August 25, 2014
Wired Innovation Insights
By Elizabeth D. Ferrill; John F. Hornick; Kara A. Specht
Authored by Elizabeth D. Ferrill, John F. Hornick, and Kara A. Specht
In this second installment of a three-part series on legal issues relating to 3D printing, we talk about the legal ramifications of 3D printing objects covered by other people's intellectual property rights.
3D printing could involve all types of intellectual property rights, especially patents and copyrights, and trademarks too if you copy someone else's brand designations. Keeping IP rights in mind will be helpful when determining if you may have any liability for what you 3D print.
In our first post, we explained patents, copyrights, and trademarks. A patent gives the owner the right to prevent others from making, using, selling, or offering for sale the patented invention. Similarly, a copyright owner has the exclusive right to reproduce, modify, distribute, display, or perform the protected work. Trademark owners have the exclusive right to use their trademarks for their products and services.
Many 3D printable objects may be covered by IP rights owned by another person, and therefore printing or helping others print these items may infringe those rights. For instance, the look of a 3D printed object might be protected by an existing design patent. And if the item you are printing is an artistic work (e.g., an ornate vase or sculpture), then you could be infringing another's copyright.
Copyright law may also come into play when you simply download a file to print an object, because that file may have its own copyright. Even without actually printing the object, by downloading a copyrighted file, you are copying it to your computer, which could infringe the file owner's exclusive right to reproduce.
Maybe. While the patent laws prohibit selling and offering to sell objects protected by other's patents, the law also prohibits making or using those objects, even if you don't try to sell them. This is true even if you do not know that the object is covered by a patent. Realistically speaking, however, recovering damages from a person printing a patented item will probably be difficult if there are no sales. Further, any damages that can be recovered from a printer who is not selling the item will probably be small because no profit is being made.
Copyright laws are similar. Generally, we speak of an "infringing use" as copying a protected work without permission. The intentional copying of a copyrighted work without permission, whether sold or not, is usually infringement. However, like patent law, it may be difficult to prove damages without a sale. The same is true of copying trademarks. However, unlike patent law, if the copyright is registered with the federal government before you copy it, copyright infringement has a minimum damages penalty, even if the printed item is never sold. Also, unlike patent law, copyright infringement may be a criminal offense if copies are sold for commercial or private financial gain.
If you create a design independently, you cannot infringe anyone's copyright. Copyright infringement requires that there be some form of copying or imitation. But creating a design file that intentionally mimics another's design or results in a real life object designed by another may be copyright infringement. However, independent creation is not a defense to patent or trademark infringement.
If you create an object that is covered by a patent, you can directly infringe a patent even if you don't know about it. If you know about the patent, then creating a design file and encouraging others to print the object may also make you indirectly liable for patent infringement. The patent laws allow a patent owner to hold someone responsible for helping and encouraging another to infringe, if they know about the patent. The same is true for copyrights.
Renting 3D printers is becoming fairly common practice, both for personal and business use. One concern is that the owner of the printer may be responsible for actions of a borrower. Because the owner will not be the one 3D printing the object covered by someone else's IP rights, the law would hold the borrower directly responsible for infringement and the lender indirectly responsible. Historically, the IP laws have not held providers of technology that enable infringement (e.g., printers or 3D printing materials) responsible for infringement by their users unless they directly encourage infringement. This is because this technology has other uses besides creating infringing products.
Originally printed in Wired Innovation Insights on August 25, 2014. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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