Undoubtedly one of the most exciting technological developments of recent years, whose effects on the conventional value creation chain is hard to predict: the possibilities for almost anyone to use a 3D scanner and 3D printer to measure three dimensional objects and then automatically "print them out", i.e. to simply and quickly reproduce them without any own skills in relation to the manufacturing process. Whilst the technological developments in this area are making advancements with impressive speed and the necessary equipment and devices are becoming ever more affordable, some limits are becoming evident in relation to intellectual property law.
The basic principle of an automised manufacture of complex physical objects is not new: for some time now, automatic milling machines, increasingly employing laser technology, have been used to "carve" finished models from blocks of material. The range of possibilities stretches from rough, metal objects for industry to fine, ceramic inlays for dental technology. Now, the innovation in the case of "3D printers" is that liquid or powdered raw materials (in particular plastics but also metals) are sprayed, like in an ink-jet printer, and then naturally harden (or are made to harden through the application of external factors such as heat) to create a solid form. Through vertical and horizontal movements of the printer head, the hardened material can thus be built up, "layer by layer" to make a three dimensional model. This technique is considerably more flexible in its range of applications than the traditional "carving technique". In time, it may enable the creation of almost any physical product at will, once the necessary developments have been achieved in the materials which can be used, in the "resolution" of the printout (i.e. the possible level of detail and complexity of the product to be printed) as well as the possibility of using different materials in a single print run.
The result of the above process is a precise physical object according to electronic design plans. Thus, 3D printers are particularly suited to copying already existing objects. Accordingly, with the result qualifying as a replica of an existing object, there are legal risks and limits inherent in the process, with as the respective stages of the printing process potentially conflicting with the various intellectual property rights involved.
Individual production stages
If one looks at the technical procedure of 3D printing through a lawyer's eyes, two basic steps of the reproduction process can be identified which should each be examined individually:
Firstly, prior to the actual production itself, a printing plan is created, namely the electronic blueprint on the basis of which the printed product is later made. The printing plan can either be drawn "by hand" (normally with the help of CAD software) or, as will likely be the standard method in future, created automatically with the help of a "3D scanner", which electronically scans an existing object. The printing plan is inherently important from an economic perspective, as it ultimately defines the entire external appearance of the product later produced. It is consequently a valuable asset in its own right which can be independently exploited, for example, by being offered for sale and download on the internet.
Secondly, the product - the physical object - is then automatically created on the basis of the printing plan, by the 3D printer, upon addition of the required raw materials. This product can subsequently be used or exploited in a variety of ways. As the quality of such products improves, they will likely become valuable economic goods in their own right.
Conflicting intellectual property rights
In the course of the exploitation steps mentioned above, there is potential for conflicts in relation to all types of intellectual property. In Germany, the following are primarily affected:
- Patent and utility model rights (where an object is reproduced, the technical invention of which is protected through the registration of the relevant rights),
- Copyrights (where an object is reproduced, which is not technical in nature but is, at least in part, also the expression of artistic/aesthetic design),
- Trade mark rights (where a trade marked object is reproduced, such as the logo of a branded goods manufacturer),
- Design rights (which are explicitly related to the external shape of the object, as is most commonly reproduced in the case of 3D printing).
All of the intellectual property rights mentioned are associated with exclusivity and prohibition rights, which may limit the freedom of individual manufacture as follows:
Creation of the printing plans
In the creation of the printing plans themselves, it is mainly copyrights which will be affected, if the object used as the template is subject to such protection. In this context, the reproduction of a protected work will have copyright relevance even if it is transformed into another type of work. Under German law, this includes the transformation of physical objects into two or three dimensional models by hand or by means of photography/scan (c.f. BGH GRUR 2004, 855 - "Hundefigur").
In contrast, other intellectual property rights that may exist in the template object are not usually affected by the creation of the printing plan, as these are limited to the specific embodiment of the protected object itself and do not cover any respective transformation. Also, the creation of printing plans in relation to the later production of the protected object is usually viewed as a permitted act of preparation only (c.f. for patent law, LG Düsseldorf, InstGE 6, 130 - "Diffusor", Mes, PatG, 3rd ed. 2011, § 9 PatG, marg. no. 34).
Exploitation of the printing plans
Right from the initial stage of exploiting the printing plans, however, in particular when offering them for sale or bringing them onto the market (e.g. on online platforms), other rights can be affected in addition to copyrights (which expressly reserve for their proprietor, amongst other things, the right of making available to the public). These rights quite possibly include patent rights, utility model rights, trade mark rights and design rights.
Firstly, supplying a third party with a printing plan for the specific purpose of that third party producing the printed object ("manufacturing on demand") can, depending on the individual case, constitute a contributory act on the part of the principal in the third party rights infringement (c.f. for patent law, e.g. OLG Düsseldorf, InstGE 7, 258 - "Loom-Möbel").
Secondly, and of greater practical significance, in the case of the act of offering printing plans for sale or bringing them onto the market, this could constitute an indirect act of infringement in respect of patent rights, utility model rights and design rights. This is based on the fact that the printing plan represents a part being brought onto the market which, together with the use of other parts (namely the 3D printer and the relevant materials), contributes substantially and inherently to the manufacture of the protected object (c.f. Sec. 10 German Patent Act, Sec. 11 (2) German Utility Patent Act, Sec. 40 (1) German Design Act). However, in this context there remains the issue that German courts have so far not conclusively declared whether only physical objects can be considered as a suitable means for an indirect (patent) infringement (affirming this notion - BGH GRUR 2001, 228, 231 - "Luftheizgerät", contradicting this - LG Düsseldorf InstGE 1, 26, 32). The printing plans, which are always electronic, lack any physical form. In light of technological advancements and economic comparability of the means involved, irrespective of their physical form, one should however expect a corresponding relaxation of the respective criteria.
In the same context, there is also the much discussed issue of additional liability for operators of online trading platforms on which the printing plans are offered by third parties. The question can be answered with the help of the criteria developed in German case law over the past few years based on whether platform operators are able to identify specific rights infringements and thus whether a duty of care and resulting liability applies (c.f. e.g. BGH CR 2008, 579 - "Internet-Versteigerung III"). It has yet to be clarified whether and to what extent stricter assessment criteria should, from the outset, be applied to printing plans relating to existing products, which carry the inherent risk of infringing intellectual property rights.
Creation and exploitation of the printed product
The finished product, namely the reproduced physical object, is, in its manufacture and subsequent exploitation (offer for sale, bringing onto the market etc.) generally subject to all prohibition rights to the extent that it takes advantage of the respective protection rights. Both its manufacture and subsequent distribution are thus generally reserved for the right holders, aside from the exceptions for private use as laid out below.
One interesting exception from a trade mark law perspective is that the manufacture of a miniature, as is often the case due to the size of 3D printers and the cost of materials, does not, according to more recent case law in Germany, usually constitute an act of infringement even if the miniature contains an unchanged brand logo (c.f. BGH GRUR 2010, 726 - "Open Blitz II").
Alongside this, however, the question is also raised as to the responsibility of service providers, such as the operators of "copy shops" which merely make 3D printers (and possibly the required materials) available but who exert no influence on the design of the specific objects made. From a copyright law perspective there already exist statutory and judicially developed requirements such as a broader exemption from liability for operators of conventional copy shops on the one hand and a flat rate levy on the copying devices on the other hand (c.f. Sec. 53 et seq. German Copyright Act). The application of these requirements in the context at hand, however, still lacks clarification (c.f. here, Großkopf, CR 2012, 618, 623). For other intellectual property rights, this type of manufacture is largely new and requires regulation, as the conventional criteria – which usually attribute the manufacture to all persons involved in the manufacture either as perpetrators or at least as aiders and abettors in the third party rights infringement, mostly without exception – should not to be applied without sufficient reflection.
Private use exception
Intellectual property law in Germany has its limit, in different forms, in the purely private sphere, i.e. if the use of the protected product exclusively for non-commercial purposes. If the law is restricted in this respect, the otherwise existing rights to prohibit use are not assertable.
In respect of the copyrights affected, according to Sec. 53 German Copyright Act, the reproduction of individual (limited in number) printing plans and printed products is allowed, provided it is solely for private use, namely, in particular, for meeting personal needs. However, in such cases, the origin of the reproduction, the source from which the reproduction is taken, may not by "obviously illegal". This raises similar questions in respect of the ability to identify potential rights infringements, as in the case of the aforementioned monitoring obligations for platform operators.
In respect of other rights to prohibit use, the private user is firstly free to produce protected products outside the course of trade i.e. in the private sphere (Sec. 11 No. 1 German Patent Act, Sec. 12 No. 1 German Utility Patent Act, Sec. 14 (2) German Trade Mark Act). The printed product created in the scope of permitted private use can accordingly even become legitimate economic goods, for example if they are supplied free of charge to closely associated third parties or, in particular circumstances, their sale following their own use, provided this does not constitute a commercial transaction (c.f. for example BGH, GRUR 2009, 871 - "Ohrclips"). Unlike in the area of copyright law, there is no restriction in terms of numbers so that in principle, any number of printing plans or printed products can be produced for private use. However, as soon as a commercial purpose enters the exploitation process, even if only indirectly, the exception is exceeded and a rights infringement is once more possible.
In the scope of application of the exceptions, "manufacturing on demand" is in principle also permissible, as in this context the private use of the principal is of crucial importance. Due to the risk that rights infringements could nevertheless occur in this area (for example as a result of an excess use by the contractor) the current discussion is at least demanding the principal be advised of the respective restrictions on use or the printing service provider being clearly identifiable as non-commercial in nature.
The use of 3D printing clearly involves some challenges with regard to intellectual property rights. Additional challenges may arise from potential copyright protection of the printing plans and printed products (as own intellectual creations, for example through modifications of the blueprints) or supplementary protection under the laws of unfair competition/passing off.
Consequently, it will remain interesting to observe developments in this field, not only from a technical perspective but also from a legal perspective and to see how intellectual property rights can adequately provide limits for the increasing freedoms of individual manufacture.
BOEHMERT&BOEHMERT will continue to monitor technical and legal advancements in this area and inform you - also through these pages - of all relevant developments.
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.