The Canadian legal landscape in 3D scanning and printing: The next frontier of IP law

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Capital Perspectives
March 2014


Heralded as the catalyst for a revolution in manufacturing and production, 3D scanning and printing technology is the latest innovation with the potential to challenge and disrupt intellectual property (IP) legal protections. It is a new issue and untested in Canadian courts. However, with highly publicized creations such as 3D-printed firearms and iPhone docks resembling the Iron Throne from HBO’s Game of Thrones, legal challenges to the use of this technology are certain to make it to the courts.

Just as 2D scanning and printing technology is used to make near-perfect copies of 2D documents, photos and drawings, 3D technology can be used to make near-perfect copies of 3D objects. There are a variety of such technologies, though they all generally involve two steps.

First, a 3D scanning device and/or CAD software is used to create a 2D design file – a digital map – to direct the 3D printer in creating the object. Second, the printer creates the 3D object through any variety of 3D printing methodologies, such as extrusion of a raw material like plastic in minute layers to form an object.

Although 3D technology has been available since at least the 1980s, it was mainly employed for prototyping and experimentation. Today, the technology has advanced so it can now create objects of extreme complexity, large size and durability, and at high volumes. Due to decreasing costs, it has seen a significant uptake for both commercial and personal use. In the foreseeable future, individuals will be creating artworks, household items or replacement parts using a 3D printer at their local office supply store or in their own homes.

The potential for disruptions to IP protections abound. IP laws apply to the 3D technologies as well as to the objects that are copied. These laws are designed to protect the owners of creative works, logos, designs and useful inventions, while also allowing and encouraging public access to them. The use of 3D technology raises issues with each of the IP regimes – copyright, industrial design, trade-mark and patent.

Copyright

The Copyright Act protects artistic works which can be scanned and printed using 3D technologies, such as objects, models or sculptures.

The skill and judgment used to create an original artistic work is rewarded by granting creators a number of exclusive rights. Most likely to be implicated in 3D printing is the right to reproduce, or copy, the work.

With a few exceptions, it is an infringement of copyright for anyone to copy a work without the copyright owner’s permission. For example, scanning a 3D sculpture and converting it into a 2D digital picture may be considered a prohibited reproduction. Creating a 3D replica of the statue from a 2D digital picture may be a prohibited production of the picture.

The growing use of 3D technology will challenge the ability of copyright owners to monitor their rights, especially if the technology is used by individuals privately in the home. The technology also presents new challenges to users who seek to clear the rights to make copies of a multiplicity of objects whose owners may be unknown.

Copyright protection is not absolute. There are limits to the protections granted which enable people to access and copy works, such as in the following cases:

  • Not all objects that can be scanned and printed will be protected by copyright as they do not qualify as original artistic works. Many useful consumer products defined by their functionality – for instance, a toothbrush, a screw, or a mug – are not generally protected by copyright, although the designs on them might be.
  • The rightsholder may lose copyright protection by operation of the “more than 50 rule.” This rule means that where an artistic work is a useful object (e.g. a bottle), or is featured on a useful object (e.g. a drawing applied to a bottle) which is reproduced more than 50 times, the copyright owner no longer has the right to prevent others from copying the work. To complicate matters, there is an exception to this rule, which preserves copyright protection for specific types of works even though they are made more than 50 times. This includes representations of real or fictional beings, places or events, or graphic representations applied to the face of the object (like a picture on a T-shirt). So, if you want to replicate a mug with Garfield the cat on it, creating a 3D-printed copy of the mug would not infringe copyright, but including the image of the drawing without permission would.
  • Copyright lasts only for 50 years from the death of the author, so some works may no longer be subject to copyright protection. Works that are not protected by copyright are considered to be in the “public domain” and can be freely produced, reproduced and used in other ways. Therefore, using a 3D printer to create a duplicate of Rodin’s famous sculpture, The Thinker, would not infringe copyright since Rodin died in 1917 and his works fell into the public domain in 1967.

Another limitation is that some uses of copyrighted works will be lawful if the particular use falls under an exception to copyright infringement, also called users’ rights, contained in the law:

  • Fair dealing allows people to make use of copyright works for the purposes of education, research, criticism, commentary, review, parody, satire and news reporting, so long as the use is “fair.” Fairness is assessed in context, and will take into account many factors, such as the amount of the work that was reproduced, and whether the market for the original work was affected by the use. So, placing a 3D-printed replica of Damien Hirst’s famous statue of a diamond-encrusted skull, For the Love of God, on a full human skeleton, might be fair dealing for the purpose of parody, in some contexts.
  • Subject to certain conditions, it is not an infringement of copyright to reproduce a work for one’s own private purposes. Some conditions are that the work reproduced is not an infringing copy to begin with, the person copying the work obtained it legally, and that the copy is not given away.

Copyright law also protects “moral rights” in works. These safeguard the author’s right to be associated with the work by name, pseudonymously or anonymously, and the right to protect the integrity of an artist’s reputation and work by prohibiting its mutilation or destruction. It is foreseeable that a particular use of a 3D-printed object could be said to infringe an author’s moral rights.

Industrial Designs

The Industrial Design Act grants to owners exclusive rights in original industrial designs that are applied to useful objects. An industrial design refers to the visual aspects of useful objects like shape, configuration, pattern or ornamentation. For example, the shape of an office chair, key or bottle. Protection is granted to the design of the useful object, not the object itself.

Unlike copyright, to benefit from the protection of the Industrial Design Act, the owner must register the design with the Canadian Intellectual Property Office (CIPO). The registration can last up to 10 years, and applies across Canada.

The aim of the law is to protect and reward the value to a creator in making objects visually attractive and unique. Owners of industrial designs can thus prevent the unauthorized imitation, production and distribution, for the purpose of sale, rent, or business, of identical or substantially similar designs, i.e.: which have the same look and feel as a registered design. For example, Kraft Foods has obtained registrations for its distinctive salad dressing containers. Merely creating a bottle for salad dressing with a 3D printer would not be an infringement, but creating a substantially similar bottle for the purpose of sale would be.

There are limitations on the protection the law affords, however, including the following considerations:

  • The law does not protect designs that are dictated solely by the function of the object, for example, the fact that the seat of a chair is flat. 
  • It also does not protect ideas for designs, or designs on objects sold where fewer than 50 sets are made.

As protection is only granted to registered designs, manufacturers of products should consider whether to seek industrial design registration. Users of 3D scanning and printing might want to check whether a design is registered before creating a 3D copy to sell.

Trade-marks

A trade-mark can be a variety of things, including a word, phrase, logo, symbol, design, or shape and packaging that distinguishes the source of goods. It does not protect the merely useful aspects of an object. So, while the distinctive shape of a Coca-Cola bottle is protected by trade-mark, the rings at the top where the cap fastens on the bottle are not.

Rights in trade-marks can derive from the use of a trade-mark by a person in association with goods in a distinct geographic area, or from registration with CIPO. Registration can be renewed an indefinite number of times. There is no requirement in Canada that trade-marks be marked with an “®” or other symbol. So, people should be aware that many logos or designs may be protected trade-marks.

The purpose of trade-marks is to allow consumers to identify and distinguish between the sources of goods. It thus protects the investments that trade-mark owners make in developing and maintaining goodwill and reputation for their goods.

Owners of registered trade-marks have the right to the exclusive use of the trade-mark in Canada in association with the goods and/or services listed in the registration. A trade-mark is infringed when a person who is not entitled to use the trade-mark does so, or sells, rents or distributes goods and services with a trade-mark that is confusingly similar to a trade-mark. So, if one prints 3D bottles resembling vintage Coca-Cola bottles, or a shoe which displays the Nike swoosh, and offers it for sale, this would be a violation of the trade-mark right.

Patents

Another issue to consider is how patent law could impact the use of 3D printing by individuals. A patent allows the owner to exclude others from making, using or selling an invention during the term of the patent. This applies even before the patent is registered; between the time a patent application is published and a patent is granted, the patentee is able to obtain reasonable compensation from others for copying the invention.

Within the scope of 3D printing, there are multiple stages where an infringement of a patent in an invention may occur:

  • There is an infringement when an individual makes, sells or uses in Canada a patented invention without permission. An example of this type of infringement would be to use a 3D printer to create containers with a patented no-drip pouring lip, a protected invention in Canada. The sale or use of these 3D printed items would also be prohibited.

The absence of a commercial purpose to these infringing activities is not an exception to patent infringement. However, patentees may find it very difficult to enforce their rights where the reproduction of patented inventions is being done by individuals for personal use.

Overlapping protection in a single object

IP laws can often apply to the same object concurrently. For example, the unauthorized reproduction of a watch with a design on it may be an infringement of the Trade-marks Act and Copyright Act at the same time. Similarly, while an invention may be protected by patent law, a design applied to its surface could be protected by copyright.

Conclusion

It is often said that law lags technology. Whether Canadian IP laws can accommodate increasing individual and commercial use of 3D printing will likely be tested in the near future.

This is not the first time technology has challenged these laws. The Copyright Act was amended in 2012 after many years of attempted reform, in order to address changes in technology such as the consumption of music and video online and on new devices. During the decades before these reforms, individuals were routinely copying television programs and films being broadcast for later viewing using VCR and then DVR technologies – which would generally be an infringement of copyright. It was impractical for rightsholders to monitor and enforce their rights against individuals for such uses, though. Will rightsholders find themselves in the same situation with respect to personal use of 3D printers?

Overall, it seems likely that 3D technology has the potential to impact any industry that produces material objects, as well as the visual arts. Although it is too early to predict when and how the use of 3D scanning and printing will evolve in Canada, it is safe to predict that the law will need to evolve with it.

Yael Wexler is an associate in Fasken Martineau’s Ottawa office. She practises mainly in the areas of communications and intellectual property law, assisting clients in regulatory and litigation matters before the CRTC, Copyright Board and in the courts.