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3D printing and IP rights: some issues, any solutions?
Fatima Ghilassene / Research Officer, Intellectual Property Observatory, INPI (National Institute for Industrial Property, France) / December 16th, 2014
3D printer manufacturing technologies are not new, but what is new is increasing accessibility that follows suit to marketing of small printers at affordable prices. This democratization both fascinates and worries creators and designers as well as decision makers. Often described as the vector for a 3rd industrial revolution, 3D printing, however, does raise questions when it comes to intellectual property rights that the technology may undermine. Certain already existing technical and legal solutions could accompany more extensive use. Nonetheless, there will necessarily be a change in paradigm.
In as much as it facilitates small volume production, 3D printing opens the way to on demand production and massive personalized production. Given that the design process for the object to be manufactured is digital, it can be modified and repeated endlessly with differing models. The conjugation of digital techniques and physical constraints announces the advent of a “main street,” participative innovation: the source files available in open access mode can be modified improved on and personalized ad libitum.
But there is a dark side to this form of democratization. 3D printing could place designers in much the same position as the musical industry was a few years ago. Before assuming its material shape, the digital model could circulate freely over Internet and be downloaded and “printed” by private third parties, with no prior consent given by the legal owners of the property rights.
Further development of this promising technology therefore inevitably raises the issue of counterfeit products. Beyond the designers, complete sectors could be destabilized by development of 3D printing.
When democratization rhymes with counterfeit work
3D printing facilitates copies, notably through use of a 3D scanner device and a one-to-one scale reproduction, far beyond any control by the property right owners. The associate files can be accessed at any time, by millions of PCs. One of the consequences is the dispersal of the counterfeiters.
Beyond the property ownership consequences tied to loss of income, one of the features of copyright, moral rights and especially the right to preserve the integrity of an initial model, could be jeopardized by the freedom Internet users have to modify the digital models they download.
Suppose a designer was to invoke counterfeit infringement law to defend his/her rights. Who could be prosecuted in a court action? The person who digitized the object initially, the person who put the file online, or the person who printed and replicated the object?
Of course, the risk is limited, for the time being. The general public 3D printers have smaller capacities than those used by industries. Firstly, they can only print with one material, a plastic that has a high price/kg for private persons who do not have nearly the same negotiating powers of the industrialists, able to purchase large volumes of the materials. Secondly, the general public printers are often small-sized and only permit production of small objects. Lastly, they operate correctly only with the proprietary material provided by the printer manufacturer. Still, even if the risks seen today are somewhat anecdotic, nothing precludes them from growing. A certain number of questions arise, that were already raised round protection of musical works. Should measures be taken to prevent copies being made of objects protected by intellectual property rights? Does the ‘private copy’ provision apply to copies of physical objects? Does the notion of ‘a work’ (as in a work of art) apply to objects?
On top of this, there is the question of quality – which was not relevant in the case of illegal downloading of music or films. Consumer protection led to the issuing of a number of quality standards, enforced on the industrialists. How can we guarantee that objects manufactured by a 3D printer comply with safety standards and that the materials used by the public at large are not toxic, and are flame, shock or wear resistant?
How are we supposed to enforce safety standards for manufactured 3D objects, printed directly by private persons? Who will be liable in the case of accidents? Who will take the blame for faulty products? Will it be the “manufacturer”? But who is the “manufacturer” when you have the consumers themselves printing spare parts using a file supplied directly by the appliance salesman or downloaded from a server?
Questions like these call for further analysis and we need to do this now if we want to avoid unrestrained counterfeit printing, in the interests of traditional industrialists but also to avoid too brutal regulatory changes for the actors of this emerging sector. Solutions are forthcoming. The challenge consists not so much of fighting expansion but rather to accompany it.
Technical solutions already exist
We can cite measures to authentify objects, which consist of adding special, non-reproducible markers. The international standard ISO 12931, drafted in 2009, sets out a list of protective measures, a methodology and performance criteria to identify the solution best suited to the protection of products.
Some innovative solutions have been developed. The US company Microtrace proposes a marking process which consists of inserting micro-taggants in the plastic material objects, invisible to a naked eye, that allow an infinite number of codes to be generated by combining print layers and different colors.
The German company Bayer Technology Service has developed an authentication technology for its clients’ objects: ProteXXion. It assigns a unique digital print to each fabricated object, using infinitesimal natural surface faults detected on each object. The print is laser scanned and registered in a data bank to authentify objects later if necessary.
CNRS research scientists have developed a technology that allows you to identify minute parts needed for industrial uses. The process consists of depositing nanoparticles on the object’s surface with authentication data for objects liable to be targeted by counterfeit operations, such as luxury watches.
There are also authentication processes for objects made by 3D printers. American scientists recently presented a technology that allows them to implant a unique marker directly in 3D printed objects. These so-called InfraStructs are embedded in the 3D objects during the printing process. The markers can then be read by a scanner device.
Technical solutions like these enable authentication of the origins of an object and detection of counterfeit objects. We could envisage seeing the manufacturers registering the numerical identity of their products in an internationally accessed database that could be consulted by the customs administrations using an adapted scanner to inspect goods circulating. Over and above object tagging, there would be control of data file use. Technical use control measures could be taken when the file is downloaded or when the printing operation is launched. And here, once again, solutions already exist.
The US Company, Authentise Inc. proposes an innovative technical solution for designers. Their slogan is “Let them print once!” This is a server platform on which designers can register their digital models so as to make them available to Internet users. The latter pay for each file downloaded – only one download is allowed. It is a service that also reassures the client that the model purchased is authentic.
This solution led to the signing of a collaborative agreement between Authentise and Pinshape, a digital server where designers are invited to sell their creative works. Pinshape approached Authentise to request permission to use its streaming technology to ensure a control of files hosted on the server and compliance with the intellectual property rights of the file creators. This kind of solution, moreover, answers the question of the integrity of the works, since a visiting web user cannot modify the files.
One innovation leading to another, an American company, in October 2012, registered a claim with the US Patent and Trademark Office under the title Manufacturing control system. This technology is integrated in the 3D printer and works as follows: when the printer uploads a file (and before the printing sequence begins), an authentication query is sent to a database to check whether it is authorized to fabricate the object or not, and if the answer is positive, to validate the number of permitted print sequences. The technology presupposes that there is a database to register the digital models with information appertaining to the relevant intellectual property rights. DNP, a Japanese printing company, has developed an application to connect 3D printers to a data base with a list of dangerous objects, such as firearms as well as a list of “copyright protected” models for which printing is not authorized. When the printing operation is ready to commence, the system has the printers compare the data for the uploaded digital model with contents on the data base to decide whether reproduction of the model is legal or not. The company plans to approach companies that might be interested in their technology to implement the programme.
Again, what we have here is the idea of a printer connected to a system capable of handling intellectual property rights. The efficiency of the protection system relies on a printer equipped with a software package to carry out the control functions. There could be a charter signed by printer manufacturers in which they would commit themselves to integrating a digital rights management (DRM) system in the printer units.
Legal solutions: a framework that needs to be completed
The facility with which objects can be reproduced with 3D printers raises questions as to the capacity of the legal framework today to protect creators’ intellectual property rights.
A distinction must be made between two situations: whether the author is a professional or a private person printing for his/her personal use.
Let us first look at the case of the private persons. The debate focuses mainly on a provision that can be found in most national regulatory texts, the exception of copyright for private use. The work in question can be protected under various headings: authorship rights and copyright, trademarks, patents, blueprints or models. The question then arises as to applicability of these provisions to objects that come under the private use exception, with certain conditions, for audio-visual products. If the answer here is “yes”, then we can envisage an extension of a royalty system for private copies to 3D scanners and printers.
Replication by a professional of an object protected by intellectual property rights without authorization of the rights owners would constitute a counterfeit infringement, no matter whether the object comes from a 3D printer or from a cheap labor copying source. Toys, for instance, represent a sensitive sector inasmuch as manufacturing faults could endanger children’s health. If private persons may be tempted initially to print a toy to discover the underlying 3D print technology, this new activity may build up to become a fashion fad, i.e., the customer is quickly tired and loses interest, in view of the cost of the print material and the slow printing process. Thus, counterfeit activities will not stem from consumers, but far more from Mafioso networks whose business is based on counterfeit productions. For networks like these, 3D printing can replace fragile, clandestine workers by using increasingly efficient robots. Well-organized networks would not hesitate to scan toys produced by a well-known trademark and propose counterfeit replicas with the same features as the original … minus the quality. A solution here is to make the consumers more aware by correctly informing them clearly about their liabilities when the products do not carry the guarantee of the original, legitimate trademark.
However, consumers and propriety owners are not the only actors in this chain of responsibilities. So, who then are the intermediaries?
Platforms such as Shapeways and Sculpteo offer designers the possibility to sell their creations in a digitized format file. The proposal to the consumers is to avail of 3D print services using their personal file, or to proceed via a catalogue enriched by the designers. There is a case for enforcing a control and filter function on these companies, obliging them, for example to refuse the presence on their servers not only for files and printing of objects which are regulated or forbidden (e.g., firearms), but also for products that are protected by intellectual property rights the use of which has not duly been authorized by the legitimate right owners.
When you read the general sales conditions for companies like Shapeways, Makerbot, Thingiverse or Sculpteo, it will be noted that the company CEOs have turned the notion of liability into “good practice rules.” Exemplarity expected here was not immediate, witness the case where Shapeways was served a writ by the editor Square Enix to remove models of copyright fictional characters in the video Final Fantasy, designed and protected by a New York designer, used with without the permission of the video game editor. Shapeways obeyed instantly and the general sales conditions for service companies, like these is a proof of their professionalism and capacity to accept a control and filter obligation for files they receive.
However, their capacity to deal positively with complaints does not anticipate their desire to undertake ex ante controls. Such controls may be enforced by law in the future. Also, development of a legal digital file offer could be largely encouraged, with the proviso of there being public, institutional control of the activities.
Extending possible royalties for private use copies to 3D scanners and printers, as well as making legal and binding the obligation to comply with intellectual property rights depends on the national legislators. However, lawmakers cannot solve every problem raised by this breakthrough technology. It is an innovation that will lead to a change in paradigm and calls for a proactive approach by the companies concerned.
Solutions that depend on corporate strategy
The music industry offers an excellent case study. This sector began fighting the current and was exhausted doing so. Then it understood and learned from its failures and reinvented itself. In like manner, companies that have products exposed to the risks of 3D counterfeit printing will have to react intelligently. This implies, on one hand, that they integrate 3D printing in their marketing strategy and, on the other, that they revise their business models.
3D printing sets in motion a new balance of power between property rights owners and those whose activities rely on this technology, from 3D printer manufacturers to print service server platforms. This balance could provide for opportunities and lead to new forms of partnership between those involved.
Some companies have decided to invest in the technology and profit from it rather than to undergo it as a threat. The luxury goods sector – which has always suffered from counterfeit goods – provides a good example here. Some designers have integrated the technology in their marketing plans for the purpose of gaining a leading edge in the market place.
It is with this desire to control the phenomenon that the fashion designer Asher Levine signed a partnership with the 3D printer manufacturer Makerbot to enabled design of printable sunglasses. The models can be downloaded for free on the Thing verse platform (a subsidiary of Makerbot). This is seen as a win-win situation given that the Levine design 3D printed sunglasses created a sensation at the New York Fashion Week, February 2012.
Another form of partnership can be envisaged between the manufactures, the server platforms and the Fab Labs. In most cases, there will be a category of persons always desirous to acquire new products as and when they hit the market place. There will also be a category of persons ready to seize any available means to combat obsolescence factor of certain goods and, although demand here is very poorly satisfied today, it does exist. Manufacturers can integrate 3D printing with their sales and marketing policy. In the scope of the guarantee proposed to their customers for certain parts, manufacturers could gain a lot by accepting this new role, viz., certifying the quality of downloaded files and also of the print source material. In this manner, a manufacturer for washing machines, for example, could make an agreement with a server platform (to whom he would forward the digital files of his spare parts) and with a Fab Lab (to whom he would deliver a certificate of compliance for the print materials used to produce the parts). This compliance label offered by the OE manufacturer could also serve to justify micro-royalties for each file downloaded and cover the cost of print materials used. A small retribution would be retained, insofar as the manufacturer accepts to be guarantor for consumer safety.
Lastly, some companies could go beyond this stance and adopt a new economic model. Once again, the music industry offers a good example, with server platforms like the Swedish company Spotify or the French company Deezer. The latter is a platform that proposes streamed music; the economic model here is freemium: the consumer profits from a time-limited test period financially supported by advertising. This period allows consumers to become familiar with the service offered so that at the end of the trial period they decide to take out a subscription (at a rather low cost). Of course, when they subscribe, they communicate a large quantity of personal data that can be reused to propose other offers, targeted to match personal tastes and inclinations.
It is suggested that this economic model can be transposed to use of digital model files. The principle is to set up a legal offer of digitized models, a sort of “ItemStore” that would be operated along the same lines and rules as the now legal offer for music files.
Fatima Ghilassene’s full report on the economic impact and legal stakes of 3D printing (INPI, 2014, in French)
Technomic Review/3D printing and IP rights: some issues, any solutions?/TR-2016-05-0006/
This article is based on a report published by France’s Institut National de la Propriété Industrielle in Sept. 2014. The original report, written by Fatima Ghilassene, is in French: L’impression 3D et ses impacts.