A new Dimension to Intellectual Property Infringement: an Evaluation of the Intellectual Property Issues Associated With 3D Printing
| Author | Peter Twomey |
| Position | Senior Sophister LL.B. Candidate, Trinity College Dublin |
| Pages | 14-36 |
© 2014 Peter Twomey and Dublin University Law Society
A NEW DIMENSION TO INTELLECTUAL
PROPERTY INFRINGEMENT: AN EVALUATION OF
THE INTELLECTUAL PROPERTY ISSUES
ASSOCIATED WITH 3D PRINTING
PETER TWOMEY*
Introduction
The Industrial Revolution introduced the idea of mass-producing goods
and, in so doing, upended centuries-old economic models.1 Before the
Industrial Revolution, goods were produced on an individual basis at high
cost. As a result of the changes it effected, goods could be created in large
quantities and, through economies of scale, at far lower costs. Beginning at
the turn of the 18th century, the law governing this new economic
framework, a framework still in force today, has had about 200 years to
develop alongside all of the specific legal issues relating to mass
production. Through the evolution of global manufacturing, we have seen
the development of several colossal bodies of law, including intellectual
property, environmental law, food regulation and numerous others, that
specifically relate to this method of production. However, in recent years, a
shift in the manufacturing paradigm has begun to take shape. Through one
key technological innovation in particular, it is becoming increasingly
obvious that the legal framework that has become intrinsically entwined
with mass-production - the archetypal model of manufacturing globally
traded commodities - is becoming outdated.
This article will, first, give a brief overview as to what 3D printing is.
Particular emphasis will be given to the history of 3D printing, the
manufacturing process associated with 3D printing and its potential for
personal use, focusing on Thingiverse, one of most popular online 3D
* Senior Sophister LL.B. Candidate, Trinity College Dublin. The author wishes to
acknowledge the support and guidance of Dáire McCormack-George, Senior Editor at
Trinity College Law Review, in undertaking this research. All errors or omissions remain
the author's own.
1 Jan de Vries, “The Industrial Revolution and the Industrious Revolution” (1994) 54 The
Journal of Economic History 249.
2014] 3D Printing 15
printing resources. Secondly, the probable failures of current intellectual
property law to cope with the innovations of 3D printing will be identified
and analysed in detail. An endeavour shall then be made to address these
issues by proposing new legislation and interpreting existing laws, with the
overall aim of curbing these new legal dilemmas without unduly
restraining the advancement of one of the most exciting developments in
manufacturing since the Industrial Revolution.
I. What is 3D Printing?
Simply put, 3D printing is a technology that allows an individual to
transform a digital file into a physical entity. Through Computer-Aided
Design (“CAD”) files, a user can download a 3D blueprint of an object and
use the 3D printer to print out a tangible, three dimensional recreation of
the object from a host of materials, ranging from chocolate to aluminium
to, most commonly, plastic.2 According to numerous commentators, 3D
printing is the future of manufacturing.3 Many users download CAD files
from the Internet, while others design their own using either paid, free or
‘open source’ software. 4 3D printing is characterised as “additive”
manufacturing, 5 in contrast to processes such as sculpting or shaping, and
the differences between the three will be discussed below. With a personal
3D printer, for example the popular MakerBot Replicator 2X,6 it can take
up to a day to print even relatively small products, such as a coffee mug,7
2 Chris Waldo, 10 Game Changing 3D Printing Materials
November 2013).
3 Kevin Chupka, With 3D Printing, the Future is Now <
http://www.finance.yahoo.com/news/with-3d-printing--the-future-is-now-213431879.html>
(visited 1 February 2014); Larry Greenmeier, A Brighter Future for Manufacturing, 3D
Printing 1 Layer at a Time (visited 1 February 2014);
(visited 1 February 2014) and
(visited 1 February 2014).
future-manufacturing-3d-printed-one-layer-at-time> (visited 1 February 2014) and Chris
Anderson, The Third Industrial Revolution //www.economist.com/node/21553017>
(visited 1 February 2014).
4 See (visited 1 February 2014), <
http://www.apps.microsoft.com/windows/en-us/app/3d-builder> (visited 1 February 2014);
5 Matt Petronzio, How 3D Printing Actually Works
6 See < http:/www.makerbot.com> (visited 1 February 2014).
7 Cubify, FAQ: Cube 3D P rinter < http://www.cubify.com/info/faq/faq_3dprinter.aspx>
(visited 1 February 2014).
16 Trinity College Law Review [Vol 17
but, with the constant advancement of the hardware, 3D printing will
become more rapid, as well as more affordable and accurate.8
There is quite a substantial similarity between the introduction of
CAD files and consumer-level 3D printers, and the development of MP3
files less than twenty years ago. Akin to what happened in the music
industry, the creation of consumer goods is changing from a basic rivalrous
model to something that is quasi-non-rivalrous. Although the end product -
the three dimensional object - is rivalrous, the means of printing that
object, the CAD file, is non-rivalrous. Like the music industry before the
advent of MP3 files, producers of consumer goods currently rely on the
fact that the cost of IP infringement for individuals is extremely high. To
breach the patent of a watch manufacturer, for example, a consumer would
have to expend a huge level of capital to meet the research, production and
distribution costs necessary to financially affect the patent holder. Thus, the
ability to seriously infringe such a patent will only be open to established
manufacturers, and not consumers. IP law has developed around a
manufacturing model based upon the concept of economies of scale9 and, if
3D printing truly takes off at consumer level, the current legal framework
protecting producers will become increasingly inadequate.10
A. Sculpting vs Additive Manufacturing
There are three basic ways to form physical objects: first, through the act of
cutting or sculpting an object from a block of material; secondly, by
stacking material, layer by layer and; thirdly, by shaping material in a
liquid state and allowing it to set. As Simon Bradshaw, Adrian Bowyer and
Patrick Haufe observe, “[s]ince the Industrial Revolution, an enormous
number of variations on these three techniques have been much refined.”11
Sculpting and forming are the techniques that have seen the highest amount
of innovation. Numerical control, invented in the late 1940s, pioneered
8 Dave Johnson, Why 3D Printing will Transform Every Industry
every-industry/> (visited 1 February 2014).
9 Daniel Harris Brean, “Asserting Patents to Combat Infringement via 3D Printing: It's No
‘Use’” (2013) 23 Fordham Intellectual Property Media a nd Entertainment Law Journal 771,
at 787.
10 Hod Lipson and Melba Kurman, Fabricated: The New World of 3D Printing (1st ed.,
Wiley, 2013), at 355 observe: “3D printing also enables widespread patent infringement in the
form of digital downloads in much the same manner that the advent of digital music enabled
widespread copyright infringement.”
11 Simon Bradshaw, Adrian Bowyer and Patrick Haufe, “The Intellectual Property
Implications of Low-Cost 3D Printing” (2010) 7(1) SCRIPTed 5, at 6.
2014] 3D Printing 17
automated manufacturing. Numerical control is the process by which
programmable automation is used for the operation of machines and, in
essence, its introduction into mass-production removed the human element
from the manufacturing of “virtually every engineering product that is
made and sold today.”12 Almost all commercial numerically controlled
machines use the cutting technique. Unfortunately, this technique is limited
by having to precisely compute the exact path to correctly manufacture the
finished object.
Introduced in the mid-1980s, 3D printing offers an alternative to the
cutting technique and the associated “tool path calculation problems.”13
With 3D printing, the object is constructed layer by layer, meaning that
there is always a flat surface. This creates an easy path for the laser to build
upon. Until recent years, 3D printing was mainly used by manufacturers to
create product prototypes, as 3D printing is cheaper than cutting for small-
scale production.14
Additive manufacturing is, however, an inherently slow process and
it is unlikely to ever overtake cutting as the chosen tool of mass-
production. In fact, it is likely that the primary contribution of 3D printing
to manufacturing will be in the home. It is envisaged that in the near future
individual users will have a viable alternative to the economic model of
mass production.15 This means that individuals will be able to eliminate the
inherent costs associated with purchasing mass-produced products, such as
delivery fees, a mark-up for the retailer and a mark-up for the wholesaler.
In effect, the individual will adopt the role of the manufacturer.
B. Personal 3D Printers
Traditionally, companies utilised 3D printers to produce three dimensional
product prototypes, which were used for visualising early product design.16
This meant that the development of 3D printing largely aided
manufacturers of mass-produced goods and the 3D printing hardware and
software was extremely expensive and specialised.
12 Ibid., at 7.
13 Ibid.
14 Emanuel Sachs, Michael Cima and James Cornie, “Three-Dimensional Printing: Rapid
Tooling and Prototypes Directly from a CAD model” (1990) 39(1) CIRP Annals-
Manufacturing Technology 201.
15 Melba Kurman, How 3D Printing Will Transform Chinese Manufacturing
16 Brian Rideout, “Printing the Impossible Triangle: The Copyright Implications of Three-
Dimensional Printing” (2011) 5(1) Journal of Business Entrepreneurship and the Law 161, at
163.
18 Trinity College Law Review [Vol 17
Recently, however, a small number of companies have latched onto
the idea of developing personal 3D printers at affordable prices and, in the
last four years alone, the cost of a personal 3D printer has dropped from
approximately $20,000 to below $3,000,17 and even as low as $595.18 As
well as breakthroughs in medical and nutritional-related 3D printing, which
is not the focus of this discussion, the recent emergence of home-owned
3D printers has led to much innovation, both in terms of the items being
printed and the software designing these products. 19 One of the main
reasons for this recent surge in 3D printing product development is the
aforementioned open source nature of CAD files that 3D printing hardware
utilises. The 3D printing community primarily uses an open source model
and, as with copyright, ownership of the user’s design vests in the
individual who first authors it.20 The owner of the open source CAD file
issues a General Public License to the world, whereby anyone is, usually,
free to use the CAD file and modify it in any way that they see fit. The
only caveat that the modifier must agree to is that all changes to the CAD
file are done for the purpose of benefitting the public and that no financial
gain be made by the user from the code.21 This flexibility fosters the
innovation currently taking place in the user-based 3D printing world and
websites have emerged to host and distribute CAD files.
C. Thingiverse
Thingiverse is the most popular CAD file hosting website to utilise the
open source model. Describing itself as “a place for you to share your
digital designs with the world,”22 the site encourages users to freely upload
their CAD creations, improve upon what other users have submitted, and,
if the individual has access to a 3D printer, to print out the CAD files
hosted on the site. Users must select two licences: a primary licence that
users grant to Thingiverse, and a secondary licence which governs what
exactly third parties can do with their uploaded CAD file. Although
“[a]ttribution and design sharing are written into the code and default
17 Nick Bilton, Disruptions: On the F ast Track to Routine 3-D Printing
track/?nl=todaysheadlines&emc=edit_th_20130218> (visited 1 February 2014).
18 See www. portabee3dprinter.com/shop/> (visited 1 February 2014).
19 See www.leonar3do.com> (visited 1 February 2014) and
worth-it> (visited 1 February 2014).
20 17 USC § 102(a).
21 About the Licences www. creativecommons.org/licenses/> (visited 1 February 2014).
22 See < http:/www.thingiverse.com/about> (visited 1 February 2014).
2014] 3D Printing 19
settings of Thingiverse,”23 users can “designate their copyright license to
be an ‘All Rights Reserved’ license,” 24 making the CAD file download
only. However, it is extremely difficult to stop third parties from breaching
this copyright. Thingiverse is extremely vigilant regarding potential
copyright claims and the website states quite clearly that any CAD files
that breach the rights of third parties are strictly prohibited.25 The Digital
Millennium Copyright Act 1998 (hereinafter “DMCA”) in the United
States introduced notice and takedown rules for Internet Service Providers
(hereinafter “ISPs”), which had the effect of exempting certain ISPs from
copyright liability provided that they follow specific conditions relating to
the removal of copyright infringing content. Thingiverse has acted upon
several DMCA takedown requests, the first occurring in February 2011,26
and, given the uncertain legality surrounding CAD files and copyright and
patent breaches, such action has helped Thingiverse establish a strong
reputation for hastily complying with complaints from third parties.
The site is acutely similar to SoundCloud, an online audio
distribution platform.27 Both websites focus on the sharing of user-created
digital files amongst its community, yet both value the importance of
staying within the confines of the DMCA over the unencumbered ability of
its members to share copyright infringing MP3s.28 SoundCloud, however,
operates on a far greater scale to Thingiverse: with 38 million users29 it is a
testament to how a digital file sharing website can successfully operate
without infringing the copyright interests of third parties. It is likely that if
3D printing were to take off in the way that many commentators have
envisioned and Thingiverse retained its commitment to legal compliance,
the site would be able to remain legally viable.
23 Rideout, note 16, at 165.
24 Ibid.
25 MakerBot Terms of Use, 3.3. Acceptable Use Policy <www.thingiverse.com/legal> (visited
1 February 2014).
26 Rideout, note 16, at 165-166.
27 See < http://www.soundcloud.com/creators> (visited 1 February 2014).
28 Tony Zeoli, SoundCloud and Audible Magic Infringement Policy Fr ustrating DJs
djs/2013/11/21/5391/#sthash.TRzoBUuN.dpbs> (visited 1 February 2014).
29 Ryan Mac, SoundCloud Mana ges Criticism as it Moves to Become the YouTube of Audio
moves-to-become-the-youtube-of-audio/> (visited 27 November 2013).
20 Trinity College Law Review [Vol 17
D. Intellectual Property Issues
One of the greatest potential dangers associated with 3D printing relates to
websites that disregard the copyright and patent claims of third parties and
actively encourage the sharing of intellectual property breaching material.30
In this regard, 3D printing poses a significant threat to manufacturers.
According to Gartner Inc, the leading information technology research and
advisory firm in the world,31 3D printing will result in the loss of at least
$100 billion per year in intellectual property globally by 2018.32 They cite
the “plummeting costs of 3D printers, scanners and 3D modelling
technology, combined with improving capabilities” as the main reasons for
the likely future surge in IP infringement. In a similar vein to the wholesale
changes that have occurred in the past decade in the music and film
industries, it is likely that consumer-level 3D printing will have a marked
effect on the profits of manufacturers in the near future. Immediate thought
must therefore be given by the legislature as to how intellectual property
law should interact with 3D printing hardware and CAD files.
For the purposes of this discussion, the two areas of intellectual
property that are most likely to be disrupted by the advance of commercial
3D printing will be identified and analysed. First, and most pertinently, the
position of CAD files containing patented products will be examined, and a
new legal framework will be proposed to increase the patent protection
against the unlawful sharing of patented inventions online. CAD files
currently receive very limited patent protection and patent law is the area
of intellectual property most at risk from the development of consumer-
level 3D printing. Secondly, the relationship between copyright and CAD
files will be briefly analysed, with a particular emphasis on CAD files
housing functional items.
II. Patents
Patent law is based on the idea that the necessary disclosure requirements
when filing a patent should be made public33 ie the information relating to
how the invention is made and how the invention is to be used must be
30 David Gilbert, Pirate Bay Moves Domain for Sixth Time in 2013
February 2014) and < http://www.isohunt.com> (visited 2 February 2014).
31 About Gartner > (visited 1 February 2014).
32Gartner Reveals Top Predictions for IT Organisations and Users for 2014 a nd Beyond
33 Patents Act, 1992, s.28.
2014] 3D Printing 21
published to the extent that someone who is “skilled in the art” would be
able to build and operate the invention.34 Even though this would appear to
encourage infringement, the rationale for this is that only very few legal
entities, usually manufacturers, will be able to take advantage of the
patented information to the unlawful detriment of the patent holder. Given
the fact that patent infringements are almost exclusively large in scale and
are likely to be committed by only a very limited number of entities,
remedial options relating to patent breaches are time-consuming, litigious
and expensive.35
A. Current Irish Position
Irish patent law is codified in the Patents Act, 1992, and its express
exemption for breaches that are not commercial in nature is particularly
worrying for Irish patent holders. Section 42(a), as amended by the Patents
(Amendment) Act, 2006, provides that patent protection will not extend to
“acts done privately for non-commercial purposes.” Thus, unless the
creator or distributor of the CAD file that infringes the patent of the patent
holder intends to use the CAD file commercially, the CAD file creator, as
well as anyone who subsequently shares or downloads the file, is likely to
be completely exempted from this legislation. To remedy this, an analogy
could be drawn between the non-commercial use exemption in patent law
and the discussion in EMI Records v British Sky Broadcasting on the
sharing of copyrighted material without monetary charge.36 In that case,
Arnold J held that even in situations where the uploaders of copyright
infringing material stand to gain no direct monetary benefit from their
actions, they still stand to gain financially from their actions, albeit
indirectly. Arnold J found that in these situations the material is uploaded
with the expectation that other users will reciprocate with different
copyrighted material, “enabling [the uploaders] to download other
recordings without payment in their turn.”37 However, with respect, relying
solely upon this common law rationale is dangerous. To bring certainty to
this area of law simple and definitive legislative change is required.
In light of the fact that patent holders are required to publish
instructions on how to build and use their patented item, and the fact that
34 Patents Act, 1992, s.19.
35 Daisuke Wakabayashi, Apple Legal Fees in Samsung Patent Case Topped $60 Million
208> (visited 1 February 2014).
36 [2013] EWHC 379 (Ch).
37 [2013] EWHC 379 (Ch), at [40].
22 Trinity College Law Review [Vol 17
there is an exemption for patent breaches by non-commercial entities, Irish
patent law, in its current form, is in danger of becoming irrelevant in
respect of 3D printing. As Clarke J noted, the purpose of a patent is “to
confer upon the successful applicant for a patent a monopoly, for the
duration of the patent, on the invention which is the subject of the patent
itself.”38 As consumer-level 3D printing develops, however, this purpose
will not be met and the monopoly that patent holders currently enjoy will
be eroded. A rethinking of the current patent model should be undertaken
by the Irish legislature to ensure both increased protection for patent
holders and the continued development of consumer-level 3D printing, as
well as showing Ireland to be a jurisdiction that understands the kind of
legal framework required for such a paradigm-shifting technology.
B. Comparison to Copyright Law
At this point, it needs to be acknowledged that any change to patent law
must not come at the expense of fettering innovation in consumer 3D
printing. In comparing the likelihood of infringement in this area of
intellectual property with that of MP3 files, it must be noted that 3D
printing requires significantly more effort and expense on the part of the
putative offender. As well as having to purchase the hardware - the 3D
printer - to manufacture the CAD file, the object that is printed will not be
a direct copy of the patented object.39 This is in contrast to MP3 files where
no initial investment, other than ownership of a personal computer and an
Internet connection, is required of the copyright infringer, and the
downloaded file is an exact replica of the copyrighted file. Thus, although
it will be argued that new provisions should be introduced to bring CAD
files under the purview of patent law, it is submitted that no restrictions
should be placed on 3D printing hardware.
The ease with which copyrighted MP3 files could be duplicated, as
well as the “guaranteed fidelity of copying,”40 were major factors in the
development of the DMCA.41 Indeed, before the passing of the Act, US
courts were slow to find infringement in the form of recorded copies of
38 Ranbaxy Labora tories Ltd v Warner Lambert Co [2007] IEHC 256, at [3.2].
39 Instead the CAD file will likely be the CAD file creator’s approximate representation of the
patented device, unless the patent was originally designed to be stored within a CAD file.
40 Charles W Finocchiaro, “Personal Factory or Catalyst for Piracy? The Hype, Hysteria, and
Hard Realities of Consumer 3-D Printing” (2013) 31(2) Cardozo Arts and Entertainment Law
Journal 473, at 492.
41 See David A Whitehurst, “The Digital Millennium Copyright Act: Bringing Copyright Law
into the Digital Age” (2003) 2 Appalachian Journal of Law 77.
2014] 3D Printing 23
television shows, film and music by video and cassette tapes of individual
users. For example, in the landmark case of Sony Corp of America v
Universal City Studios Inc 42 the Supreme Court held that the non-
commercial use of copyrightable material by individuals was considered
fair use. Most pertinently for the purposes of commercial 3D printers,
Justice Stevens held that a balance must be struck between “a copyright
holder's legitimate demand for effective - not merely symbolic - protection
of the statutory monopoly, and the rights of others freely to engage in
substantially unrelated areas of commerce.”43 This displays the courts’
willingness to protect the development of innovative technology, even if
such technology can be used to the detriment of the proprietary interests of
third parties.
C. US Patent Model
The Irish legislation relating to patent infringement is almost identical to
that of the US. However, US patent law has a significant body of case law
that expands upon its provisions and thus for the purposes of this
discussion the US model will be considered. It is proposed that any
suggested changes to the US patent model made in this analysis should be
directly mirrored in the relevant sections of the Irish Patent Act.
Patent infringement in the US is generally defined as:
(a) Except as otherwise provided in this title, whoever without authority
makes, uses, offers to sell, or sells any patented invention, within the
United States, or imports into the United States any patented invention
during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an
infringer.
(c) Whoever offers to sell or sells within the United States a component of
a patented machine, manufacture, combination, or composition, or a
material or apparatus for use in practicing a patented process, constituting a
material part of the invention knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a
staple article or commodity of commerce suitable article or commodity of
42 464 US 417 (1984).
43 464 US 417 (1984), at 422.
24 Trinity College Law Review [Vol 17
commerce suitable for substantial non-infringing use, shall be liable as a
contributory infringer. 44
Thus, there is no exemption for non-commercial use under US patent law
and the copyright fair use provision does not extend to patents.45 Applying
the American model to consumer 3D printing, any legal entity that uses,
sells, offers for sale or imports the patented item without the requisite
authority of the patent holder is liable for direct infringement under section
(a). This means that any individual who prints a patented item directly
infringes the patent rights of the patent holder, regardless of the intentions
of the patent infringer.
Sections (b) and (c) deal with indirect infringement and require a
certain mens rea on the part of the infringer to induce direct infringement
by another. In essence, the standard is that of “aiding and abetting” the
primary infringer. Section (c) seeks to catch those who supply parts that
they know will be used to breach a patent and section (c) is slightly
irrelevant in the context of 3D printing. Parts that are a “staple article” for
non-infringing use are excluded, meaning that anyone who supplies 3D
printers will be unlikely to fall under this provision. Furthermore, CAD
files are not considered to be “components” of a patented product. For
example, in Microsoft Corp v AT&T Corp46 the US Supreme Court held
that software could not be a “usable, combinable part of a computer” until
expressed in a physical form. 47 As stated by Justice Ginsberg, “[a]
blueprint may contain precise instructions for the construction and
combination of the components of a patented device, but it is not itself a
combinable component of that device.”48
Section (b) does relate to 3D printing, although it is framed in a way
that allows one of the most accountable patent infringers to avoid
infringement liability. Under this section the indirect infringer must
encourage infringing activity by another with “knowledge that the induced
acts constitute patent infringement.”49 For consumer-level 3D printing this
would only include the websites that host the infringing CAD files with
knowledge that the files are in breach of a patent. The standard of
44 35 USC § 271.
45 Many academic commentators have argued that the fair use doctrine should, in fact, be
introduced to patent law also. See Katherine J Strandburg, “Patent Fair Use 2.0” (2011) 1(2)
UC Irvine Law Review 265, at 266.
46 550 US 437 (2007).
47 550 US 437 (2007), at 438.
48 550 US 437 (2007), at 438.
49 Brean, note 9, at 784, citing Global-Tech Appliances, Inc v SEB SA 131 S Ct 2060 (2011),
at 2067.
2014] 3D Printing 25
knowledge here is extremely high and, aside from those with actual
knowledge, only those that are wilfully blind to the patent infringing file
will be held to be liable under section (b). As the US Supreme Court
accepted in Global-Tech Appliances Inc v SEB SA,50 the indirect infringer
without subjective knowledge must meet two requirements to face liability:
“First, the defendant must subjectively believe that there is a high
probability that a fact exists. Second, the defendant must take deliberate
actions to avoid learning of that fact.”51
Another key flaw with the US legislation is that it does not apply to
the entities that create the patent infringing CAD file, even if they are
subsequently able to sell the CAD file. Under US law, it is the physical
representation of the patented item that is protected, and not the CAD file
that the patented item’s design is housed within. As a result, patent law
does not become relevant for 3D printing until the patented good is printed,
and this is something that the legislature needs to change in order to
effectively apply patent protection to commercial 3D printing. Under US
common law, “a sale…cannot be given of a thing which has not fully come
into existence.”52 The same tangibility requirement exists under common
and commercial law in Ireland, following the position taken by the English
Court of Appeal in St Albans City and District Council v International
Computers Ltd.53 Tangibility is usually defined as having a physical form
or being capable of being perceived by the senses. Until the item at issue
manifests itself into physical form, it cannot be considered a good under
the Sale of Goods Act, 1893. In the context of patented inventions housed
within an intangible medium such as a CAD file, US case law states “the
entire apparatus must have been constructed and ready for use...[u]ntil the
apparatus is constructed and ready for use, it cannot be clear whether
infringement has taken place.”54 Consequently, until the 3D printer prints
the patented item, patent law cannot be used to protect the rights of the
patent holder and halt the transfer of the patent infringing CAD file.
D. Changes to the Current System of Patent Law
For patent law to effectively curtail patent infringement, a change is
required which will have the effect of shifting accountability from those
50 131 S Ct 2060 (2011).
51 131 S Ct 2060 (2011), at 2070.
52 Ecodyne Corp v Croll-Reynolds Engineering Co 491 F Supp 194 (1979), at 197.
53 St Albans City and District Council v Interna tional Computers Ltd [1996] EWCA Civ
1296, [1996] 4 All ER 481.
54 491 F Supp 194 (1979), at 197.
26 Trinity College Law Review [Vol 17
who unlawfully print out patented goods to those who create and distribute
patent infringing CAD files. To achieve this, it is first proposed that the
remedial rights prescribed by US patent law against those that physically
print patented items remain unchanged. As demonstrated by the
impracticality of applying copyright law against individual digital
infringers,55 it is generally unfeasible to effect enforcement action against
the legal entities that actually make use of the intellectual property
breaching files.56 Rather than have to take action against the thousands or,
potentially, millions of illegal CAD file downloaders across the globe, the
needs of patent holders will be more efficiently met if a workable
framework is created that will allow for robust action to be taken against
the sources of the infringing CAD files.
i. Legislative Change
It is proposed that two major changes to the US system of patent law are
required to effectively regulate the world of commercial 3D printing. First,
new legislative provision should be introduced to combat the ISPs57 that
host and share patented CAD files. With regard to copyright law, one of
the DMCA’s most effective means of combatting infringement has been
the notice and takedown rules prescribed under the Online Copyright
Infringement Liability Limitation Act.58 Under this system, a limited means
is provided to ISPs that host copyright infringing files to gain an exemption
from contributory copyright infringement. To avail of this exemption, ISPs
must, first, have no actual or constructive knowledge of infringing
behaviour; second, gain no financial benefit directly attributable to the
infringing activity and; third, when given a proper notice of infringing
material being posted on its network, the ISP must “respond expeditiously
55 Rita Chang, Will Consumers Change Copyright Law?
56 Amanda Holpuch, Minnesota Woman to Pay $220,000 fine for 24 Illegally Downloaded
Songs
illegally-downloaded>. Most legal action taken against individuals that illegally download
copyrighted material online has been for the purpose of setting an example and large-scale
action against individual users is not feasible.
57 Internet Service Providers are broadly defined under the DMCA as being “a provider of
§512(k)(1)(B).
58 The equivalent to the DMCA in Ireland is SI 68/2003 Electronic Commerce Directive, SI
No 68/2003 - European Communities (Directive 2000/31/Ec) Regulations 2003 and the
Electronic Commerce Directive has much the same effect as the DMCA.
2014] 3D Printing 27
to remove, or disable access to, the material that is claimed to be
infringing.”59
Adapting the DMCA notice and takedown rules to patent law would
allow for an effective and relatively cost-free solution to policing the
sharing of patent-infringing CAD files,60 whilst also pushing liability onto
culpable ISPs. With this scheme, the recourse for a patent holder
suspecting that a hosted CAD file is infringing their property rights is
extremely simple. Applying the DMCA requirements to patents, a patent
holder would need to first, identify the patented work claimed to have been
infringed and provide enough information to allow the ISP to locate the
infringing file; second, provide the ISP with enough information to contact
the complaining party; third, provide a statement that they have a good
faith belief that the infringer that uploaded the infringing file lacks
authority from the copyright owner and; fourth, provide a statement that
the information in the notification is accurate and that they are authorised
to act on behalf of the owner of the patent, and any misstatements here will
be under a penalty of perjury.61 Thingiverse already has a DMCA notice
and takedown policy for copyright infringing CAD files and it does not
seem to be overly burdensome to apply the same requirement to patent
infringement.62
Probably the biggest failure of the DMCA is its curtailing of the
copyright ‘fair use’ doctrine. Even though individual users are able to share
or make use of physical representations of copyrightable materials if they
meet certain criteria,63 those that own copyrighted items falling under the
DMCA are unable to take advantage of this exemption.64 Amending US
patent law will not cause the same problems, as the fair use doctrine does
not extend to patents, although, as previously stated, the method of
enforcement of patents is so cumbersome that it is unfeasible to apply
against individual patent breaches anyway.
59 17 USC § 512(c)(1).
60 The DMCA’s notice and takedown policy has, however, been criticised for being overtly
favourable to copyright holders as, due to constraints in resources, ISPs will be unlikely to
check the validity of every notice and, often, will merely takedown all content a complaint has
been received against. See Jennifer M Urban and Laura Quilter, “Efficient Process or
“Chilling Effects”? Takedown Notices Under Section 512 of the Digital Millennium
Copyright Act” (2006) 22(4) Santa Clara Computer and High Technology Law Journal 621.
61 17 USC § 512(c)(3)(A)(i-vi).
62 See (visited 1 February 2014).
63 See What is F air Use? www.fairuse.stanford.edu/overview/fair-use/what-is-fair-
use/> (visited 1 February 2014) for an explanation of the faire use doctrine.
64 Thomas J Loos, “Fair Use and the Digital Millennium Copyright Act” (2007) 13 Michigan
Telecommunications and Technology Law Review 601.
28 Trinity College Law Review [Vol 17
ii. The Patent Merger Doctrine
The second proposed change to US patent law relates to how CAD files are
viewed in terms of their ability to infringe the patents of third parties. As it
stands, it seems unlikely that a CAD file would be capable of infringing the
patent rights of another under Irish law. In the same way that ‘staple
articles’ are exempted under US patent law, ‘staple commercial products’
are exempted under Irish patent law. 65 Unfortunately, no statutory
definition exists for this term and there has been no case law in Ireland
relating to this provision, although Robert Clark states that it is likely that
the same meaning as that set out by the US courts will apply.66 Taking into
account the decision in Microsoft Corp v AT&T Corp, software, which
encompasses CAD files,67 is not recognised as a “usable, combinable part
of a computer”68 until expressed in a physical form.
Without protection extending to CAD files, patent law will fail to
even superficially uphold the property rights of patent holders. If liability is
limited to the physical representations created by the infringing CAD files,
ie direct infringement, as well as entities that are either wilfully blind to or
actively encourage patent infringement by another, ie indirect
infringement, the protection expectations of patent holders will not be met.
For indirect infringement to occur, however, direct infringement must first
occur.69 A court can, however, find that there has been direct infringement
merely from circumstantial evidence that at least one instance occurred
where the inducement resulted in the breach of a patent.70
As previously alluded to, patent law is based on the requirement that
full disclosure be made of all the information necessary for a person
‘skilled in the art’ to construct the invention. CAD files are, in essence, the
information required for this full disclosure, akin to a blueprint describing
how a patent is made, as opposed to a physical representation of the
patented invention. Therefore, the full disclosure rule is incompatible with
the suggestion that CAD files containing a patented invention are capable
of breaching a patent before the involvement of a 3D printer. Comparing
65 Patents Act, 1992, s.41(2).
66 Robert Clark, Shane Smyth and Niamh Hall, Intellectual Pr operty Law in Ireland (3rd ed.,
Bloomsbury Professional, 2010), at 143.
67 550 US 437 (2007), at 438. Justice Ginsberg observed that software is merely “an intangible
set of instructions” and until “expressed as a computer-readable ‘copy,’ eg on a CD-
ROM…any software detached from an activating medium...remains uncombinable.”
68 Ibid.
69 Nordberg Mfg Co v Jackson Vibrators, Inc 153 USPQ 777 (1967).
70 Donald S Chisum, Chisum on Patents: A Treatise on the Law of Pa tentability, Validity
and Infringement (LexisNexis, 2012), at [17.04].
2014] 3D Printing 29
patents to copyright law, however, the equivalent to a blueprint of the
copyrighted MP3 - sheet music - does enjoy separate copyright
protection.71 Thus, to successfully bring CAD files under the purview of
patent law an amendment to the current patent system needs to be effected.
However, introducing the copyright model would not be an
appropriate response to the CAD file problem. The idea that separate
patents would be needed to give protection to CAD files would, first,
increase the price and impracticality of patents, especially in regard to
patents that have already been filed. Secondly, the ability to patent what is,
essentially, a blueprint of a patentable invention is completely at odds with
the previously discussed disclosure requirements of patents. Instead, it is
proposed that a so-called ‘patent merger’ doctrine be introduced, which
will have the opposite practical effect of a ‘copyright merger.’
Under copyright law, protection is only afforded to the expression of
an idea and not the idea itself.72 The copyright merger doctrine, also known
as the idea-expression dichotomy, introduces a new element to this
principle and allows for an affirmative defence to potential copyright
infringement. First expressly set out in the seminal US case of Baker v
Selden,73 the copyright merger doctrine states that no copyright protection
can occur when the expression of an idea has merged with the idea itself.
For example, in Kenrick v Lawrence,74 a drawing of a hand holding a
pencil and drawing a check-mark into a box, which was used on voting
cards for illiterate voters, was deemed not to enjoy copyright protection. As
Wills J observed:
It seems to me, therefore, that although every drawing of whatever
kind may be entitled to registration, the degree and kind of protection
given must vary greatly with the character of the drawing, and that
with such a drawing as we are dealing with the copyright must be
confined to that which is special to the individual drawing over and
above the idea…A square can only be drawn as a square, a cross can
only be drawn as a cross and for such purposes as the plaintiffs'
drawing was intended to fulfil there are scarcely more ways than one
of drawing a pencil or the hand that holds it.75
71 Copyrights and Related Rights Act, 2000, s.17(2)(c).
72 Copyrights and Related Rights Act, 2000, s.17(3).
73 Baker v Selden 101 US 99 (1879).
74 (1890) 25 QBD 99.
75 (1890) 25 QBD 99, at 104.
30 Trinity College Law Review [Vol 17
Similar to copyright, patent law also protects the expression of an idea.
However, while copyright protects the creative expression of an idea,
patent law protects its functional expression. The protection afforded by
patent law is stronger than that of copyright as the functional expression of
an idea will be intrinsically linked to the idea itself. If a third party creates
a product that is the “subject matter”76 of a patent, then the patent holder
has a legitimate cause of action against the third party, regardless of the
third party’s inability to express that idea in a different way. Thus, the
copyright merger doctrine is inapplicable to patent law. Again, like
copyright law, patent law does not protect the idea on its own: the
aforementioned disclosure requirements when making a patent application
necessitate public dissemination of the patented idea. With a patent merger,
similar to the copyright merger doctrine, the expression of the idea and the
idea itself will, essentially, be fused, but only in limited circumstances.
Rather than being a defence, however, the patent merger doctrine will
allow for a positive cause of action against those who breach patents
through the creation, use and sharing of CAD files housing patented
inventions.
Although it is proposed that the patent disclosure requirements
remain unchanged, the rationale for punishing only the functional
expression of the patented idea will arguably, in the near future, cease to
exist. As referred to above, patent law necessitates that someone skilled in
the art should be able to carry out the claimed invention from the
information released by the patent applicant in their patent application. As
well as the high costs associated with successfully breaching a patent, the
functional expression of a patented object cannot be freely shared across
the Internet, and for individuals to breach a patent the patented invention
needs to be constructed.
As part of the proposed patent merger doctrine, in situations where
the patent breach clearly pre-empts the unauthorised “making, offering,
putting on the market or using”77 of a patented invention, the idea, ie the
blueprint of the patented invention housed within the CAD file, gains
patent protection as it merges with the expression, ie the physical
representation of the patent. Essentially, in situations where the CAD file
unlawfully contains the instructions to print a patented invention, the idea
itself, which is contained within the CAD file, becomes liable to direct
patent infringement. With the patent merger doctrine in place, the presence
of a physical representation of the patented product becomes legally
76 Patents Act, 1992, s.40(a).
77 Patents Act, 1992, s.40(a).
2014] 3D Printing 31
irrelevant, as the CAD file is by itself sufficient to find a patent breach. For
example, if a website makes available a CAD file containing the
instructions for patent X without the permission of the owner of patent X,
the website becomes liable for direct patent infringement, bypassing the
awkward indirect infringement knowledge requirements. The exact
wording of this doctrine is important, and the legislature must ensure to
restrain the ambit of this new provision strictly to CAD files capable of
instructing a 3D printer to print out a patented invention, and not any other
kind of blueprint. It is submitted that a definition with a similar intent as
the following should be undertaken by the Irish legislature:
In such cases that the rights of the proprietor of a patent to prevent all
third parties not having consent from doing in the State all or any of
the things set out in s 40 (a) might be circumvented by computer files
containing sufficient instructions to cause the making of a product
which is the subject-matter of the patent by manufacturing hardware,
those computer files will be considered to have the same effect as the
‘making’ of a product which is the subject-matter of the patent under
s 40 (a).
Such a definition limits patent protection to ‘computer files’ which achieve
the ‘making’ of patented products through the use of ‘manufacturing
hardware,’ making it difficult to envision anything other than patent-
infringing CAD files fitting within this definition.
Admittedly, updating patent law to encompass the sharing of CAD
files will only have a limited effect on the inevitable patent infringements
that the advance of commercial 3D printing will cause, much in the same
way that the numerous updates to copyright law have struggled to curb the
illegal sharing of music and video files online. It is essential, however, to
have a system that will allow for the effective implementation of the
proposed DMPA, as well as a means to inform law abiding users that the
downloading and possession of patent breaching CAD files is illegal.
It is unfortunate that there are numerous unavoidable practical
difficulties associated with the proposed patent law changes set out above.
First, deciphering whether a CAD file does in fact breach a patent is
difficult. Comparing the patent filings with the information contained on a
CAD file is, at the very least, highly time-consuming, and the difference
between a product that is patented and one that is not can be very subtle.
Secondly, the DMPA might cause a chilling effect on websites housing
CAD files. Many websites will automatically take down a CAD file on
receiving a patent breach claim, without checking the validity of such a
32 Trinity College Law Review [Vol 17
claim. Territorial issues will also be a problem. Unlike copyright,78 patents
are limited to the borders of a country that the patent is filed in. Although
placing a patent breaching CAD file online will breach a patent in another
jurisdiction, only patents filed in Ireland will benefit from the changes
proposed. This could, however, be used as an advantage for Ireland, as
many manufacturers hold patents in two or more countries: one in the
country in which they directly manufacture the product and another in a
country that they license the production of the patented product for a
certain region. Adopting the proposed changes would demonstrate Ireland
to be an extremely stable location to register a patent, and the manufacturer
would benefit from also gaining patent protection for patents filed in the
manufacturer’s home country.
E. Conclusion
In conclusion, it is proposed that three distinct changes be made to
Ireland’s current patent framework. First, that the non-commercial use
exemption be abolished, so as to allow for liability for the free sharing of
CAD files housing patented products. Secondly, that a patent version of the
DMCA or the Electronic Commerce Directive be introduced to create a
remedial framework against infringing CAD file hosting websites. Finally,
that an insertion be made to the Patent Act that would bring patent
infringement liability to patent-breaching CAD files. This should be
achieved by a patent merger, where the idea and expression of a patent
merge, so that the idea itself, in a specific form, becomes actionable.
III. Copyright
Currently, copyright infringement is not a major issue in the context of 3D
printing. The copyright industry has already had to deal with the negative
side of digitalisation and an established framework exists to enforce
copyright protection against digital copyright infringing files, including
CAD files. The main copyright law issue with CAD files relates to CAD
files that offer both functional and creative value. As will be discussed
below, copyright protects original works but not articles that offer a
utilitarian function and, as is the case with CAD files, if the original work
cannot be separated from the useful article no copyright protection will
78 This is so for every country that is a signatory of the Agreement on Trade Related Aspects
of Intellectual Property Rights, which was administered by the World Trade Organisation and
agreed to by all 159 of its members.
2014] 3D Printing 33
apply. For the purposes of this analysis US law relating to copyright will be
discussed as much of the academic commentary relating to this issue is
based on US law, the United States is where most of these digital copyright
claims will be filed and the copyright code in force in the US is essentially
identical to the equivalent copyright laws in Ireland.79
A. Functional Items
Unlike MP3 and MP4 media files which host clearly copyrightable
material,80 CAD files are in a far more precarious position and, in general,
functional objects, ie objects that are designed for a physical purpose, are
not protected by copyright law. For example, even though the artistic
designs that might furnish a desk could be copyrightable, the desk itself
will not be.81 If, however, the artistic design cannot be effectively separated
from the functional element of the item, no copyright protection will be
afforded to it. Thus, on the face of it, no CAD file containing a functional
item will receive copyright protection. There are, however, a limited
number of intricate areas within copyright law that CAD files might fall
into in order to bypass the functional objects rule.
B. Operating System or Applications Programme?
The easiest way to extend copyright protection to all CAD files is to give
copyright protection to the CAD file itself, as opposed to the items
contained within it. Applying the copyright law governing computer
programmes to CAD files, programmers generally claim that their
programme source code is a copyrighted creative work, and software is
usually defined as either an operating system or an applications
programme.82 Since the purpose of CAD files is to accomplish a specific
task for the user, ie to print out a 3D object and not to conduct internal
79 Both Ireland and America are signatories of the World Intellectual Property Organisation
Copyright Treaty, which formed the basis for the DMCA and the Electronic Commerce
Directive.
80 17 USC § 1102(a), s. 2 relates to “musical works, including any accompanying words,”
whilst s. 6 protects “motion pictures and other audiovisual works.”
81 See eg, Stevens Linens Association v Mastercraft Corp 208 USPQ 669 (SDNY 1980), aff’d
628 F 2d 1346 (1980), where it was held that an artisan cannot obtain copyright protection for
a fabric-covered chair per se, but may copyright the design of the fabric that covers that chair
or the elaborate sculpture work that adorns the back or leg of the chair.
82 Rideout, note 16, at 167 cites US Copyright Office, Cir cular 61: Copyright Registr ation for
Computer Programs (visited 1 February 2014).
34 Trinity College Law Review [Vol 17
computer operations, CAD files would not be considered operating
systems.83
CAD files seem more likely to fall into the category of applications
programmes84 as they perform specific tasks for the user.85 However, as
Brian Rideout has observed:
Users take a 3D CAD file, which describes the surface geometry of a
3D object, and uses Stereolithography ("StL") software to run the file
and output a desired 3D object…Each facet is described by a
perpendicular direction and three points representing the vertices
(corners) of the triangle. These data points are used by a slicing
algorithm to determine the cross sections of the 3D shape to be built
by the 3D printer.86
CAD files are, thus, distinguished from other computer programs in that
they are, in truth, just a triangular projection of a 3D object, and the CAD
files have no control over the operation of 3D printers. Instead, CAD files
are more closely analogous to a blueprint and, thus, it is unlikely that
courts would hold that CAD files could be considered copyrightable
material as a computer program.
C. Architectural Plans
CAD files housing functional items may fall under the category of
“pictorial, graphic, and sculptural works,87 which are expressly protected
by copyright law and are defined as including “technical drawings,
diagrams, and models.”88 Under this definition, CAD files would be treated
in the same vein as architectural plans, which “are subject to certain
qualifications peculiar to this form of work.”89
Yet, although all architectural plans are likely to depict a useful
article, architectural plans are not afforded “any greater or lesser rights
83 Ibid. Rideout cites Apple Computer, Inc v Franklin Computer Corp, 714 F 2d 1240 (3d Cir
Pa 1983), 464 US 1033 (1984).
84 An application programme is any programme designed to perform a specific function
directly for the user or, in some cases, for another application program. For example, a word
processor is an applications programme.
85 Whelan Assocs Inc v Ja slow Dental Lab Inc 609 F Supp 1325 (ED Pa 1985), 479 US 1031
(1987).
86 Rideout, note 16, at 167.
87 17 USC § 1.102(a)(5).
88 17 USC § 1101.
89 Rideout, note 16, at 168.
2014] 3D Printing 35
with respect to the making, distribution, or display of the useful article so
portrayed.”90 Instead, as with all other copyrightable material, the
functional items depicted will not enjoy copyright protection. Copyright
protection is, however, afforded to architectural plans that depict both
utilitarian and artistic features, even though the artistic design cannot be
separated from the functional aspect of the plans.
Essentially, if this provision applies to CAD files, the copyrightable
material housed within the CAD will enjoy copyright protection, regardless
of the useful articles also housed within the CAD file. This will result in
CAD files gaining the same protection as MP3 and video files.
D. Copyright Law Conclusion
The most obvious way to remedy this situation and bring clear copyright
protection to CAD file developers is to expand the aforementioned
exemption for architectural plans to definitively include CAD files. Yet,
given the fact that this would wholly curtail 3D printing’s open source
ethos, this seems like an over-reaction, and “over-regulation” might stifle
the development of the technology. CAD files, although similar to MP3s in
that they both are derived from rivalrous commercial products, also hold a
key distinction over other digital artistic-based files because the 3D objects
that CAD files generally blueprint are not copyrightable, while the works
that MP3s contain most certainly are.91 Thus, it would be a fallacy to try to
force the same legislation on both types of digital files.
Conclusion
In the context of manufacturing, the digital world is creating new and more
complicated problems for the courts and legislature. Wholly accepted
norms in the world of manufacturing are starting to change, and advances
in 3D printing are occurring at a rapid pace. Yet, given the fact that all of
these changes are in their mere infancy, there is still an opportunity for new
legislation and regulations to be passed to ensure that intellectual property
law shields itself from inadequacy.
Currently, patent law is the area of intellectual property that is in the
most precarious position in relation to the advance of commercial 3D
printing. There is, at present, no mechanism to enforce direct patent
90 17 USC § 113 (b).
91 Fred Von Lohmann and Wendy Seltzer, Death by DMCA
36 Trinity College Law Review [Vol 17
infringement provisions against patent infringing CAD files, whilst the
purview of indirect infringement is almost equally as limited. Copyright is
in a stronger position than patents, as copyright has already had to deal
with the negative effects of digitisation. One copyright issue does exist in
relation to functional products contained within CAD files, but this issue is
not necessarily alien to 3D printing.
Commercial 3D printing will bring about huge benefits to mankind.
In the same way the advancement of the Internet introduced the unlimited
and instantaneous global sharing of ideas and information, commercial 3D
printing will effect the same changes in regard to the sharing of physical
goods. However, as the Internet caused serious issues for copyright law,
3D printing threatens to bring similar discord to patent law. For 3D
printing to truly develop as a success, change is required immediately to
protect the intellectual property rights of patent holders.
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