THE HIGHLIGHTS OF 3D PRINTERS AND INTELLECTUAL
PROPERTY
Paris, 10 June 2014
By Caroline HUGUET-BRAUN
French and European Trademark
and Design Attorney,
REGIMBEAU
The missing piece of your favourite puzzle, a priceless jewel, a spare part to replace… All of
these products can technically be manufactured by 3D printers. At the dawn of the era of
these "new" machines focus is on those printers which can revolutionize manufacturing
systems which are also those likely to dominate the judicial pages of Intellectual Property
chronicles.
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To understand the impact of this new product, we must define it.
A 3D printer is a machine that starting from a digital file representing a product (digital
model), reproduces it in three dimensions. More specifically, the user "draws" a product using
a CAD (computer aided design) and then creates a digital file that will be sent to the 3D
printer to obtain the final product. It is also possible to use a 3D scanner, eliminating the
need to "create" the product in digital format, and basing it therefore on an existing object.
The scanner produces the digital file required for the 3D Printer to design the product. For
example, if a spare part of your coffee maker is broken, it is possible to scan the nondamaged part, send the file to your 3D printer and you will be able to replacement part.
There is talk of additive manufacturing, where objects are created by the depositing of
material layer by layer, which differs from other methods that work directly with the matter.
According to the specialists, this enables products with a more complex structure to be
obtained than those which are achieved through other technologies. Several techniques exist,
the most famous being the FDM which consists of a deposit of molten material, selective laser
sintering or, the oldest, stereo lithography (method of solidifying liquid plastic by projecting
a UV light).
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The terminology used merits some explanation.
The name “3D printer” does seem to be somewhat surprising, at least at initially. In effect,
the definition of a printer (by the Oxford English Dictionary) is "a machine for printing text or
pictures, especially one linked to a computer" which could be lead to some confusion. But
when studying their operation the name fulfils its meaning. A digital document is reproduced
using a machine containing nozzles similar to those used in standard printers that move to
place the product. Thus, it seems that the origin of the term is a simple analogy for the
functioning of the conventional printer...
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These printers are mainly used in industry ...
Even now, 3D printers are mainly used for prototyping. Though some schools are already
equipped and the product is not, therefore, new (it was created in the 80s!), their use
remains ad hoc, or at least intended for low volume reproductions. However, in some
industries they are already in use, not only at the stage of R&D for prototypes, but directly as
a method of manufacturing products. The use of these machines can be sometimes breathtaking, worthy of science-fiction. Besides the fact that this "new" technology is used in the
aerospace and automotive industries to create complex spare parts, its application in the
medicinal field is remarkable. For example, a surgical department in Dijon has created
custom facial implants, in a plastic material, to recreate their patient’s skulls and, in England
a man's severely damaged face has been restored.
A professor at a Californian University has created a construction technology able to build a
wall or even a house in less than 24 hours by means of a crane and the deposit, layer by
layer, of reinforced concrete.
More frequently, 3D printers are used to create custom artificial limbs and hearing devices.
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…But can also be used at home!
As the price of 3D printers and scanners is becoming increasingly more accessible, many
products can be replicated at home. Spare Parts, toys, shoes, jewellery, we can let
our imagination go wild... anything and everything is possible, providing you own the
appropriate digital file and machine.
The issue of the safety of these “home-made” products is also very important. For example,
the question of the choice of material or the reliability of the created product arises as well
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as that of the legality of said product. Remarkably a Texas student succeeded in creating a
firearm and firing 6 bullets before it disintegrated.
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3D printers could well be described as revolutionary. And as with any revolution,
the legal consequences could be significant!
Numerous commercial products are protected by Intellectual Property rights. Their design
may be protected by copyright or model and their technical functions by patent. In addition,
the shape of certain products or packaging is considered as sufficiently distinctive as to be
protected by a trademark (such as the Coca Cola® bottle). Although their reproduction may
be characterized as counterfeiting, the scope of Intellectual Property rights has its limits.
Thus, should the use of 3D scanners and printers be classified as a counterfeiting or should it
constitute a lawful exception?
Initially, numerous acts are likely to be considered as counterfeiting, as, naturally, one thinks
of the reproducing the original product with the machine. It must be remembered that an
electronic file that "transforms" the 3D product into 2D is essential; though we cannot ignore
the fact that the creation of the file itself may be considered as an infringement. For
example, it could be considered that the file is either an adaptation of the original work
protected by copyright or an imitation of a trademark. However, it is difficult to consider it
as the counterfeiting of a patent or model, as the product is not reproduced and its technical
functions as well as essential aesthetic characteristics are neither upheld nor imitated.
The availability of these files through either a commercial site or private individual also
seems likely to be characterized as counterfeiting.
However, in order to determine whether these acts are lawful, an important question must be
asked: in what context is the act carried out? In other words, is the act committed in the
course of trade, in a private setting for non-commercial purposes or for experimentation
purposes?
In effect, article L. 122-5 al 2 of the Intellectual Property Code establishes an exception to
the protection by copyright law, namely for copies or reproductions reserved strictly for
private use. In articles L. 613-5 b and L. 513-6 of the Intellectual Property Code protection iss
not extend to patents and models for acts done privately for non-commercial or experimental
purposes. With regards to article L. 713-2 of the ICC, it stipulates that there is trademark
infringement if the reproduction or imitation of the mark was made in the course of trade
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(namely "in the context of a commercial activity presenting an economic advantage and not in
the private sphere" (ECJ Arsenal 12 October 2002)).
These conditions or exceptions therefore need to be clarified in order to determine whether
manufacturing products with 3D printers is lawful.
 In terms of copyright law
The exception for private copying of copyrights requires that the copyist and the user are the
same person, with a tolerance for family members. However, (in Case Law) the person who
provides the means to reproduce a work, as well as the one who selects the content has also
been considered as the copyist. Thus, we cannot ignore the fact that the individual who uses
a "fab-lab" (laboratory providing 3D printers) or businesses providing these printers to make a
copy of their favourite piece of jewellery could be regarded as infringer, just as much as the
"fab-lab" or shops themselves. In addition, if the COPY of the product can, in some cases, be
considered as lawful, the providing of the file is not (if it is performed by means of one’s own
machines and for oneself). Regarding the provision of the file, it will naturally fall within the
scope of counterfeiting.
 In terms of patents and models
Exceptions for the protection of patents and models to acts committed in a private setting for
non-commercial or experimental purposes must be strictly interpreted.
While the creation of the electronic file itself may not be regarded as an act of counterfeiting
as it does not reproduce the product, the provision of said file could be described as
‘providing
essential resources for the realisation of the product covered by the patent,
regardless of the commercial purpose’ and, therefore be considered as counterfeiting. This
characteristic does not exist in model law.
Regarding the reproduction of the product itself by the 3D printer, if it remains in the private
and non-commercial setting, it will certainly not be considered an infringement.
 In terms of Trademarks
Finally, the answer is different regarding trademarks. Counterfeiting is only present if the act
is performed in the business world. It is not an exception to the law, but a condition for
committing counterfeiting. Thus, if the created electronic file is made available for sale to
the public, there will be infringement, just as for the final product obtained by the 3D
printer.
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The courts will surely soon have to decide on all these points and to assess, case by case,
whether or not there is an infringement.
In any event, this technology risks being so attractive that there is likely to be a loss of
consciousness as to the legality or not of these acts on the part of the consumers and internet
sites providing electronic files of protected products, not forgetting the "fab-labs".
In any case we advise you to check that the product to be reproduced is not protected by an
Intellectual Property right, and we are available to help you with any necessary research.
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A real technical and legal revolution?
Having these exceptional machines available at your fingertips will certainly be a revolution
for all individuals and will permit significant progress in many areas that raise the question of
the reliability of created parts. As for the Industrial Property rights, it will generate
discussions leading to a more precise definition of their scope as with any technological
advance.
In any case, we can expect there to be legal disputes in this field and have already
anticipated these issues in order to be ready to respond! Please contact us before
engaging in any activity using 3D printer technology!
Caroline HUGUET-BRAUN ([email protected])
French and European Trademark and Design Attorney
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About REGIMBEAU:
REGIMBEAU, a French IP law firm, has been assisting companies and private and public project
developers to protect, enhance and defend their innovations (patents, trademarks, designs)
for more than 80 years. Fifteen partners head a team of more than 200 people whose skills
are put into practice in every strategic aspect of Intellectual Property - business intelligence
and information search, license agreements, IP portfolio audits, partnership negotiations,
acquisition of industrial property rights, litigation. Thanks to its wide-ranging expertise,
REGIMBEAU (present in Paris, Munich, Lyon Rennes, Grenoble, Montpellier, Toulouse and
Caen) can meet its clients' needs for international strategic consulting while preserving
personalized relations of the highest quality.
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