Intellectual Property Issues in 3D Printing
Intellectual property (IP) law covers a relatively complex patchwork of largely invisible, intangible property rights that vary in what they protect, and how each may be created, owned, maintained (or lost), licensed and enforced.
The terms and conditions in most contracts deal with the standard nuts-and-bolts aspects of production, schedules, delivery and payment, as well as general warranties and representations. Intellectual property issues concerning the ownership, control, sharing and enforcement of patents, trademarks, copyrights and trade secrets are rarely completely covered. These often interwoven rights sometimes can make a simple contract for producing a 3D printed product into fertile ground for legal conflict.
Suppose a 3D printing company successfully responds to an RFP by a bottle opener manufacturer to produce bottle openers having a celebrity figurine attached to the handle. The figurine portion of the bottle opener is to be formed from plastic and the opener itself is to be formed from metal. The bottle opener is to be printed using a specialized printing process that allows the metal to be printed simultaneously with the plastic. The technique is to be disclosed to the successful bidder.
The company wins the contract and is provided with the proprietary information to carry out the specialized printing process. The company is also provided with a digital file of the celebrity's head. The manufacturer hires a sculptor to develop a torso rendering of the celebrity as a sculpture. The sculptor is hired without a formal agreement regarding copyright ownership. The company scans the torso rendering sculpture to create a digital file of the celebrity's torso. The company then begins producing bottle openers featuring either the celebrity's head or the celebrity's torso as a figurine attached to the opener.
The company manufactures 10,000 bottle openers for the manufacturer, and the bottle opener's sales exceed expectations. The manufacturer orders an additional 10,000 bottle openers. Enthused by the success of the bottle opener sales, the company posts the digital files for the celebrity head and the celebrity torso on their website so that the files may be purchased and used with home 3D printers.
Unfortunately, the company soon learns a valuable lesson with respect to copyright. Copyrights protect works of original art or authorship from being copied, distributed or incorporated into a new version (i.e. a derivative work). These rights arise as soon as the work of art or authorship is put in some tangible form. In the scenario of 3D printing, copyright may be held in both the finished product and the digital file used to create the finished product.
In this scenario, because the torso rendering digital file was formed from a scan of the original sculpture, the company learns that the digital file is a derivative work of the original sculpture. The sculptor is now claiming copyright ownership in the digital file. Moreover, the company also learns that the opener portion of the bottle opener is not capable of copyright protection because the opener itself is a useful product and not considered an original work of authorship. The sculptor now claims full copyright in the bottle opener as there was never any formal arrangement between the sculptor and the manufacturer to assign the sculptor's rights in the torso rendering to the manufacturer. The company finds itself subject to copyright infringement claims by the sculptor for the production of the bottle openers having the torso rendering. The sculptor also seeks damages under the Digital Millennium Copyright Act for the digital file of the torso rendering being placed online.
While attempting to settle the copyright infringement suit with the sculptor, the 3D printing company is then faced with a second lawsuit from a cologne manufacturer. The celebrity head design file had been originally developed by the cologne manufacturer as a trademark for a cologne endorsed by the celebrity. Trademarks are symbols of a company’s goodwill, whether they are words, symbols or other devices such as color combinations. These rights start once, and to the extent, the mark is used. The cologne manufacturer had filed for a Federal trademark registration on the celebrity head to enhance and extend these rights. The cologne manufacturer now seeks damages for trademark infringement in Federal Court. Additionally, the cologne manufacturer claims that the bottle openers having the celebrity's head are a derivative of their digital file and seek copyright damages.
To add to the company's problems, the company is then sued for patent infringement and trade secret misappropriation. Utility patents may cover any useful machine, process, material composition or manufactured article, for example the opener portion of a bottle opener. The same is true of design patents that cover the aesthetic appearance of any useful article. Unbeknownst to the company, the opener portion of the bottle opener is subject to a design patent of a competitor of the manufacturer.
Trade secrets can protect any valuable information kept in confidence, whether or not of a technical nature, and may include everything from technical know-how, designs and data, to best practices, pricing, business plans and the identities of customers or suppliers. In the present scenario, the specialized process used to simultaneously print the metal portion and plastic portion of the bottle opener is a trade secret of a competitor that had been stolen by an employee of the bottle opener manufacturer.
As the 3D printing company's legal problems become public knowledge and the bottle openers become more popular, the celebrity learns that his likeness has been misappropriated without his permission. The celebrity then brings another suit against the company for violating his right of publicity (personality rights), which allows the celebrity to control the commercial use of his name, image, likeness, or other unequivocal aspects of his identity.
The 3D printing company has now found itself in the midst of several lawsuits, all of which could have been prevented with upfront contract terms that provided for obligations of assignment and cooperation. Had the company been aware of the potential IP pitfalls in responding to the RFP, proper due diligence could have been performed to ensure that all IP rights in the bottle opener and the process for printing the bottle opener had been properly assigned or licensed to the company. Additionally, indemnification could have been obtained from the bottle opener manufacturer, making them financially responsible for these claims.
Responses to proposals and negotiations, especially between previously unfamiliar parties, should go hand-in-hand with diligent investigation of the nature of the technology to be applied, its source and the third parties involved or that might become involved. In some printing scenarios, it may be advisable to provide contractual obligations that parties keep each other informed under confidence of on-going development efforts, so that they might cooperate to secure, apportion and license intellectual property rights to plan for their future exploitation.
Understanding the nature of all forms of intellectual property – what they protect and how they are created and secured – allows a company to provide contractual terms and conditions to prevent accidental or intentional loss of rights, avoidance and/or defense of infringement of third parties’ rights (and pursuit infringement by third parties), as well as to preserve the relationship between the parties before unanticipated developments forestall development of profitable ventures.
Early due diligence, alertness to possible scenarios where important intellectual property may be created or infringed, and timely involvement of counsel are keys to the development of both standard terms and conditions, as well as more detailed contractual language tailored to specific situations of greater complexity that arise or are anticipated.
Where IP rights are concerned, an ounce of prevention is easily worth a pound of cure.
For more information about Ice Miller’s Additive Manufacturing/3D Law practice, please contact any of the following persons on the 3D Law team:
This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader should consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.