It will come as a surprise to many that technology underpinning 3D printing (often known as “stereolithography” or “additive manufacturing”) has existed for over 30 years, first entering public consciousness when French inventor Alain Le Mehaute filed a patent to protect the stereolithography process in 1984.

Whilst progress in the commercial development of 3D printing stagnated during the 1980s and 90s, the expiry of original patents over recent years has seen a new wave of interest in the possibilities that can be achieved through 3D printing. The potential benefits of 3D printing have been widely commented on and are seemingly endless; from offering a solution tothe global shortage of organs for transplantstorevolutionising the way that food is consumed.

At a commercial level, in light of the dramatic fall in the cost of 3D printers over the past few years, large-scale manufacturing can for the first time be realised by ordinary consumers. It is therefore possible that we will see a paradigm shift in the operation of supply chains, with consumers and small businesses “printing” their own products rather than approaching third party manufacturers to do so.

Although these expectations are likely to be impossibly high for a single technology, there is little doubt that 3D printing will be transformative in both commercial and not-for-profit sectors. However, as with any significant innovation there are likely to be risks and implications that need proper consideration; in this case, the potentially disruptive effect that 3D printing may have on the legal framework governing Intellectual Property Rights (“IPR”).

As it becomes easier and cheaper to reproduce any object, there are concerns that the copier will be exposed to a claim for infringement of a third party’s IPR. There have already been instances of copyright infringement claims in the United States, including an online trader who sold iPhone chargers in the form of the Iron Throne from HBO’s series, Game of Thrones, and there are expected to be many more. Although most would agree that this is the correct approach where commercial printers are involved, it may be seen as overly prohibitive to restrict consumers who wish to replicate items for personal use.

The purpose of this article is to briefly review the potential impact that 3D printing will have on the framework of intellectual property rights in the UK.

Copyright

Copyright is an important intellectual property right to consider in the context of 3D printing. Copyright automatically subsists in certain works involving intellectual creation (e.g. literary or artistic works). Copyright does not need to be registered, and will usually come into existence upon creation of the relevant work. Depending on various factors, such as the type of work, copyright protection can last for up to 70 years after the death of the person who created the work.

For an object to qualify for copyright protection it must be an “artistic work”. It is commonly understood that only sculptures or works of artistic craftsmanship can legitimately be categorised as artistic works. On that basis, it is unlikely that mass-produced objects will benefit from copyright protection.

The Courts have confirmed that for an object to be an artistic work, it must have some aesthetic appeal, taking account of the author’s intentions. For example, a mass-produced suite of furniture was deemed not to qualify as an artistic work, whereas individually handcrafted jewellery may. In any event, it has been historically difficult to successfully establish that an object is an artistic work for the purposes of copyright.

However, if the original object does qualify for copyright protection, the reproduction of that object using a 3D printer is likely to amount to copyright infringement – unless the copier has a defence or consent from the owner of the copyright. Whilst this is likely to be of concern for businesses reproducing objects on a commercial scale, consumers who “print” a personal copy of an object for private, non-commercial use will have a valid defence under copyright legislation. In these circumstances, consumers would not be deemed to infringe on the copyright of the original object.

In view of the above, the fundamental question will be whether the original object qualifies for copyright protection, and if so, whether the 3D printing is being carried out for commercial purposes. If the answer to both is positive, it is expected that the copier will be infringing on copyright, unless they have a defence or the necessary consent.

Trade Marks

Trade marks are used by traders to differentiate their goods or services from those of other traders. Trade marks are usually a business’ trade name, logo or strap line and can exist either as a registered trade mark (where the owner would apply to register the mark on a specified register) or an unregistered trade mark.

Generally speaking, the owner of a registered trade mark has the exclusive right to use the trade mark in relation to the goods and/or services for which it is registered. On that basis, if a third party seeks to use a similar or identical mark in relation to similar or identical goods and/or services, the owner of the existing trade mark is entitled to bring proceedings for trade mark infringement.

If an object contains a trade mark, the reproduction of that trade mark by way of 3D printing may be an infringing on a third party trade mark. However, in most cases, the owner of a trade mark will only be able to bring a claim for trade mark infringement if the reproduction is “in the course of business”. Similarly to copyright, commercial traders who are printing objects for the purposes of sale need be cautious about the prospect of trade mark infringement. However, consumers printing objects in a personal capacity are unlikely to be acting in the course of business, and therefore reproduction in these circumstances will not amount to trade mark infringement.

Design Rights

Design rights are intended to protect the appearance of purely functional articles, with no requirement for artistic or aesthetic appeal. Like trade marks, design rights can be registered or unregistered. In order to register a design, it must be whole or part of a product, new and have individual character. Once registered, design rights can be renewed every 5 years up to a maximum of 25 years.

Design rights may be the most appropriate form of protection to prevent objects being commercially reproduced by way of 3D printing, and can fill the gap where copyright will not apply. Commercial reproduction of objects using 3D printers without a valid defence or the consent of the owner of the design right may constitute infringement of design rights. Designs rights share a similar defence as applies under copyright and trade mark law; the reproduction of an object will not be design right infringement if it is carried out by an individual for private, non-commercial use.

Comment

On brief analysis, it appears that the current IPR framework is sufficient to adequately address the reproduction of objects using 3D printers. It ensures that commercial 3D printers are still required to obtain consent, as would be the case in any other manufacturing process, whilst ensuring that consumers are not unfairly penalised for replicating objects for their own private use.

Those most at risk of infringing on third party IPR will be small businesses, who are seeking to cut manufacturing costs by printing products themselves without proper assessment of the legal implications. It is expected that corporations who own IPR in objects or designs will be wise to the likelihood of infringement and will inevitably step-up their operations to monitor use of their IPR in the context of 3D printing.

However, whilst some traders may be focussing on the need to more-robustly enforce their intellectual property rights to prevent infringement, others see opportunity in commercial exploitation of 3D printing. For example, Lego have obtained a patent to protect the process under which it will enable its customers to print their own Lego bricks on 3D printers at home. It is easy to see how the prospect of printing your own product, licensed by the product owner, could capture the imagination of consumers. For businesses, it could be a simple, cost-effective way to add another revenue stream. Commentators have suggested that other retailers and/or product owners may also follow Lego’s initiative and make their products available to be printed using some form of subscription model.

Whatever forthcoming avenues are to be pursued by businesses and those in the non-for-profit sector, it is plain to see that 3D printing has the potential to cause widespread disruption in a range of traditional industries. For many, however, this disruption will give rise to opportunity, which on assessment, is more than likely to outweigh the risks posed by 3D printing.

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Written by Alex Saunders, Leathes Prior.