control all “copies”
Easy cases like these are separated by of the work.32 These cases have, however,
a grey area in which categorizing objects proven controversial,33 and it remains
as protectable or not is a “particularly unclear whether courts will extend their
difficult” analytical challenge,29 but for reasoning to the unexplored terrain that
better or worse, the challenge is a famil- 3D printing presents.
iar one for copyright lawyers and courts.
Regardless, many of the breakthrough Patent
uses of 3D printing that commentators
Two types of patents could apply
have recently lauded—uses in medicine, to 3D-printed objects: design patents,
manufacturing, and the like—appear to which protect new and original ornafall clearly on the purely “functional” mental design features, and utility
side of the divide, in which a three- patents, which protect useful inventions
dimensional object is a “useful article” that are novel and non-obvious.34
and therefore unprotected by copyright.
In the 3D-printing context, just as
The copyright analysis applicable to in other domains, design patents could
the CAD files that generate 3D-printed proscribe the use or distribution of
objects also implicates reasonably well- a copycat product with features that
established legal principles. As a
infringed a protected original.
rule, computer software files
Design patents were, for
ON POINT
are protected by copyexample, the form of intelright; if you have writlectual property protec[W]ithout changes to
ten a program from the
tion that Crocs used to
the current law, enforcing
ground up, no one can
protect its unique shoe
patent rights in the context of
copy verbatim the code
design against similarthat program consists of 3D printing may prove difficult looking competition.35
because of the potentially
without infringing your
The legal principle that
30
dispersed nature
copyright. By the same
a design patent must
of infringements.
token, the copyright in a
be respected holds just
computer program written
as true in the 3D printing
to yield a particular outcome,
world as elsewhere.
or carry out a certain purpose, may
Utility patents in the 3D printing
well not prevent a second-comer from context similarly will present applicaindependently writing its own computer tions with familiar analogues in related
program that yields the same outcome areas. Although courts have yet to fully
or achieves the same purpose.31 For develop the law surrounding eligibil3D-printing CAD files, the upshot is ity for utility patents in the context of
that copyright law will, at least in princi- modern 3D-printing technology, patents
ple, prevent someone from simply taking involving semiconductor lithography—a
the file and distributing it without longstanding type of 3D printing—are
permission; but much of the time, copy- instructive. These patents are available
right law will not prevent someone from to protect innovative features of a semiwriting a new CAD file that replicates conductor and innovative processes to
the same resulting object (at least where create particular features. Utility patents
the resulting object itself is an unpro- are also likely to protect innovative and
tected “useful article”).
useful 3D-printed objects and printing
A tricky and still unresolved question processes. Because utility patents are
is whether copyright law will prevent available only for inventions, a utility
someone from simply using a CAD file patent would not be available for every
to run a 3D print job without permis- new design for a 3D-printed object,
sion of the owner of the copyright in but only designs that also embody
18
some kind of useful, novel, and nonobvious invention. On the other hand,
when a utility patent is available, its
protections are broad. Because patents
protect inventions rather than particular
designs, a patent on a 3D-printed invention or 3D-printing process will cover
any object or process that embodies the
invention, even if its design looks different from what the inventor originally
created. Patents also reach further than
copyrights because patent law applies
even when an invention was independently derived.36 An end user can therefore infringe a patent whether or not he
is aware of the original invention.37
All of that said, without changes to the
current law, enforcing patent rights in the
context of 3D printing may prove difficult because of the potentially dispersed
nature of infringements. Much like the
music industry attempting to enforce its
copyrights against music pirates, patentholders will face a type of infringement
that thus far has been atypical in the
patent sphere where individual end users
commit the infringing acts by printing objects based on CAD files whose
origins may be difficult to track. Even if
a patentholder can identify and sue the
CAD file’s distributor, it will need to
show the additional elements of knowledge of the patent and of the infringement to hold the distributor indirectly
liable for the end users’ infringement.38
Trademark and Trade Dress
Trademark and trade dress are forms
of intellectual property that protect the
goodwill generated from the public’s
identification of a product’s source and
standard of quality.39 When consumers
associate a good or service with a particular purveyor, trademark and trade
dress may prevent third parties from
producing confusingly similar goods.
While many trademarks are words or
logos, under prevailing doctrine “almost
anything at all that is capable of carrying meaning” can merit trademark or
trade dress protection, including any
distinctive and non-functional packaging, product design, or other characteristic.40 For example, courts have recognized trade dress protection for uniquely
shaped bottles, silverware, and more—
but only if the object’s design gives rise
to a distinct association with a specific
manufacturer.41
ORANGE COUNTY LAWYER
For 3D printing, trademark and trade
dress may thus provide fairly limited
protection. If a trademark is a word or
logo, simply removing the mark from
a 3D-printed object could substantially
obviate any legal obstacle to further
distribution. To be sure, a physically
distinctive object that satisfies the standards for trade dress protection would
enjoy less easily circumvented protection. But many 3D-printed objects will
not satisfy those standards, and will thus
fall outside the protection of trademark
law altogether.
At present, there is little case law
confronting the intellectual property
implications of copying physical objects
by 3D printing, especially on a large
scale.42 Many of the most interesting
questions surrounding 3D printing are
only beginning to emerge.43 Yet in light
of the widely predicted increased use of
this technology, the legal implications
of easy and ubiquitous 3D copying may
well be of interest not only to companies
contemplating a presence in 3D printing markets, but also to those simply in
the business of producing goods potentially subject to automated replication,
whether authorized or not.
ENDNOTES
(1) Michael Weinberg, It Will Be
Awesome if They Don’t Screw It Up: 3D
Printing, Intellectual Property, and the
Fight Over the Next Great Disruptive
Technology, Public Knowledge 2 (Nov.
10, 2010), https://www.publicknowledge.org/news-blog/blogs/it-will-beawesome-if-they-dont-screw-it-up3d-printing.
(2) Id.
(3) Id.
(4) UK Intellectual Property Office
Patent Informatics Team, 3D Printing:
A Patent Overview, 6 (2013), http://
www.ipo.gov.uk/informatics-3d-printing.pdf.
(5) Weinberg, supra note 1, at 2.
(6) Supra note 4.
(7) Brian Rideout, Printing the
Impossible Triangle: The Copyright
Implications of Three-Dimensional
Printing, 5 The J. of Bus.,
Entrepreneurship & the L. 161, 162
(2011), available at http://jbelonline.org/
volume-5-issue-1-page-161/.
(8) See James Manyika et al.,
Disruptive Technologies: Advances That
www.ocbar.org
Will Transform Life, Business, and the
Global Economy, McKinsey & Company
(May 2013), http://www.mckinsey.
com/insights/business_technology/
disruptive_technologies.
(9) See Neal de Beer, Additive
Manufacturing: Turning Mind into
Matter, Sierra College Center for
Applied Competitive Technologies
(May 31, 2013), http://sierracollegetraining.com/uploads/201307/sierracollege-cact-additive-manufacturingreport-and-recommendations-may2013.
pdf. See also Manyika, supra note 8, at
108.
(10) Heesun Wee, The “Gold Rush”
for 3-D Printing Patents, CNBC (Aug.
15, 2013), http://www.cnbc.com/
id/100942655.
(11) Manyika, supra note 8, at 105.
(12) de Beer, supra note 9, at 7.
(13) Id. at 8.
(14) Dan Gordon, The Revolution Will
Be Printed in 3-D, UCLA Magazine
(Apr. 1, 2014), http://magazine.ucla.
edu/features/the-revolution-will-beprinted-in-3-d/index2.html.
(15) Id.
(16) James R. Hagerty & Kate
Linebaugh, Next 3-D Frontier: Printed
Plane Parts, The Wall Street Journal
(July 14, 2012), http://online.wsj.com/
news/artgicles/SB100014240527023039
33404577505080296858896.
(17) Gordon, supra note 14.
(18) Video: Will 3D Printing Change
the World? (PBS 2013), available at
http://video.pbs.org/video/2339671486/.
(19) Id.
(20) Gordon, supra note 14.
(21) PBS, supra note 18.
(22) Gordon, supra note 14.
(23) Id.; PBS, supra note 18.
(24) See James Grimmelman,
Indistinguishable From Magic: A
Wizard’s Guide to Copyright and 3D
Printing, 71 Wash. & Lee L. Rev. 683,
683-84 (2014).
(25) See Mazer v. Stein, 347 U.S. 201
(1954).
(26) See Brandir International, Inc. v.
Cascade Pac. Lumber Co., 834 F.2d 1142
(2d Cir. 1987).
(27) See Kieselstein-Cord v. Accessories
by Pearl, Inc., 632 F.2d 989 (2d Cir.
1980).
(28) See 17 U.S.C. § 101 (2010) (definition of “pictorial, graphic and sculptural works”).
(29) See Kieselstein-Cord, 632 F.2d at
993.
(30) See, e.g., Apple Computer, Inc.
v. Franklin Computer Corp., 714 F.2d
1240, 1248-49 (3d Cir. 1983).
(31) See, e.g., Computer Assocs. Intern.
Inc. v. Altai, Inc., 982 F.2d 693, 706 (2d
Cir. 1992).
(32) Cf. MAI Systems Corp. v. Peak
Computer, Inc., 991 F.2d 511 (9th Cir.
1993) (holding that RAM copies trigger
application of the “reproduction” right
in 17 U.S.C. § 106).
(33) See, e.g., Aaron Perzanowski,
Fixing RAM Copies, 104 Nw. U. L. Rev.
1067 (2010).
(34) 35 U.S.C. §§ 101, 171.
(35) See Sharona Hakimi (Steven
Primeaux ed.), Federal Circuit Rules for
Crocs on Appeal in ITC Patent Dispute,
Harv. J.L. & Tech. Dig., Mar. 1, 2010,
available at http://jolt.law.harvard.edu/
digest/patent/crocs-inc-v-itc/.
(36) Weinberg, supra note 1, at 5.
(37) Id.
(38) Global-Tech Appliances, Inc. v.
SEB S.A., 131 S. Ct. 2060, 2068 (2011).
(39) See Kieselstein-Cord, 632 F.2d
989.
(40) Qualitex Co. v. Jacobson Prods.
Co., 514 U.S. 159, 162 (1995).
(41) Weinberg, supra note 1, at 10.
(42) PBS, supra note 18.
(43) Weinberg, supra note 1, at 22.
Perry Viscounty is a partner in the
intellectual property litigation practice in
Latham & Watkins’ Orange County office
and can be reached at perry.viscounty@
lw.com. Andrew Gass and Kyle Virgien
are litigation associates in the firm’s San
Francisco office. The authors also wish to
thank 2014 summer associate, Mitchell
Froelich at UCLA School of Law, for his
research and contributions to this article.
This article first appeared in Orange
County Lawyer, October 2014 (Vol. 56
No. 10), p. 16. The views expressed herein
are those of the Authors. They do not
necessarily represent the views of Orange
County Lawyer magazine, the Orange
County Bar Association, the Orange
County Bar Association Charitable Fund,
or their staffs, contributors, or advertisers.
All legal and other issues must be independently researched.
OCTOBER 2014
19