INTA Bulletin

December 1, 2017 Vol. 72 No. 20 Back to Bulletin Main Page

3D Printing: Key Legal Issues and Options for Change

The 3D Printing Task Force of the Designs Committee, Designs Communications Subcommittee, prepared a comprehensive report summarizing the law of direct and secondary liability under copyright, trademark, trade dress, design, and patent law as it relates to 3D printing. In the report, it is recommended that brand owners and IP associations continue to monitor developments in this emerging area before advocating any changes to existing law.

Given the difficulty and inefficiency of identifying and proving direct infringement by large groups of smaller users or sellers of 3D-printed articles, the report notes the different standards that rights holders face in pursuing “upstream” providers and platforms of infringing designs under one or more of these different areas of law. Under copyright law, a defendant is a contributory copyright infringer if it has knowledge of a third party’s infringing activity, and induces, causes, or materially contributes to infringing conduct. Owners of 3D printers, or Internet service providers (ISPs) that create or distribute copies or digital files of copyrighted 3D objects, may therefore be liable for contributory copyright infringement to the extent their offerings are replete with copyrighted works or designs for models thereof.

Secondary liability for trademark or trade dress infringement is more narrowly drawn than for copyright infringement, but arises if a manufacturer or distributor continues to supply its product to one whom it knows or has reason to know is engaging in infringement. Thus, a party that creates or uploads a 3D printing file may be liable for contributory trademark or trade dress infringement if it is encouraging unlawful copying by others.

Under utility patent law, direct infringement requires that an invention or component thereof be made, used, or sold, so persons or intermediaries who engage in such activity face liability for direct infringement, but mere distributors of digital files are unlikely to be held liable for direct infringement of a patent. Those who make, use, or sell a patented design are directly liable if an ordinary observer would view the challenged design as substantially similar to the patented one, such that it would be deceived into purchasing the challenged design supposing it to be the patented one. For secondary liability, a distributor is liable for statutory inducement only if it is shown subjectively to believe there is a high probability that a fact of infringement exists, and that it takes deliberate actions to avoid learning of that fact. Given the above law, commentators have suggested that patent law is the least useful at this time to deal with 3D printing‒related infringement on a large scale.

The Designs Committee is chaired by David Stone (Allen & Overy LLP, UK) and the 3D Printing Task Force by John Froemming (Jones Day, USA). The task force worked collaboratively with other Advocacy Group committees, including the Brands and Innovation Committee, the Copyright Committee, the Famous and Well-Known Marks Committee, and the Emerging Issues Committee. The report can be found here.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2017 International Trademark Association