Star Trek Science Now Available: 3D Printing as the next Disruptive Technology and its Effects on Intellectual Property Law

 

I. Introduction

 

From wireless phones to touch screen computers, Hollywood over the years has provided a glimpse of technology’s future.  Who would have known that the science fiction of Star Trek’s replicator is gradually turning into science fact with the advent of 3D printing?  Hidden behind the scenes of the rapid advancement of technology is the evolution of IP Law that is continuously being tinkered with great minds.  The progression of the legal landscape provides a clue to future IP law as technologies catch up to people’s fantasies.

The 3D creation possibilities are limitless from printing an existing human jawbone[1] to the Penrose triangle.[2]  Human imagination has no bounds, and with 3D printing, the objects created will soon have no bounds.  3D printing as the next disruptive technology will forever change IP law, therefore, it is important to examine the legal effects of past disruptive technologies to identify 3D printing legal challenges and understand how to balance between expanding commons and encouraging innovation.

 

II. 3D Printing Technology Current Capabilities

 

            3D printing, as the name suggests, allows a home user to produce tangible, 3D objects.[3]  Prior to producing a 3D print, a computer-aided design (“CAD”) file is generally required.[4]  A CAD file can be created from scratch, from a prior 3D scan of an existing object, or from an improved 3D scan of an existing object.[5] 

3D scanning plays an important role in producing many 3D prints.  A 3D scan is generated by skimming a laser around a 3D object to capture its contour details and creates a CAD file upon completion of the scan.[6]  Current 3D scanning technology even allows scans to be made from a smartphone.[7]

Once a CAD file is ready for print, the file is sent to the 3D printer and the contents are “sliced” into layers to be printed.[8]  There are several different types of printers.  In general, however, similar to a 2D printer, a 3D printer disperses ink based on “sliced” information of a CAD file and builds an object layer by layer.[9]  The “ink” can be anything from metal, plastic, powder, to a rubber-like substance.[10]  Finally, the layers are fused together and solidified to create the object.[11]

 

a. Advantages of 3D printing

 

3D printing provides for advances in many areas including the arts, science, business, and home.  In the area of arts, museums can now scan and print an exact replica of a historic pieces such as a Stradivarius violin[12] and let museum goers not only see but feel how a Stradivarius might feel in their hands.  Another potential use is if an artist wants to make a sculpture of a thinking woman to complement the thinking man, the artist can work off of a 3D scan of the original sculpture.

In science, 3D printing has provided doctors a better way to customize body-contacting devices and structures.[13]  Scanning and work off a patient’s original body part is the best way to customize a replacement body part.  3D scanning and printing has helped doctors produce hearing aids, prosthetics, and hip-replacement orthopedic implants.[14]  In fact, thousands of dental fillings and bridges are currently printed daily.[15]

In business, the industrial advantages are plentiful.[16]  Such advantages include rapid design prototyping, cost-effective manufacturing of customized one-off items, production of designs that usually will not be feasible with traditional technologies, and efficient use of materials.[17] 3D printing simplifies the manufacturing process by building pre-assembled systems.[18]  It also allows for varied product manufacturing without re-equipping factories with new machinery, which greatly reduces costs and production time.[19]

Finally, at home, 3D printing allows for do-it yourself (DIY) enthusiasts to print and create a multitude of products.[20]  The DIY community is a broad collection of people engaged in the creation, modification or repair of objects without the aid of paid professionals.²[21]  For example, if a stroller handle is broken, instead of sending the stroller into the manufacturer to get it fixed, a DIYer could simply find a 3D scan of the handle, print it with a 3D printer, and assemble the printed part himself.[22]  A DIYer who can’t seem to find the right pair of shoes can print customized shoes that fit exactly with the right size, style, and color.[23]

 

b. Challenges of 3D printing

 

The advantages of 3D printing seem limitless, and as technology progresses, 3D printer technology is beginning to gradually look like the Star-trek replicator.  Achieving advances in technology that parallel the star-trek fantasy, however, has its challenges.  Currently, there are limitations on print speed, size, and type of materials used just to name a few.[24]  Therefore, although 3D printing technology has been available since the 1980’s,[25] its uses are limited because of the technological limitations.  In addition, there are cost limitations that prevents the widespread use of 3D printing. 

These challenges, however, will be gradually overcome throughout the years.  Technology is rapidly improving, as evidenced by the fact that more types of materials can be used for printing compared to the 1980’s.  Costs are also decreasing.  In the 1990’s 3D printers cost about $15,000 to $25,000, but now, home versions of 3D printers can be purchased from about $500 to $2,000.[26]  Also, retailers are recognizing the lowered cost and growing market for 3D printing.  For example, Staples is beginning to offer 3D printing services as part of their copy services.[27]

As the limitations are gradually overcome by improving technologies, the use of 3D scanning and printing will become increasingly widespread.  Similar to what occurred with the development of the internet and digital media, widespread use of 3D printing will raise complex intellectual property issues.  The current effects of 3D printing on intellectual property law are not as dramatic as what occurred with digital media, 3D printing will prove to be the next disruptive technology.

 

III. Historical Examples of Disruptive Inventions and Their Effect on Intellectual Property Law

 

            Taking a step back in history there are several inventions that were considered disruptive inventions.  The term “disruptive invention” was originally coined to refer to new inventions that disrupt the market for old technologies.[28]  This disruption, however, extends beyond economic markets to the sphere of intellectual property law.[29]  The law as it currently exists cannot address all the potential issues that 3D printing users may face in the future.[30]

            The printing press is an example of a disruptive invention that dramatically changed the concept of intellectual property law.[31]  Prior to inventing the printing press, books were extremely expensive to make and very few people had access to books to read.[32]  After its invention, the average citizen would have access to books, which was beyond imagination at that time.[33]  This invention led to the passage of copyrights and other laws to manage published materials.[34]

            More recently, the combination of the creation of digital media, computer software, personal computers, and the internet have been extremely disruptive to copyright law.  First, there was much debate on whether computer software is copyrightable because of how similar software code is to a procedure or process.[35]  This debate was recently resolved when congress decided to statutorily protect computer programs as literary works despite it being almost unreadable to humans.[36]

            The advent of digital media became a big headache for the music industry because improved technologies meant improved ways of piracy.  While suing individual downloaders became impractical, internet service providers (ISP) and web hosts did not want to be at fault when they are not aware of the piracy occurring on their server systems.  The next few sections will describe the difficulty of fitting these disruptive technologies with existing laws and how 3D printing will also affect existing laws.

 

IV. 3D Printing Technology and its Effects on Intellectual Property Law

 

            The goal of intellectual property law is to balance between incentivizing inventors and stifling creativity.  Disruptive inventions break this balance and create tension between both sides of the equation.  The laws which govern current intellectual property needs to keep up with new technological developments to re-create equilibrium.

3D printing technology does not fit neatly into any of the pre-defined patent or copyright categories because the process of creating a 3D object is governed by both.  A 3D CAD file is intangible and generally cannot be governed by patent law while some 3D printed useful objects such as a lamp cannot be copyrighted.  Since 3D printing technology is not solely governed by one category or another, lawmakers should approach the incompatibilities of the technology and current law with a holistic view of the existing legal doctrines and perhaps even create new laws to cover the potholes of the current law.  This paper will first identify the logistical problems from managing potential 3D printing piracy.  Second, this paper will identify the incompatibility of 3D printing technology with the current law.  Lastly, this paper will identify possible solutions.  Lessons from historical disruptive inventions will be drawn upon throughout this paper to help guide future 3D printing laws.

 

a. Logistical Problems for Managing Potential 3D Printing Piracy

 

A set of logistical problems contribute to the problem of distributing pirated digital information.  First, it has to be accepted that piracy will not end despite any laws or government regulations.  Second, there is a lack of legitimate means available to obtain digital information.  Lastly, Digital Rights Management (DRM) systems placed on protected electronic data generally do not work.

“If there is a will there is a way,” so goes the common saying.  The truth behind that saying is telling by how quickly protected copyrighted material can be hacked and uploaded on the internet despite legal and technological restrictions.  For example, despite government orders for internet service providers to block access to certain peer to peer (P2P) internet sites such as Pirate Bay, users can circumvent the block in less than 60 seconds.[37]  Illegal copies of movies are available online before they are distributed as DVDs and sometimes even before they are in movie theaters.  The advent of 3D printing technology not only allows for widespread illegal distribution of copyrighted works, but also illegal distribution of patented objects. 

Partially why consumers turn to illegitimate means is because of the lack of legitimate means.  This was the problem with digital music and is a foreseeable problem for 3D printing files.  Prior to the launch of iTunes and other legitimate music downloading sites, consumers who wanted digital music would have to buy an artist’s compact disc (CD) and use questionably legitimate software to copy the music off of the CD and convert it into a MP3 so that it can be read by a digital music player.  Sometimes the CD contains songs that consumers do not want.  The inconvenience and inefficiency drove many consumers to download illegal files where the song would already be in MP3 format and the consumer could choose and pick which songs he would like to keep.

It was so hard for the music industry to embrace a legitimate digital music distribution model was because music labels could not agree on a standardized way of licensing digital music.[38]  Even today, there is a lack of a comprehensive clearinghouse for mechanical licenses for services to stream music online.[39]  There is no centralized database or location where potential licensees can contact license holders to use compositions.[40]  This becomes costly for potential licensees because not only does the licensee have to locate the license holders, but the potential licensee has to also separately negotiate with each publisher for each musical composition.  Similarly, there may be multiple levels of copyright and patent ownership involved in a 3D print.[41]  There may be copyright protection over the CAD file or patents on the object printed. [42]  Therefore, there could be similar challenges for those who want to obtain the necessary rights from the IP right holders in order to 3D print.[43]

Ironically, the music industry was not the first to come up with a legitimate means of distributing digital music.  Apple Computer prevails as the best-known success story in the legitimate digital music space.[44]  Apple’s success in controlling digital music happened almost completely without permission and backing of music labels.[45]  In 2001, Apple came out with the iPod, which was a device that enabled the easy portability of digital music.[46]  In 2003, Apple launched iTunes, and its success essentially forced record labels to license their music to Apple for sale under Apple’s paid download scheme because the alternative would be continued revenue loss to digital piracy.[47] 

Apple’s success, however, was not without limits because the DRM system placed on the iTunes files resulted in backlash. [48]  The DRM system led to legal action across Europe to Apple’s competition such as Amazon.com offering DRM-free files.[49]  Such pressures have led Apple to work with record labels to open DRM protection.[50] 

Attempts by Apple to place DRM systems on digital music files can indicate that analogous DRM-like limits on 3D printing will probably also not work.  In general, DRM is a system that prevents digital media consumers from redistributing the digital information.[51]  History shows that DRM systems are unlikely to work very long.[52]  Hackers can crack DRM systems within a few weeks.[53]  Furthermore, media distributors usually self-enforce DRM systems, which means distributors can reduce the rights of consumers to any degree and can override basic consumer freedoms.[54]  Adding to the inconvenience, each distributor’s DRM system is different and can be incompatible with certain media players.[55]  The combination of a lack of consumer freedom and compatibly issues could push consumers to continue to rely on illegitimate services.[56]  Therefore, content owners who use DRM systems might win the battle but lose the war.

 

b. Problems with the Current Intellectual Property Law

 

The fact that both copyright and patent law governs 3D printing makes it hard to enforce intellectual property protection.  As previously mentioned, lawmakers should approach the incompatibilities of the technology and current law with a holistic view of both existing copyright and patent doctrines.  The following portion will address pitfalls of current law in the context of 3D printing.

 

            i. Uncertainty in Distributing Liability

 

There is always uncertainty when creating new areas law.  In general, it is important to quickly identify and address these uncertainties because many businesses will not be willing to invest in a product unless they know the legal risks associated with it.  What complicates the 3D printing process is that there are multiple parties involved in the process of a 3D print. 

Uncertainty starts with who to blame when a copyrighted or patented object is illegally printed.  Would it be the person who scans the object?  The person who uploads the file? The web service that allows for downloading?  The person who downloads the file?  The person who prints the file?  What if someone adds or modifies the original design?  What about the bloggers or forum commentators who link readers to illegal download sites?  Different people or entities could perform each step in the 3D printing process.  Even if liability is attributed to all of them, it is probably not practical to go after everyone.  Who should carry the burden?  Such an arbitrary distribution of liability could result in disincentives in improving or using the technology and stifle creativity.

Currently, there are laws that clearly protect certain groups from liability but not others.  The Digital Media Copyright Act (DMCA) is a body of statutory law that is aimed at addressing online copyright concerns.[57]  This law reflects an instance where technological changes influenced Congress to step in to codify the judicial trends.[58]  The DMCA is often described as a “sword” and a “shield.”[59]  The DMCA acts as a “sword” for copyright owners to protect their copyright, and is used as a “shield” by ISPs to avoid liability from certain activities.[60] 

Although this law shields ISPs from copyright infringement if the ISP is unaware of their user’s infringement,[61] this law does not protect other innocent parties.  For example, in the dispute over a 3D printed version of the Penrose Triangle the Dutch designer Ulrich Schwanitz posted a video of his 3D model of the Penrose Triangle on YouTube.[62]  Within a few weeks Artur Tchoukanov, managed to reverse-engineer the object by watching the YouTube video and posted the schematic online.[63]  Schwaintz lodged the first DMCA takedown request against Tchoukanov with respect to 3D printing.[64]  Ultimately, Schwaniz dropped the copyright claim because it would have been questionable whether he could obtain a copyright on the Penrose triangle, a public domain optical illusion.  Should Tchoukanov be liable for recreating an object that is questionably copyrightable?  How would Tchoukanov know that the creation is copyrightable or copyrighted?  What if Tchoukanov never saw Schwaniz’s YouTube video or posting and decides to come up with a Penrose Triangle schematic independently?  Premature regulation could potentially oppress innovation and entrepreneurship in the 3D printing community.[65]

 

            ii. Lawsuit Backlash

 

Even if the liability can be properly distributed, there may be backlash from the community if there are mass litigation campaigns.  Taking a chapter from the music industry, the Recording Industry Association of America (RIAA) initially tried to stop piracy by suing Napster, a peer to peer (P2P) network.[66]  Although RIAA won the suit against Napster, other P2P sites quickly became available[67] and new file sharing concepts were developed.  For example, BitTorrent, a software system that divides large files into smaller pieces for download from multiple peers, involves thousands of people in a download makes it more difficult to police.[68]

When the RIAA realized their battle against P2P networks did not work effectively, it turned to launching a mass litigation campaign against individuals who were downloading and sharing MP3 files.[69]  As a result of this campaign, consumers became even more indifferent to the label’s woes and saw them as the “big corporate enemy” [70] trying to get grandmothers in trouble.  This resulted in a terrible public relations mess that was largely ineffective.[71]  Currently, online P2P networks remain the primary source of digital music distribution online.[72]

 

            iii. Incompatibility of Current Copyright Law and 3D Printing Technology

 

Copyright protects original, work of authorship, fixed in a tangible medium “form which they can be perceived, reproduced or otherwise communicated.”[73]  Currently, most of the publically available 3D designs are decorations, games, or pop culture references.[74]  As such, immediate IP concerns for 3D printing is limited to copyright infringement for both the underlying CAD files and the object itself.[75]  There are, however, limitations to copyrighting CAD files.

 

                        1. Originality

 

Copyright infringement requires proof of copying; therefore, independent creation, coincidence, or development from a prior common source are all defenses to copyright infringement.[76]  The originality doctrine according to the Feist test means that 1) the work was independently created by the author, and 2) it possesses some degree of originality.[77]  The copyright holder’s typical burden is to prove that the accused infringer had access to the copyrighted work and that the work is substantially similar to the work.[78]

Such a simple test, however, can easily become confusing with 3D printing.  Continuing the Penrose Triangle example, Tchoukanov “copied” Schwanitz’s Penrose Triangle but did not have access to his work.  Tchoukanov was merely watching a YouTube video, which is within the realm of public domain.  Derivative works of Tchoukanov’s work would also not be infringing if Tchoukanov’s work was based on something within the public domain and because Tchoukanov released his CAD file online.[79]

 

                        2. Authorship

 

Furthermore, traditional notions of authorship are strained when machines like the CAD software program or the 3D printer does much of the creating.[80]  Much like an automatic spellchecker, there are mechanisms in most software programs that help guide users.  In Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc. the Tenth Circuit ruled that a wire-frame digital model of a Toyota car, created by humans with the aid of computers, lacked originality, even though human expertise and skill is needed to create the model in a realistic manner and with a 3D appearance.[81]  As software becomes more intelligent, 3D creation aided by such software may no longer be copyright protected.

 

                        3. Excluding “Useful Articles”

 

Useful articles are not copyrightable.  A useful article is defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”[82]  For example, the portion of a lamp that is used to illuminate the room would be a useful article, but a statute of a dancing figure that forms the base of the lamp[83] or the Penrose Triangle[84] would not be considered useful.  Therefore, it can be especially burdensome to identify portions of a 3D printed object or a CAD schematic as not useful to be eligible for copyright protection.[85]

 

                        4. Idea versus Expression

 

Copyright protects expressions but not ideas, procedures, processes, or method of operation.[86]  For example, if an author writes an instructional book to teach a “useful art” a copyright may protect the exact combination of words written in the book, but not the underlying concepts taught.[87]  Similarly, copyrighting a software program would protect the code supporting the program but probably will not protect the idea of how the program would interact with the user.  In Lotus Development Corp. v. Borland International, Inc.,[88] the court held that the macros and menu trees of the Lotus 1-2-3 spreadsheet program was not copyrightable because it was a part of the method of operation.[89]  Furthermore, in Woods v. Resnik,[90] the Court held that Resnik, who came up with the software idea, did not own the software because he failed to show that he made any independent copyrightable contribution to the software.[91]

In the context of 3D printing, copyright is likely only useful to protect an object’s form, but not function.[92]  The 3D CAD file and the form of the object produced are probably the only copyrightable portions of a 3D print process.  CAD files, however, may or may not be copyrightable because it depends on whether a court treats it more like a computer program or a blueprint.[93]

Again, looking at history, there was much debate on whether a computer software is copyrightable.[94]  Software is generally categorized as an operating system or application program.[95]  Operating system perform a variety of internal computer operations.  Application systems perform specific tasks and produce specific output for the user.[96]  It was previously argued that operating systems are uncopyrightable because it is a “method” or “process” and therefore merely an idea.[97]  In the landmark case Apple Computer, Inc. v. Franklin Computer Corp.[98] the Court held that an operating system and application system are equally copyright protectable because both instruct computers to execute certain actions.[99]  The instructions themselves are copyrightable because they have sufficient creativity separable from the underlying process.[100]

3D CAD files are similar to expressions in computer programs because it breaks down the 3D structure of an object and instructs 3D printers to execute certain actions.[101]  On the other hand, 3D CAD files are basically just triangular representations of a 3D object.[102]  They merely act as a blueprint or “method” for other software to utilize[103] and may not contain enough creativity as the Apple Court required.

                       

                        5. DMCA Takedown Procedure Abuse

 

DMCA provides a safe harbor provision for content hosts who unknowingly host infringing copyright material.[104]  The takedown concept is that a copyright owner can have infringing material taken down by sending notice to a content host.[105]  Once the content host receives notice of the infringement, he must remove the content and promptly notify the owner of the material.[106]  The accused infringer can file a counter-notification for the host to replace or restore access to the content.[107]

This procedure, however, has been criticized for making it too easy for distributors to simply remove content as a protective measure.[108]  One study on DMCA found that 31% of takedown notices were flawed because of uncertain rights particularly relating to fair use. [109]  Many of the takedown requests were submitted by competitors.[110]

The fair use doctrine is often used against DMCA takedown requests.[111]  The fair use doctrine is a defense against copyright infringement.[112]  The doctrine allows creative works to be used by others for certain purposes that are socially beneficial.[113]  The idea is that the doctrine helps maintain the proper balance between an individual’s property rights and social benefits that result from a free flow of information.[114]

An example of a flawed takedown request relating to fair use occurred in the case Lenz v. Universal Music,[115] where a mother’s YouTube video of her child singing and dancing to a Prince song was removed through the DMCA process.[116]  The mother filed a counter-notification, and sued the copyright owner for misrepresenting its claim for infringement under the Act.[117]  The court ruled in favor of the mother and held that a copyright owner must make a good faith consideration of fair use.[118]

In the context of 3D printing, the Penrose Triangle case is another example of a potentially flawed takedown request.  There was controversy over whether Schwanitz’s takedown request was made in good faith consideration.  He probably did not have a copyright claim to the Penrose design because it was based on a public domain optical illusion.[119]  In fact, the content host, Shapeways, responded to the incident by warning that premature regulation could discourage innovation in the 3D printing community.[120]

 

            iv. Current Patent Law and 3D Printing Technology Problems

 

3D printing can copy objects that are useful and potentially patentable or patented.[121]  Therefore, if widely used, 3D printing technology has the potential to generate wide scale patent infringement over the internet.[122]  A patent right is a right to exclude others from copying. [123]  The theory behind patent law is that inventions are public goods that are costly to make and difficult to control.  Without patent protection, inventors will not have sufficient incentive to invest, create, and develop new products.  To properly incentivize inventors, it is important that patents can be meaningfully enforced against infringers.[124]  Wide production of patent infringing 3D printed objects can render patent protection meaningless.

 

                        1.  CAD files’ Incompatibility with Patent Liability

 

As previously mentioned, many parties could be involved in a patent-infringing 3D print.  Intuition tells us that the best way to stop infringement would be to stop distributing infringing CAD files over the internet.  CAD files, however, are incompatible with patent infringement liability.[125]

To understand the incompatibility, a general understanding of patent infringement is required.  Patent infringement is generally defined by 35 U.S.C. § 271.[126]  Subsection (a) defines the actions that constitute direct infringement and subsections (b) and (c) define indirect infringement.  Direct infringement occurs when the infringer “makes, uses, offers to sell, or sells any patented invention.”[127]  Indirect infringement encompasses both induced infringement (subsection (b)) and contributory infringement (subsection (c)).[128]  Induced infringement is in essence aiding and abetting another’s direct infringement and requires a showing that the accused had a specific intent to cause another to infringe upon the patent.[129]  Contributory infringement may include either the sale of a component of a patented machine, manufacture, combination or composition (including a component used in a claimed system), or sale of a material or apparatus for use in the practicing patented process.[130]

In regards to direct infringement, once an object is patented, 3D printed copies of the object would infringe upon the patent whether or not the copier knows about the patent.[131]  However, possessing or distributing the CAD files does not amount to “making” [132] or even “using”[133] the product.  A CAD file distributor, without actually printing the object would not be “making” the object much less be able to “use” it.  Furthermore, product that does not physically exist yet cannot be “sold” under the statute because infringement is uncertain or speculative.[134]  Selling a CAD file, therefore, does not amount to selling the patented invention.[135] 

It would be difficult for patent holders to enforce patent rights against those who physically print the object because it is similar to RIAA’s mass litigation campaign against individuals.  Such a litigation campaign is even less likely to work in the case of 3D printing because there isn’t a specific association backing the distribution of all 3D print objects that is analogous to the RIAA.  If litigation were to occur, it would probably be within the boundaries of specific industry groups, making the enforcement of patent infringement even more complicated. 

In regards to indirect infringement, mere distribution of CAD files does not amount to induced infringement under § 271(b).[136]  Induced infringement requires intent and occurs only when one encourages another to engage in infringing activity with knowledge that induced acts constitute patent infringement.[137]  Although induced infringement includes willful blindness where 1) the defendant subjectively believes that there is a high probability that a fact exists and 2) the defendant took deliberate actions to avoid learning the fact,[138] it can be very hard to prove.

Furthermore, it is fairly straightforward that CAD file distributors would also not be liable for contributory infringement under § 271(c) because CAD files are not “components” of a patented product.[139]  A component of a patented product would have to be a physical part of the invention.[140]  A CAD file is merely a digital representation of the product, and similar to how the CAD file itself does not make, use, or sell the product, a CAD file cannot be a component of the product.

Lastly, the printed matter doctrine prevents CAD files from being patented.[141]  The printed matter doctrine prohibits patenting mere recorded information that has no relationship to a physical structure because it is abstract and outside the scope of 35 U.S.C. §101.[142]  The CAD file and instructions for making the 3D object, therefore, probably cannot be patented.[143]

           

2. No Bright Line between Repair and Reconstruction

 

As previously mentioned, an advantage of 3D printing is that consumers are able to repair broken parts of an item easily by printing a new part.  By 3D printing replacement parts, consumers could potentially save money that would have otherwise been spent on repairs.[144]  Patent holders may not be able to capture the normal profit from repairs and wish to strictly enforce their rights by suing consumers whose repairs amount to replacement.[145]

Under patent law, the purchaser of a patented object acquires the right to use and repair the object.[146]  The purchaser, however, does not have the right to reproduce or reconstruct a patented item or use unapproved parts to repair or reconstruct the item.[147]  Specifically, consumers cannot repair a patented object when it is completely spent or no longer usable.[148]   The consumer is supposed to purchase a new product at that point to continue its use.[149]  If the consumer repairs the product when it is spent, then it amounts to patent infringement as it is essentially reconstructed.[150]

The need to distinguish repair and reconstruction becomes even more relevant when consumers use 3D printing to replace multiple parts of an object simultaneously because it is hard to identify when the object is actually spent.[151]

Current common law does not draw a distinguishable line between repair and replacement.[152]  Different courts came up with different approaches. [153]  Such approaches include measuring the replacement part’s durability, or identifying whether the object was never voluntarily or completely destroyed, or sound common sense or intelligent judgment.[154]  These different approaches can potentially be arbitrary and result in different outcomes. [155]   Consumers cannot be certain about their liability.[156]  As previously mentioned, such legal uncertainty can be stifling for innovation and creation of commons.

 

c.  Proposed Solutions to Logistical and Legal Problems of 3D Printing

 

The balance between preserving commons and encouraging innovation is important to keep in mind when proposing remedies to existing problems.  Furthermore, because patent or copyright law does not exclusively govern 3D printing technology, remedies should span both areas of IP law and engage in new legal concepts.

 

            i. Remedies to Logistical Piracy Problems for 3D Printing

 

  Piracy will most likely not end regardless of how many lawsuits occur, statues created, DRM systems implemented, or P2P networks shut down.  In fact, piracy has always existed in some form throughout history.  What lawmakers should be thinking about is not how to stop piracy altogether but rather how to manage it so that there is a balance between incentivizing inventors and stifling creativity.

One method to combat piracy is to implement an easy to use interface for consumers to access legitimate 3D prints.  The factors that drive people’s behavior are based on availability and price.[157]  If downloading something off of a BitTorrent website is faster and easier to use than jumping through the hoops of trying to rip music off of a CD, then the consumer would naturally pirate the music.  A part of iTune’s success is that it made it easy for consumers to buy songs at a relatively cheap price at ninety-nine cents a song.  For many consumers, parting with ninety-nine cents is worth more to them than trying to scour the internet to find the right link to download the song that might be virus infected and bad quality.  Although music piracy continues to this day, purchases of legitimate content has also risen significantly.[158]

Currently, there are sites like Shapeways which allows consumers to send in 3D print designs to have it custom printed.[159]  Shapeways also makes available a wide assortment of user-designed objects for printing,[160] but consumers would not know whether the designs printed or available for print on Shapeways is patent or copyright protected.  To ensure consumers can print legitimate 3D prints, there needs to be an easy to use website that guarantees legitimate 3D prints.

For such a website to exist, there also needs to be a licensing mechanism in place such as a clearinghouse specific for 3D printing.  The clearinghouse could help index 3D printed objects into general categories and act as a central database for those who want to obtain licenses for 3D prints.  This can lower costs for those websites that want to establish legitimate means for 3D print consumers.  The clearinghouse can also solve the issue of preserving commons.  It can actively solicit user-generated designs and index them to ensure they are incorporated into the commons so that no future patent application can remove it from the commons.[161]

With a streamlined means of obtaining licensed material, the market can set the path for websites that service 3D print objects and the objects themselves – with good CAD designs in high demand and bad services die due to the lack of popularity.[162]  People would be more willing to pay to get quality designs instead of low quality pirated designs.[163]

 

            ii. Remedies to Intellectual Property Law Problems

 

Legal uncertainty comes with all disruptive inventions, especially when such inventions blur the pre-defined legal categories such as patent and copyright.  3D printing makes liability distribution complicated because it not only spans different areas of law but also involves multiple parties. 

Taking a look at the multiple parties involved in making a 3D print, the most efficient way for a aggrieved party to be compensated for their loss from infringement would be to go after the “deep pockets.”  These would be the ISPs or successful P2P networks.  This is what that RIAA did initially for digital music piracy, but as history shows, this method did not work very well.  ISPs are now protected by the DMCA and if they do become involved in lawsuits they have much political clout.  Quashing P2P websites is just as hard because the downfall of Napster just meant the rise of Limewire or other P2P networks. 

IP holders should shift their focus from being compensated via lawsuits, to trying to manage laws surrounding piracy before infringers goes to court.  A clearinghouse or similar organization can help implement an alert system for copyright or patent infringement.  This represents a friendlier system than that prescribed by the DMCA because this is not enforced by statute and will alert consumers who may not know that the files they are sharing have IP protection. 

 

            iii.  Copyright and Patent Law Examined together

 

There are weaknesses to both copyright and patent law in the context of 3D printing.  A holistic view of the problems would be helpful to decipher how to deal with them.  The problems identified in copyright law include: proof of originality, authorship, excluding “useful articles,” idea versus expression dichotomy, and abuse of DMCA takedown procedures.  The problems identified in patent law are the incompatibility of CAD files with patent law and defining repair and replacement.  Taken together, much of the problems of copyright law can be supplanted by patent law and vice versa.  Therefore, a doctrine with hybrid copyright and patent law may be a solution.

 

                        1. Originality Resolution

 

Copyright protection requires proof of copying, while patent protection does not require proof.  Assuming Schwanitz’s Penrose Triangle can be patented (although in this case it cannot be because it is not a “useful” article), then the dispute about whether Tchoukanov infringed on Schwanitz’s intellectual property rights can be easily resolved because Tchoukanov would be liable under patent liability.  Keeping in mind the goal of IP protection, which is striking a balance between expanding commons and encouraging innovation, perhaps Tchoukanov should not be liable?  After all, Schwanitz did not give Tchoukanov his CAD file for him to copy.  Tchoukanov took time to watch and re-watch the YouTube video that Schwanitz posted online and had to put labor into figuring it out. 

John Locke’s labor mixing principles could perhaps be applied here.  Locke’s theory is that when a person mixes his labor with nature, the person removes it from the common state and acquires right of ownership.[164]  Schwanitz’s design was on YouTube, a part of public domain.  Tchoukanov had put effort into deciphering what Schwanitz did and therefore mixed his labor with something in the public domain.  Tchoukanov should therefore not be liable to Schwanitz.  Under this theory, if Schwanitz posted his CAD file online and notified the public of his IP rights over the design, then Tchoukanov would be liable because Tchoukanov would have directly copied Schwanitz.

Another doctrine to encourage invention would be an “innocent independent inventor” doctrine.[165]  Such a doctrine will provide that direct infringement liability will not attach if the infringer 1) did not have actual knowledge of the patent, and 2) was not making commercial use of the patented invention.[166]  To complement this doctrine lawmakers should emphasize the importance of notifying infringers of their infringement.[167]  Establishing an alert system, as previously mentioned, would put infringers on notice. Therefore, if the infringers do not take down their designs they would be liable to the patent holder for indirect infringement.

 

                        2. Authorship Resolution

 

With the rise of computer-aided design it is hard to decipher whether a design is attributed to the human author.  This is more of a copyright issue as opposed to a patent issue because the USPTO generally examines for novelty and nonobviousness in a patent application.  Having a centralized database for all 3D prints would probably be helpful because such a database can be used to identify the original design.  Many times, the problem is that it is hard to decipher the “prior art.” 

Creating a new doctrine to supplant the database would also help with this problem.  Instead of rigidly defining a 3D printed object as having copyright or patent rights, another category can be created for “transformative” objects.  Such transformative objects would need to pass a novelty or nonobviousness test.  Specifically, it would be helpful in deciphering authorship if a 3D print design passes the question about whether a person of ordinary skill of the art would be able to come up with the design.

 

                        3. Excluding “Useful Articles” Resolution

 

Creating a transformative objects doctrine would also be helpful for solving the useful articles problem.  Although there is no copyright protection for useful articles, there is patent protection.  The hypothetical protection for such objects would be similar to patent protection.  The protection would not only include protection of an object in its physical state, but also to the object’s non-physical state (as in a CAD file).  In this hypothetical doctrine, copying an object from a non-physical state would be considered infringement so long as it is proven that the CAD file can be physically formed.  Therefore, the useful article doctrine would not apply in this type of hybrid protection and would not create a problem.

           

                        4. Idea versus Expression Resolution

 

The idea versus expression dichotomy is harder to address because under copyright protection, an idea is not copyrightable, an idea can be patented so long as it can be physically manifested.  In our hypothetical doctrine, CAD files should be treated more like computer software to take advantage of some IP protection.  If CAD files were treated more like blueprints and have no protection, then there would be no point of having any IP protection over physical objects at all.  Imagine in the far future where any physical object can be printed by 3D printers and the usual way of selling an object is by selling the CAD file.  If CAD files are not protected in some way, then the CAD file distributor who is making most of the money from the sale would not be subject to any IP liability.

 

                        5. Abuse of DMCA Takedown Procedures Resolution

 

DMCA is incomplete IP protection for 3D printed object because 3D printed objects also need patent protection.  An idea would be to extend DMCA protection to patents.  The concept would again require an alert system where the IP right holder of a transformative object can alert infringers of their IP right and require them to take down any infringing material.  The notice should contain information necessary to make a determination as to the legitimacy of the infringement and allegation.[168]  Website hosts and infringers who comply with the requirements of taking down the design file would be insulated from infringement liability. 

There is still potential for abusing takedown procedures but again, if there is a good indexing system in place, the likelihood of flawed notices will decrease.  Furthermore, if a hybrid-type of law for 3D printing is established, then there would be more legal certainty and takedown notices from uncertain rights would be greatly diminished or eliminated.

 

                        6. Incompatibility of 3D CAD Files with Patent Rights Resolution

 

Under the current law, transfers of CAD files are subject to very little or no patent liability because a CAD file transfer is not a transfer of a physical manifestation of the object.  The most likely way for an infringer to be liable for distributing a CAD files would be based on induced infringement under § 271 (b).  A strong infringement alert system would be helpful here because once an infringer knows that his CAD file infringes upon another IP rights, then the infringer could be liable for induced infringement.

Another way of combating the incompatibility would again be to use a transformative objects doctrine.  Where copying an object from a CAD file, or non-physical state, would be considered infringement so long as it is proven that the CAD file can be physically formed.  That way, infringing CAD file distributors would not be able to get away from liability just because the transfer is not a physical manifestation of the object.

 

                        7. Distinguishing between Repair and Reconstruction

 

The current problem with repair versus reconstruction is that it is hard to distinguish whether repairing certain parts would amount to reconstruction.  Currently, the accused infringer has the burden to prove that he did not infringe on a patent.[169]  One way of managing such infringements would be to shift the burden of proof to the patent holder from the accused infringer.[170]  The patent holder should have access to more knowledge and resources than the accused because the patent holder is most likely a person having ordinary skill of the art whereas the accused would probably merely be a consumer.

Another solution is to impose restrictions on printing component parts.[171]  This solution, however, is impractical because component parts are not necessarily patented protected.  Courts have repeatedly denied extending patent protection over individual, unpatented parts of a combination because of antitrust concerns.[172]  In the far future, this solution is probably also impractical because people in the future might buy their objects as CAD files and print what they need.  An item would never break because people can just keep re-printing broken parts.  IP right holders should therefore account for the possibility of not being able to capture revenue from broken parts and properly price the items available for print.

 

IV. Conclusion

           

            The days of taking star trek’s replicator home is not far away.  3D printing technology is much improved from the original invention in the 1980’s.  The cost has also dramatically reduced and consumers can now own personal 3D printers.  History has taught us that innovative new technologies have the potential for disrupting society and its laws.  Technologies that make things faster and easier for consumers also allows for faster and easier piracy. 

There is probably no solution to completely stop piracy, but there are processes that society can implement to manage it.  Establishing a clearinghouse to properly manage, organize, and index 3D prints would probably be a first step for managing piracy because once there is a database of legitimate prints, it would be easier for legitimate websites to be established.  As more legitimate websites are available, consumers would let the market set which 3D prints are more desirable and what web services would be better.  Competition would drive the web services to become more easy to use, and consumers would naturally flock to the easy to use websites and stop scouring the internet for hidden links to pirated versions.

            Since copyright or patent law cannot exclusively govern the 3D printing process, new legal doctrines can be established.  Specifically, such doctrines will combine aspects of both copyright and patent law to govern different stages of a 3D print process.  With these logistical and legal changes, the balance between expanding commons and encouraging innovation could possibly reach equilibrium, until the next disruptive invention emerges.



[1]           Daniel Harris Brean, Asserting Patents to Combat Infringement via 3D Printing: It’s No “Use,” 23 Fordham Intell. Prop. Media & Ent. L.J. 771, 780 (2013).

[2]           Brian Rideout, Printing the Impossible Triangle: The Copyright Implications of Three-Dimensional Printing, 5 J. Bus. Entrepreneurship & L. 161, 166 (2011).

[3]           Kelsey B. Wilbanks, Comment, The Challenges of 3D Printing to the Repair-Reconstruction Doctrine in Patent Law, 20 Geo. Mason L. Rev. 1147, 1151 (2013).

[4]           Wilbanks, supra note 3, at 1151.

[5]           Wilbanks, supra note 3, at 1151.

[6]           Wilbanks, supra note 3, at 1151.

[7]           Jesse Emspak, Use Your Smartphone as a 3-D Scanner, Discovery News (Feb 24, 2013, 9:46 AM), http://news.discovery.com/tech/apps/smartphone-3d-scanner-130224.htm.

[8]           Wilbanks, supra note 3, at 1151.

[9]           Wilbanks, supra note 3, at 1152.

[10]          Wilbanks, supra note 3, at 1152.

[11]          Wilbanks, supra note 3, at 1152.

[12]          Peter Jensen-Haxel, Comment, 3D Printers, Obsolete Firearm Supply Controls, and the Right to Build Self-Defense Weapons under Heller, 42 Golden Gate U.L. Rev. 447, 451 (2012).

[13]          Jensen-Haxel, supra note 12, at 451.

[14]          Jensen-Haxel, supra note 12, at 451-52.

[15]          Jensen-Haxel, supra note 12, at 452.

[16]          Davis Doherty, Note, Downloading Infringement: Patent Law as a Roadblock to the 3D Printing Revolution, 26 Harv. J. Law & Tec 353, 356 (2012).

[17]          Doherty, supra note 16, at 356.

[18]          Jensen-Haxel, supra note 12, at 451.

[19]          Jensen-Haxel, supra note 12, at 453.

[20]          See Doherty, supra note 16, at 353-55.

[21]          26 Doherty, supra note 16, at 354 (quoting Stacey Kuznetsov & Eric Paulos, Rise of the Expert Amateur: DIY Projects, Communities, and Cultures, 2010 Proc. Nordic Conf. on Hum.-Computer ineraction 295, 295).

[22]          See Wilbanks, supra note 3, at 1154.

[23]          Jensen-Haxel, supra note 12, at 447.

[24]          Lauren Drell, Everything You Wanted to Know about 3D Printing but Were too Afraid to Ask, Mashable (Feb. 28, 2012), http://mashable.com/2012/02/28/3d-printing-shapeways/.

[25]          Drell, supra.

[26]          Wilbanks, supra note 3, at 1153.

[27]          Wilbanks, supra note 3, at 1154.

[28]          Wikipedia, http://en.wikipedia.org/wiki/Disruptive_innovation.

[29]          See generally Wilbanks, supra note 3, at 1156-57.

[30]          Wilbanks, supra note 3, at 1157.

[31]          Wilbanks, supra note 3, at 1156-57.

[32]          Wilbanks, supra note 3, at 1157.

[33]          Wilbanks, supra note 3, at 1157.

[34]          Wilbanks, supra note 3, at 1157.

[35]          G. Peter Albert, Jr & American Intellectual Property Law Association, Intellectual Property Law in Cyberspace 137 (2d ed. 2011).

[36]          Albert, supra note 35, at 136.

[37]          Gabriel J. Michael, Anarchy and Property Rights in the Virtual World, Social Science Research Network (March 1, 2013), http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2233374.

[38]          Allen Bargfrede & Cecily Mak, Music Law in the Digital Age 93 (2009).

[39]          Bargfrede & Mak, surpa note 38, at 93.

[40]          Bargfrede & Mak, surpa note 38, at 93.

[41]          Lucas Mearian, Will 3D Printing Kill IP?, Computerworld (Sep. 19, 2013, 1:08 PM), https://www.computerworld.com/s/article/9242519/Will_3D_printing_kill_IP_?taxonomyId=128&pageNumber=2.

[42]          Mearian, supra.

[43]          Mearian, supra.

[44]          Bargfrede & Mak, surpa note 38, at 69.

[45]          Bargfrede & Mak, surpa note 38, at 12-13.

[46]          Bargfrede & Mak, surpa note 38, at 12.

[47]          Bargfrede & Mak, surpa note 38, at 12-13.

[48]          Bargfrede & Mak, surpa note 38, at 13.

[49]          Bargfrede & Mak, surpa note 38, at 13.

[50]          Bargfrede & Mak, surpa note 38, at 13.

[51]          Christopher Beat Graber et al., Digital Rights Management: The End of Collecting Societies? 9 (2005).

[52]          Graber, supra note 51, at 15.

[53]          Graber, supra note 51, at 15.

[54]          Graber, supra note 51, at 15.

[55]          Graber, supra note 51, at 9.

[56]          Graber, supra note 51, at 2.

[57]          Daxton R. Stewart, Social Media and the Law: A Guidebook for Communication Students and Professionals 84 (2013).

[58]          Albert, supra note 35, at 206.

[59]          Albert, supra note 35, at 207.

[60]          Albert, supra note 35, at 207.

[61]          Albert, supra note 35, at 207.

[62]          Charles w. Finocchiaro, Note, Personal Factory or Catalyst for Piracy? The Hype, Hysteria, and Hard Realities of Consumer 3-D Printing, 31 Cardozo Arts & Ent LJ 473, 478 (2013).

[63]          Finocchiaro, supra note 62, at 478.

[64]          Finocchiaro, supra note 62, at 478.

[65]          Finocchiaro, supra note 62, at 479.

[66]          Wilbanks, supra note 3, at 1168.

[67]          Wilbanks, supra note 3, at 1168.

[68]          G. Peter Albert, Jr & American Intellectual Property Law Association, Intellectual Property Law in Cyberspace Second Edition 2012 supplement 26 (2012).

[69]          Wilbanks, supra note 3, at 1168.

[70]          Bargfrede & Mak, surpa note 38, 12.

[71]          Bargfrede & Mak, surpa note 38, 70.

[72]          Bargfrede & Mak, surpa note 38, 68.

[73]          Albert, supra note 35, at 129.

[74]          Doherty, supra note 16, at 358.

[75]          Doherty, supra note 16, at 358.

[76]          Brean, supra note 1, at 808.

[77]          Edward Lee, Digital Originality, 14 Vand. J. Ent. & Tech. L. 919, 923 (2012).

[78]          Brean, supra note 1, at 808.

[79]          Rideout, supra note 2, at 167.

[80]          Lee, supra note 77, at 921.

[81]          Lee, supra note 77, at 921.

[82]          Rideout, supra note 2, at 168-69 (quoting 17 U.S.C. § 101-02 (2006)).

[83]          Brean, supra note 1, at 809-10.

[84]          Rideout, supra note 2, at 169.

[85]          Brean, supra note 1, at 809.

[86]          Albert, supra note 35, at 133.

[87]          Albert, supra note 35, at 135.

[88]          516 U.S. 233 (U.S. 1996).

[89]          Albert, supra note 35, at 135.

[90]          725 F. Supp. 2d 809 (W.D. Wis. 2010).

[91]          Albert, supra note 35, at 138.

[92]          Brean, supra note 1, at 809.

[93]          Rideout, supra note 2, at 167.

[94]          Albert, supra note 35, at 137.

[95]          Rideout, supra note 2, at 167.

[96]          Rideout, supra note 2, at 167.

[97]          Albert, supra note 35, at 137.

[98]          714 F.2d 1240 (3d Cir. 1983).

[99]          Albert, supra note 35, at 137.

[100]         Albert, supra note 35, at 137.

[101]         Rideout, supra note 2, at 167-68.

[102]         Rideout, supra note 2, at 168.

[103]         Rideout, supra note 2, at 168.

[104]         Doherty, supra note 16, at 366.

[105]         Doherty, supra note 16, at 366.

[106]         Albert, supra note 35, at 245.

[107]         Albert, supra note 35, at 245.

[108]         Bargfrede & Mak, surpa note 38, 100.

[109]         Doherty, supra note 16, at 368.

[110]         Doherty, supra note 16, at 368.

[111]         Albert, supra note 35, at 245.

[112]         Social media and the law, Stewart, pg. 80.

[113]         Social media and the law, Stewart, pg. 80.

[114]         Social media and the law, Stewart, pg. 80.

[115]         572 F. Supp. 2d 1150.

[116]         Social media and the law, Stewart, pg. 85.

[117]         Social media and the law, Stewart, pg. 85.

[118]         Social media and the law, Stewart, pg. 85.

[119]         Finocchiaro, supra note 62, at 478.

[120]         Finocchiaro, supra note 62, at 478-79.

[121]         Doherty, supra note 16, at 358-59.

[122]         Doherty, supra note 16, at 359.

[123]         Brean, supra note 1, at 783.

[124]         Brean, supra note 1, at 783.

[125]         Brean, supra note 1, at 783.

[126]         Brean, supra note 1, at 783.

[127]         Doherty, supra note 16, at 359.

[128]         Doherty, supra note 16, at 359.

[129]         Doherty, supra note 16, at 360.

[130]         Brean, supra note 1, at 800.

[131]         Wilbanks, supra note 3, at 1155-56.

[132]         Brean, supra note 1, at 788-89.

[133]         Brean, supra note 1, at 800-01.

[134]         Brean, supra note 1, at 791-92.

[135]         Brean, supra note 1, at 790-91.

[136]         Brean, supra note 1, at 793-94.

[137]         Brean, supra note 1, at 794.

[138]         Brean, supra note 1, at 794.

[139]         Brean, supra note 1, at 796.

[140]         Brean, supra note 1, at 796.

[141]         Brean, supra note 1, at 805-06.

[142]         Brean, supra note 1, at 805.

[143]         Brean, supra note 1, at 806-07.

[144]         Wilbanks, supra note 3, at 1149.

[145]         Wilbanks, supra note 3, at 1148.

[146]         Wilbanks, supra note 3, at 1149.

[147]         Wilbanks, supra note 3, at 1149.

[148]         Wilbanks, supra note 3, at 1149.

[149]         Wilbanks, supra note 3, at 1149.

[150]         Wilbanks, supra note 3, at 1149-50.

[151]         Wilbanks, supra note 3, at 1150.

[152]         Wilbanks, supra note 3, at 1170.

[153]         Wilbanks, supra note 3, at 1158.

[154]         Wilbanks, supra note 3, at 1158.

[155]         Wilbanks, supra note 3, at 1170.

[156]         Wilbanks, supra note 3, at 1170.

[157]         Michael, supra.

[158]         Michael, supra.

[159]         Doherty, supra note 16, at 357.

[160]         Doherty, supra note 16, at 357-58.

[161]         Doherty, supra note 16, at 372.

[162]         Mearian, supra.

[163]         Mearian, supra.

[164]         Wilbanks, supra note 3, at 1175.

[165]         Doherty, supra note 16, at 369.

[166]         Doherty, supra note 16, at 369.

[167]         Doherty, supra note 16, at 369.

[168]         Doherty, supra note 16, at 366.

[169]         Wilbanks, supra note 3, at 1177.

[170]         Wilbanks, supra note 3, at 1177.

[171]         Wilbanks, supra note 3, at 1176.

[172]         Wilbanks, supra note 3, at 1156-57.