This post was written prior to our January 2017 merger, under our previous firm name, MacPherson Leslie & Tyerman LLP.
3D printers are not new however this technology has recently become much more accessible to businesses and individual consumers. 3D printing has the potential to drastically transform the landscape in which businesses in the manufacturing and design-based industries operate. Many are also predicting that most Canadians will have personal 3D printers in their homes in the not-too-distant future.
Like many new technologies, 3D printing raises a number of legal questions and challenges, particularly challenges related to the unauthorized reproduction of products protected by intellectual property (IP) rights.
What is 3D Printing
3D printing (also known as “additive manufacturing”) is a common term for a number of different techniques that are used to create three-dimensional objects from a digital model. The design for the 3D object is created on a computer using a scanning device or computer aided design (CAD). The design is used by the 3D printer as a “blueprint” to create the object layer-by-layer out of metal, nylon, plastic or other materials.
3D printing differs from traditional manufacturing technology which generally involves providing a base material and then removing the material that is not required through a “subtractive” process such as cutting.
Implications on IP Rights
Intellectual property laws can apply to the technologies that are used to create the 3D objects as well as to the objects themselves. 3D technology raises issues with four main classes of IP rights – copyrights, industrial designs, trademarks and patents.
Copyright is an unregistered right that automatically arises upon creation. For the most part, the principles of copyright protection and infringement apply to 3D printing as they apply to any other copyrighted material.
In Canada it is generally not an infringement of copyright to make a copy of an article or object which has a practical or “utilitarian” function. For this reason, many functional consumer products are not protected by copyright. The exception to is this where the original object is considered an original “artistic” work and has been reproduced 50 times or less. For example, a local business that makes unique jewelry or pottery could stop the reproduction of those designs under Canada’s copyright legislation.
Copyright may also extend to the design or blueprint for the object that is created using a 3D printer. As such, a person who copies or distributes a blueprint for a 3D object without the permission of the owner could be infringing the owner’s copyright in that blueprint.
However, the increased use of 3D technology will create challenges for copyright owners. The same thing that happened with peer-to-peer music file sharing may happen with designs for 3D objects that are shared electronically and printed at home. This type of electronic sharing is difficult to detect and taking action against infringers is time consuming and costly. Further, the Copyright Act contains exemptions for users where a copy of a work is made for private purposes under certain circumstances. For example, an individual who copies a design for a 3D object for his or her own use may not be infringing the copyright in that design (particularly if that individual is not obtaining any economic benefit from reproducing the design).
Industrial design protection can be an effective way to protect against infringements caused by 3D printing. Industrial designs protect the “look and feel” of an object such as its shape, pattern, configuration or ornamentation. For example, protection can be obtained for the shape of a food container or the visual features of a running shoe.
In order to benefit from the protection, the owner must register the design with the Canadian Intellectual Property Office. Registration can prevent the unauthorized production, distribution and imitation of identical or substantially similar designs for commercial purposes.
There are however limitations on this protection. The legislation does not protect functional components of the object – for example, a manufacturer cannot obtain protection for a specific function or feature of a camera or video recorder. Further, industrial design infringement will only occur, if a copy is produced that is nearly identical in look and feel to the protected design. Therefore, making even a slight change to the original design before it is printed could avoid infringement. For this reason, the owner of the design may need to anticipate the ways that the object can be changed or customized and then apply for protection for a range of variations to the design.
A trademark is a word (or combination of words), slogan, design, sound, colour, three-dimensional form (or combination of any of these types of elements) used to distinguish products or services from those of another entity and to identify particular products or services to the consumer. Trademarks help protect owners develop and maintain goodwill and brand-recognition. As such, the unauthorized duplication of 3D-printed designs can undermine the owner’s brand recognition and reputation.
Individuals or companies that rely heavily on the goodwill in their brands are best served by registering their trademarks however a trademark owner does acquire some limited legal rights simply by adopting and using the mark (these are known as common-law trademark rights). Therefore, if a trademark owner can demonstrate that a particular design enjoys sufficient reputation to warrant common law trademark protection, the owner may be able to stop the sale of objects made using a 3D printer which are confusingly similar.
3D designs can be the subject of an actual Canadian trade-mark registration however in order to register, the Canadian Intellectual Property Office requires an applicant to establish that the design has acquired “distinctiveness” in Canada (i.e. evidence of substantial sales and/or advertising of products using the design). Finally, if a 3D-printed object displays the logo of a trademark owner the sale of that object could violate the rights of that trademark owner (unless the seller has obtained the owner’s permission to sell the object). In this case however, the seller could easily remove the trademarked logo from the design of the 3D object prior to printing.
Patents are used to protect a process or product. A patent gives the owner an exclusive right to make, use or sell the invention for a defined period of time in the jurisdiction where the patent is granted.
Therefore, patent infringement can occur by the simple act of printing a 3D copy of a patented object without the permission of the owner. Additionally, Canada’s Patent Act does not contain a personal use exemption (unlike the legislation protecting copyright and trademark in this country) and therefore the absence of a commercial purpose is not an exception to patent infringement. An example of this type of infringement would be to use a 3D printer to create a patented kitchen utensil; the act of printing the patented object would be an act of infringement as would the sale or use of the object without permission of the owner.
However, similar to the challenges faced by copyright owners, patent owners may find it difficult to enforce their rights where the reproduction of a patented invention is being by done by an individual in the privacy of his or her own home. It may be extremely difficult to monitor home use of 3D printers and patent infringement may go widely unnoticed.
3D printing technology has the potential to profoundly change the environment in which we now live. 3D printing can result in cheaper, faster and more versatile manufacturing however it raises a number of challenges to current IP laws in Canada. Many are predicting that these laws will need to evolve to adapt to the nuanced issues raised by 3D printing. If so, this will not be the first time that these laws have adapted to accommodate a rapid increase in the use of new technology by Canadian individuals and businesses and it won’t be the last. New technologies have challenged IP rights before but many IP owners have adapted and flourished in these new environments.