3D printing opens up IP can of worms

Three-dimensional printing can be used to create all sorts of physical objects, from small toys to entire houses. Whole economies may be transformed if it’s cheaper to print products near where they’re sold instead of importing from faraway lands, and the effects on society don’t end there.

Three-dimensional printing is also called additive manufacturing. It shapes raw materials into the desired form without the waste caused by subtractive manufacturing, or machining, where machines cut pieces of raw material to create objects.

As it becomes more widespread, 3D printing will affect many lawyers, and not just in the courtroom. “My firm has represented clients involved in 3D printing,” said Maya Eckstein, a Richmond, Va.-based partner and head of the intellectual property practice group at Hunton & Williams LLP. “It isn’t a huge part of anybody’s practice at this point,” she added.

Legislation governing 3D printing will come, in part, from laws already on the books, but new laws may be required. “A lot of this is still theoretical since we haven’t seen lawsuits yet,” Eckstein added.

3D printing and the law

“Several years ago, there was lots of concern and confusion about how existing laws would affect 3D printing,” said Paul Banwatt, chief operating officer and general counsel for the Toronto-based 3D scanner manufacturer Matter and Form Inc. “Much of that concern was overblown because the use cases that actually happened aren’t the ones people were concerned about.”

Foreseeably, IP has been abused. “A company called nuPROTO LLC created a 3D-printed Game of Thrones (a television series on HBO) ‘iron throne’ phone docking station,” said Paul Horbal, a Toronto-based associate at the intellectual property law firm Bereskin & Parr LLP. “This throne is made from the melted-down swords of the king’s enemies. It has a distinctive and foreboding look.”

The phone dock manufacturer attracted distinctive and foreboding looks from people at HBO. Horbal notes that nuPROTO did this without HBO’s blessing.

“This technology lets anyone, a fan, or somebody who just wants to trade off the popularity of the series, to easily make something like this,” Horbal continued. “In the past, it would have required mold-making and getting involved with plastics manufacturers. Now, if you sell 50 units, you don’t necessarily lose money.”

Protecting intellectual property

Protecting IP in an age of 3D printing may become a giant game of Whack-a-Mole more complex than the one music publishers once played with file-sharing sites like Napster and Kazaa.

“There are many different layers of intellectual property in a 3D-printed object,” Erik Birkeneder explained. “There’s copyright on the CAD [computer aided design] file. There are trade secrets in how the materials are assembled. You can patent the design. You could potentially patent the process.”

“There could be loopholes in patents where you have not properly claimed one part of the chain,” added the Los Angeles-based associate in the intellectual property group of Nixon Peabody LLP.

Birkeneder noted an ongoing dispute between competing manufacturers of clear braces. One company scans a patient’s mouth to 3D-print braces. “Another company scanned people’s mouths, sent the scans overseas, had somebody there design the clear liner on a computer-aided design system and send it back to the United States to print out. Because not all the steps were performed in the U.S., they argued they didn’t infringe.”

To understand the Napster-like scope of this issue, Eckstein suggested IP lawyers visit Thingiverse.com, a website run by 3D printer manufacturer MakerBot Industries LLC. “If you search for ‘Star Wars’ or ‘Disney’ on the site, you can find all sorts of free 3D printing files to download,” she said. She noted a parallel to YouTube when she asked: “Is Disney sending take-down notices to this website?”

“Even creating it for yourself is infringing a patent. There’s no fair use or fair dealing when it comes to patents,” said Horbal.

Minimal impact – exceptions to the law

“Minimal impact” cases when other alternatives aren’t available or practical might invite exemptions.

For instance, a homeowner may break the plastic knob used to control a stove burner. “What was originally a 10-cent item might cost you $50 to replace,” said Horbal. “With 3D printing, you can take a knob off the same stove, scan it, print it at home and have a replacement knob that’s as good as the original.” (Thingiverse.com offers a selection of printer-ready stove knob files.)

How far can this argument be pushed? Mike Dover, a Toronto-based college business professor and author of Dante’s Infinite Monkeys, cited the thinking of futurist Jaron Lanier when he suggested people could feed beautiful Italian thread into a 3D printer so it can make a suit every day.

“Instead of buying Italian suits, you could download the designs and have 100 of them,” Dover suggested. “At the end of every day, you come home from work, you put your suit into the machine, it takes the threads apart, rebuilds the suit overnight. In the morning, you have a brand new, perfectly tailored custom Italian suit.”

Using 3D printing to protect IP

The onus is still on owners and creators to secure their IP using measures such as digital rights management (DRM) on CAD files, processes to check them in and out and general tightening of data security.

Birkeneder figures companies can use 3D printers as IP protection tools. “If you can print (prototypes) in-house, you can protect all your IP,” he said. “Anytime you send designs elsewhere, abroad, to third parties, you risk your sensitive data and trade secrets.”

A lot of copying will happen,” Form and Matter’s Banwatt admitted. “There hasn’t been much analysis of what that means.”

He offered two perspectives. First, there’s the “impending doom” view. “A few years ago, Gartner released this report saying there would be $100 billion in IP infringement caused by 3D printers in the next few years,” he said. “People got up in arms about it. Honestly, I don’t see that playing out.”

Banwatt’s other perspective: the introduction of new tools and new possibilities they introduce, from faster prototyping to cheaper manufacturing and beyond.

This article is the first in a two-part series on 3D printing and its effects on the legal industry. Read the second part (when published in late July) here. This article originally appeared on The Lawyer’s Daily website, published by LexisNexis Canada Inc.

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