In December of 2014, no less than the United States National Aeronautics and Space Administration (NASA) demonstrated how far 3D printing, a decades-old technology, had advanced when a 3D printer on the International Space Station (ISS) was used to print a ratchet wrench utilizing a design file transmitted from earth to the ISS printer.
A resulting celebratory statement by Niki Werkheiser, the ISS 3D printer program manager at NASA's Marshall Space Flight Center in Huntsville, Alabama was published at http://www.nasa.gov/mission_pages/station/research/news/3Dratchet_wrench/.
"In less than a week, the ratchet was designed, approved by safety and other NASA reviewers, and the file was sent to space where the printer made the wrench in four hours."
Printing the ratchet wrench was experimental only and the wrench will not be used on the ISS but the experiment is directional in that astronauts on space missions might one day be able to design and manufacture purpose-specific tools as needed, with Ms. Werkheiser commenting that, "We even may be able to make objects that previously couldn't even be launched to space."
The success of the NASA experiment delighted both the ISS astronauts and space exploration fans but for those in the intellectual property field it points out the challenges in defining and protecting rights in 3D design and printing.
WHAT IS 3D PRINTING AND WHAT IS ITS PURPOSE?
At its simplest, 3D printing is the production of objects utilizing a printer that brings an object into existence by laying down successive layers of materials (typically plastic or metal). The size, form and shape of the object being printed is defined in a Standard Tessellation Language (STL) software file. STL files are commonly referred to as "3D models" or "printable models".
3D printing is effectively a type of computer-aided (CAD) manufacturing. An object complete in its own right can be printed, or individual parts for other objects can be printed. Objects can be printed for utilitarian use, such as tools, or they can be printed for fun or artistic purposes, such as toys or a sculpture.
Completed objects can be printed in one colour or multi-colour.
3D printing spurs creativity and can reduce manufacturing, shipping and warehousing costs, given that manufacturers can make small runs of goods and even direct manufacture to geographic areas of need by simply sending an STL file to a specific printer across town or across the planet.
3D printers are no longer accessible only by commercial printers or manufacturers. In Canada, 3D printers can be purchased by small businesses, start-ups and even householders and they are increasingly being acquired by public libraries for use by the general public. This widespread accessibility provides tremendous opportunities for innovation in design, manufacture and utilization of objects, but as is typical of a technology that has rescaled from commercial use limited by cost and complex technology to affordable "push-button" consumer access, applying traditional IP rights to the design and printing of the resulting 3D object is a challenge.
ARE THERE TRADEMARK RIGHTS OR COPYRIGHTS THAT ARISE IN 3D PRINTING?
In seeking to register or enforce rights in a trademark, the mark must be associated with specific goods or services. The World Intellectual Property Office (WIPO) and the Canadian Intellectual Property Office (CIPO) recognize "3D printers" as a good to which a trademark can be associated. CIPO also recognizes "3D printer software" and WIPO recognizes "computer software for three dimensional simulation for use in design and development of industrial products" as acceptable language for the software associated with 3D printers.
So far, neither WIPO nor CIPO appears to insist on the purpose of 3D printer software being stated, that is, one is not required to claim, for example, "3D printer software for printing toys", although WIPO's definition speaks to "industrial products". The open-ended definition for 3D software utilized by CIPO benefits commercial 3D software designers who prefer a singular trademark or brand for their business as they develop new software over time without having to keep filing new trademark applications identifying a field or use for the object designed, created and printed by the 3D printer with the assistance of 3D software.
Equally, however, 3D software designers may wish to have unique brands for different software offerings. For example, a designer may have a specific brand for offering 3D software to institutional clients such as libraries and a different brand for 3D software offered to commercial customers.
Currently, words and text such as trademarks cannot be printed in label form on an object created by 3D printing although objects printed can include representations of words in raised text, themselves forming an integral part of the object printed. Accordingly, trademark owners should be aware that their trademarks could be printed in 3D form for unauthorized display or promotion. Also, manufacturers may find their products counterfeited using 3D print technology and then packaged or labeled using the manufacturer's trademark.
Manufacturers of branded goods who wish to license production of a product to others using 3D printing methods should ensure any license agreement includes specific provisions about trademark use. Provisions may include the manner in which the trademark may be applied to the product or its labeling or packaging. Effort should be made to ensure product labeling stating who actually "made" the product does not confuse consumers as to who owns the trademark.
In Canada, trademark licenses should contain provisions which allow the trademark owner to exercise control over the character and quality of the goods offered by the licensee. Careful thought should be given to terms which may allow 3D software to be altered. The creation of a new or different product than the one claimed in a trademark registration could raise doubts about the trademark owner's exercise of control over the character or quality of the goods/products in question.
Trademark owners should carefully scrutinize potential licensees of 3D software to ensure that they are not counterfeiters.
3D printing also raises interesting questions about the protection copyright may provide to objects printed with the assistance of 3D printers. As is the case with any work that is the subject of copyright, making unauthorized copies of works that are physical objects and that are protected by copyright constitutes copyright infringement, regardless of the tools or methods used to create the objects. However, in the case of objects produced by a 3D printer, the first question may be whether the object may even be protected by copyright or some other more suitable form of intellectual property right.
Copyright covers the form or expression of an idea. Copyright may subsist in works produced in the artistic, literary, musical, or dramatic domains (including performer's performance, sound recordings and communication signals, for example) as long as such works are original works. Since original, useful articles created or printed by 3D printers may also have particularly appealing visual features, a product produced or printed by a 3D printer could conceivably be protected as an artistic work under the Copyright Act or possibly as an industrial design under the Industrial Design Act, which applies to aesthetic features of functional articles.
Whether products created by 3D printers are purely artistic or whether they have some visual design features that are appealing to the eye, copyright will only apply if the work is original within the meaning of the Copyright Act. This requirement will play a significant role in assessing whether copyright protection is available, where the product produced is a useful article. Similarly, the Industrial Design Act may apply to an article that is useful, if the features applied to the useful article are not dictated solely by a utilitarian function.
Since some physical products created by 3D printers will have features that are dictated by a utilitarian function, such products will not be eligible for protection under the Industrial Design Act; similarly, such artistic works that are dominated by their utilitarian functions may not satisfy the test for originality, a necessary requirement for copyright protection. As such, many objects created by 3D printers may not be eligible for copyright or industrial design protection in Canada – although the associated design files may be. In such a case, copying a design file (as long as there are copyrightable elements within the file) without permission may result in copyright infringement. Regardless of whether a design file associated with a physical product may be the subject of copyright or not, the copyright associated with the design file per se, may not restrict or prevent the production of a purely useful product that is represented by the design file in question and such production may not result in copyright infringement.
Since 3D printing involves many elements that may be the subject of different intellectual property rights (the physical object produced as well as digital design files that represent an object), and since physical objects produced by 3D printers may be dominated by their useful function(s), establishing what rights apply to physical objects as well as to associated design files, may be just as challenging as establishing that rights have been infringed, that a particular physical product is counterfeit, or even whether certain rights may or should be licensed and how they should be licensed.
3D printing will drive commercial and education benefits, that can't be foreseen, on this planet or beyond. Hopefully, Canadian law can keep up.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.