MAY 29, 2013

By Oliver Herzfeld

The popularity of 3D printing has been increasing dramatically while the prices for such printers have been rapidly decreasing. In addition to toys and gadgets, real-world practical uses include a virtually unlimited number of potential devices and replacement parts for the aerospace, automotive, medical, military and other industries. Not surprisingly, this relatively new technology has raised many legal issues. For example, Senator Charles E. Schumer has called for legislation banning 3D printed guns since manufacturing such plastic weapons could easily circumvent background checks, registration requirements and metal detectors. And a new type of 3D printer could use chemical inks to quickly print legal and useful chemical compositions such as authorized pharmaceuticals and vaccines, but also illegal drugs and chemical weapons such as ricin or chlorine gas. An important category of legal issues relating to 3D printing involves the protection of 3D designs and objects under intellectual property laws. This series of three posts will review and summarize such protections under US intellectual property law starting with copyrights.

Copyright Law

US copyright law extends protection to “original works of authorship fixed in any tangible medium of expression.” The US Copyright Act provides the owner with the “exclusive rights” to (i) reproduce the copyrighted work, (ii) prepare derivative works based upon the copyrighted work and (iii) distribute copies of the copyrighted work to the public. “Reproduce” (as used above) includes both physical photocopying and digital copying; and making “derivative works” includes recasting, transforming, or adapting a pre-existing work such that the modifications, taken as a whole, represent an original work of authorship.

Copyright Notices

Although affixation of a copyright notice has not been required since March of 1989 when the US joined the Berne Convention, including such a notice on all 3D designs and objects is recommended since doing so cuts-off defenses of innocent infringement. Although being deemed an innocent infringer will not exculpate a defendant from liability, courts in their discretion may reduce damages to $200 per work for defendants who can establish that they were “not aware and had no reason to believe” they were infringing copyright. Copyright notices should appear in the following format: “Copyright © [year of first publication of the work] [copyright owner's name]. All rights reserved.”

Registration

Registration of a copyright with the US Copyright Office is not a prerequisite to protection, although registration is required prior to the initiation of a copyright infringement action. Infringement of a copyright registered prior to infringement, or within three months of publication, can give rise to an award of “statutory damages” between $750 and $30,000 per work as the court considers fair and equitable, and up to $150,000 per work in the case of willful infringement, without having to prove actual damages. In addition to statutory damages, other available remedies would include injunctive relief to prevent further infringement, actual damages and attorneys’ fees.

Registering works through the US Copyright Office’s eCO website is simple and straightforward and the cost is very reasonable at only $35 per work registered online, so registering all 3D designs and objects is highly recommended. Nonetheless, owners should avoid registering works that contain trade secrets since copyright applicants must submit copies of their works and (with certain exceptions) such submitted copies are made available for public inspection.

Idea/Expression Dichotomy

An important limitation on the scope of copyright protection is contained in the so-called idea/expression dichotomy. According to the US Copyright Act: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” In other words, copyright law protects the expression of ideas in any tangible medium but not the ideas themselves. So 3D printing designs would be protected but not the ideas embodied by the designs. For example, the 3D design for a unique robot desk toy would be protectable under copyright law, but the abstract idea of a 3D robot desk toy would not be protectable under copyright law. A corollary of the foregoing principle regarding expression protection is that copyright law usually does not protect functional objects. So copyright law will protect the aesthetic and decorative aspects of printed objects such as original print and patterns, unique color arrangements and novel combinations of elements (protectable or non-protectable) but, in most cases, not the utilitarian aspects of such objects (such utilitarian aspects would be potentially protectable under patent law, as I will discuss in part-two of this series). The one exception under the US Copyright Act is that an 3D object’s design may be protectable “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Courts have established that the test for separability may be met by showing either physical or conceptual separability. A design element is considered physically separable when it can be removed from an object and sold separately (e.g., a hood ornament could be separated from an automobile, but a lamp design cannot be separated from its functional aspects), and conceptually separable when it comprises artistic features that do not contribute to the utilitarian aspect of the object and such features invoke an idea separate from the functionality of the object (e.g., a tribal mask displayed in a museum as a work of art will be deemed conceptually separable, whereas most prêt-à-porter apparel items will be deemed functional even if they include ornamental features).

Elements Of Infringement

In order to establish copyright infringement under the US Copyright Act, the copyright owner must establish three basic elements: (1) ownership of a copyright, (2) access by the defendant to the copyrighted work, and (3) a substantial similarity between the defendant’s work and that of the copyright owner. Once these three requirements are satisfied, the defendant then bears the burden of establishing a defense, the most likely being the “fair use” defense as described below. Fair Use

The US Copyright Act codifies the judicially created “fair use” doctrine. Courts have long recognized the need for such a defense because not every act that might violate a copyright owner’s copyrights should amount to an infringement. The fair use defense was created to limit the scope of copyright through an equitable rule of reason. The US Copyright Act provides, in relevant part, that “the fair use of a copyrighted work, including such use by reproduction in copies…, for purposes such as criticism, comment, news reporting, teaching…, scholarship, or research” is not considered an infringement. Fair use is not, however, limited to the listed purposes. Rather, the courts look to the facts of each particular case and weigh and balance the following four factors to determine whether the particular challenged activities constitute a fair use or an infringement:

1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work.

No one factor is dispositive. Instead, each factor is weighed as part of an equitable rule of reason. Nonetheless, the fourth factor, the effect upon the potential market, historically has been the most important.

Parts Two And Three

In my next post, I will review and summarize protections of 3D designs and objects under US utility and design patent law. And in my final post in this three-part series, I will review and summarize protections under trademark, trade dress and trade secret law, as well as some guidance as to what IP owners should do to protect their IP rights in 3D designs and objects.