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3-D Printing Shapes Up as Next Frontier In IP Law
Back in February, President Barack Obama indicated in his State of the Union address that 3-D printing may be the next big thing in manufacturing. What he didn't say is that 3-D printing may also be the next big thing in intellectual property disputes.
The new technology, which makes it possible to create an item by simply downloading a design file and printing it out as a plastic object, is likely to trigger conflicts surrounding copyrights, trademarks and patents. And while a scenario in which the average person would be using a 3-D printer at home seemed until recently like far-off science fiction, lawyers now say it won't be long before widespread use of the technology leads to litigation.
"This is a new technology, which means companies will once again be forced to look for ways to protect their intellectual property," said Michael Molano, a partner with Mayer Brown in Palo Alto. "We saw it with music sharing and then video streaming, and now history is repeating itself with 3-D printing."
The price of sophisticated 3-D printers continues to decrease rapidly, and a good machine that a few years ago cost as much as $10,000 can now be purchased for less than $2,000. Staples this month started selling one modelthe Cube printerfor $1,300. The retailer also has said it will be offering a 3-D printing service, in which a customer can upload a design file and have Staples print out the 3-D object, which can be picked up at a local store.
And 3-D printers are no longer merely a tool to create toys and gadgets. They are being used to make functional prosthetics, medical devices and prototypes for aerospace, automotive and other industries. And this month President Obama identified different applications of the technology as part of a $200 million federally funded competition to create three manufacturing institutes across five federal agencies: the Departments of Defense, Energy, and Commerce, along with NASA and the National Science Foundation.
But the legal waters for 3-D printing are still unchartered, and companies and consumers are testing the limits. Just last week, a company that used a 3-D printer to make a plastic handgun that can fire real bullets was told by the State Department, which has the authority to review arms exports, to take down the online blueprints for the weapon and a few other firearms and accessories. The company, Defense Distributed, owns a website called DEFCAD that hosts firearms-related downloadable files for 3-D printing, including silencers, ammunition, and grenades, as well as 3-D guns. Before the State Department stepped in, the blueprint for the gun had been downloaded more than 100,000 times, according to the company.
In this case, the primary objection to the 3-D gun was not related to anyone's IP, but it's inevitable that at some point 3-D printers will upset an entire business sectorjust as the Internet forced change in the music and film industries, attorneys say.
"It's foreseeable that some industry will be disrupted by widespread 3-D printing," said Michael Weinberg, a vice president and attorney with the Washington, D.C.-based nonprofit Public Knowledge, which advocates for an open Internet. And while it's too soon to predict which industry will be turned upside-down by 3-D printing technology, Weinberg is confident that "it's going to happen."
When it comes to IP and 3-D, infringement could occur at different levels, Molano said: An item might be protected by copyright. A digital file that contains the blueprint for the item might be protected by copyright. An item might be protected by trademark or trade dress. Or it might be covered by a design patent or even a utility patent.
When the infringement occurs, attorneys will have to consider how they want to approach such a case. They could go after direct infringersa move the music industry tried for a while, when it sued individuals who illegally downloaded music. They could sue indirect infringers who allegedly contributed to or induced the infringement, such as the manufacturer of the machine or even a retailer that provides the printing service. Or they might pursue the individuals who wrote the source code for the blueprints used to print the item on a 3-D printer, Molano said.
It remains to be seen which alternatives, if any, are most effective, he added.
But Weinberg, who has written two white papers on the new technology, recommends that an industry threatened by 3-D printing look to the past before trying to sue the disrupting technology out of existence.
"The music industry sued to stop change, but change still came," Weinberg said. "They wasted a lot of time and money and alienated their customers before they figured out how to take advantage of the technology with things like iTunes and Spotify."
If a disrupted industry is savvy, it will skip what Weinberg calls "the first phase"the period when a company responds to a technological threat by trying to stop it through litigation. "If you're an IP lawyer, your instinct is to sue," he said. But Weinbeg believes companies would be better off taking a lesson from history and seeking ways to profit from 3-D printing. They could, for example, license downloadable 3-D plans, he said.
Lawmakers, meanwhile, may be tempted to create new legislation to further protect copyright or patents in response to 3-D printing. But both Weinberg and Molano say this isn't necessary. If someone duplicates something that is protected, that is infringement, and laws are already in place. "The legal arguments are the same," Molano sad. "It's just the technology that's different."
While a major intellectual property test case has yet to emerge from 3-D printing concerns, takedown requests and cease-and-desist letters have been sent by companies that believe their rights are being infringed by a 3-D downloadable file. Earlier this year, for example, cable network HBO sent a letter to a 3-D printing and prototyping company called nuPROTO, asking that it stop selling a 3-D printed iPhone dock modeled after the Iron Throne chair from the popular HBO TV series Game of Thrones. The company designed and developed the code file for the phone dock, but HBO said it owns all rights to the show, its characters and its objects, and nuPROTO removed the file from its site.
Also earlier this year, Moulinsart, the company that owns the rights to the comic book character Tintin, served a company called Thingiverse, which is a marketplace for 3-D model plans, with a Digital Millennium Copyright Act takedown notice after it offered 3-D printing designs of Tintin's moon rocket. Thingiverse complied.
That approach may not be sustainable, however, especially when file-sharing sites are increasingly offering 3-D files. The Pirate Bay, for example, which is based outside the U.S., refused to remove the printable gun plans from its site when the State Department told DEFCAD to do so; as of press time, it was still available on the website.
And it's only a matter of time before 3-D machines, which today can produce usable prosthetics for amputees as well as handguns, become even more sophisticated and are able to produce items made of metal and plastic. The overall speed with which the technology is advancing means, according to Molano, that the potential for infringement on patents and other forms of IP will only increase with time.
Lisa Shuchman writes for Corporate Counsel, a Daily Report affiliate.