While three-dimensional printing opens up fabulous potential in many areas, it can allow the commission of acts of infringement of intellectual property rights, i.e. counterfeiting.
It has attracted a great deal of comment from eminent jurists. And a recent report by the Higher Council for Literary and Artistic Property, which advises the Minister of Culture, notes that although "the democratization of 3D printing does not, to date, seem to be generating a massive problem of copyright infringement", the "risk of counterfeiting" does exist. He goes on to specify that counterfeiting, which would be proven, can be sanctioned thanks to existing legal provisions. He advocates the integration of technical protection measures in 3D printers (which would control the number of digital copies and the authenticity of the files, for example), a legal offer of 3D files and the accountability of intermediaries such as platforms for exchanging these files.
If prosecution is possible to date, who could be concerned? The creator of the digital CAD file, the user who uploads a file or a link to obtain it, the host of the file, the publisher of the CAD file site, the designer of the peer-to-peer software, the search engine indexing the link pointing to the CAD file, the user who downloads the file, the user who prints the work, the manufacturer and the seller of the 3D printer?
1. Assuming the file and/or creation is protected by copyright
If an object is eligible for copyright protection, its owner has a monopoly. He has the right to represent or reproduce his work. On the one hand, the digital copy of a file, protected by copyright as such, on a computer is an act of reproduction. On the other hand, 3D digitization involves the reproduction of an initial creation for the creation of a file. In addition, printing is a reproduction. As a result, each of these acts must necessarily be previously and expressly authorized by the rights holder.
Could see their responsibility engaged :
• the creator of the CAD file, including if he uses a 3D scanner, which reproduces a protected object in a context that goes beyond the strict private use of the copyist, without the author's authorization,
• the Internet user uploading or downloading the CAD file (if the source of the copy is illicit) without the author's authorization,
• the provider of a 3D printing service, whether it allows the Internet user to remotely order the printing of a protected object without the author's authorization, or makes material available to a user bringing his CAD file;
the user who makes a 3D printing of a protected object, without the author's authorization; > - the user who makes a 3D printing of a protected object, without the author's authorization
• the author of a hypertext link that would point to an illicit content, if he is aware of the infringement, as an accomplice to infringement, by providing means.
• the debate remains open concerning companies hosting or publishing platforms for downloading counterfeit CAD files. If the host sees its liability reduced, this is not the case for the publisher.
• as for the manufacturer and seller of 3D scanners and printers, they should not be worried; the Court of Cassation now requires a willingness to participate in the infringement in order to retain complicity.
Moreover, the copyright owner ensures that his work is respected, that it is not distorted, altered or deformed. A reproduction, even if authorized, of poor quality due to printing or a change in the format, material or color of the work would distort it and thus infringe his moral rights.
Many products protected by copyright are subject to safety or quality standards, the observance of which cannot, at present, be fully guaranteed by 3D printing. Again, if the security attached to the work is not respected, rights holders may consider that the moral rights have been infringed.
Only the author can choose whether or not to reveal his work to the public. An author who communicates his original CAD file to an online service provider who prints it does not show his willingness to disseminate the work to the public. Also, making the copyrighted file available to third parties (e.g. on a platform) without the author's permission and prior to any first production or publication would infringe on the author's moral right of disclosure.
Any author can demand that his name and quality be mentioned on his work, and thus on a CAD file or on a printed work.
Finally, the Intellectual Property Code punishes the fact of publishing, making available to the public or communicating to the public, knowingly and in any form whatsoever, software obviously intended for the unauthorized making available to the public of protected works or objects.
How to escape this responsibility?
Provided for by article L.122-5, 2° of the Intellectual Property Code, the exception of private copying constitutes an exception to the monopoly of the copyright holder, but only applies if the source of the copy is lawful and if the work has already been communicated to the public. The author cannot prohibit a reproduction of the work reserved for private use "by the copier". The private individual must be able to have a normal, private and limited use of an object protected by copyright, while assuring authors that their right to remuneration is not infringed. However, the copyist who makes the copy must also be the beneficiary of the copy.
This exception will not apply:
• whoever uses an illicit source, an illicitly obtained CAD file, such as a file obtained via a peer-to-peer site, without the author's authorization,
• the one who copies a file on a website accessible to all,
• the one who orders a remote printout from a third party,
• the one who makes available to its clients the material necessary to make copies, such as a fab lab; the text aims to protect the "copyist" alone,
2. Assuming the invention is protected by a patent
Making, offering for sale or marketing an object that incorporates the teachings of the claims of a patent, via 3D printing, is an act of infringement. It is sufficient that the essential elements of the claim are reproduced, that it fulfils the same function for an identical technical result (the change in colour, material or shape can be indifferent). The same applies to a person who supplies (or proposes to supply) the means of implementing a patented invention, if it is obvious that these means are suitable and intended for infringement.
Could see their responsibility engaged :
• Internet users who put online CAD files that have been created to allow the reproduction of a protected object,
• Internet users or companies offering these objects for sale, if they are aware of the counterfeit;
• the subcontractor who manufactures a patented object on the order of a company which has provided him with a model for this purpose, even if the subcontractor limits himself to carrying out the instructions of the order;
• suppliers of materials necessary for 3D printing.
On the other hand, the manufacturer and seller of printers, and the provider making the printer available, should not be concerned on this basis, since the printer is a product that is commonly found on the market, an exception provided for by law. Unless they induce the buyer to commit wrongdoing .
How do we avoid liability?
The rights conferred by the patent do not extend to acts performed in a private context and for non-commercial purposes....
The consumer is allowed to download CAD files and to print the patented objects free of charge. He may therefore scan and print for non-commercial purposes, with a printer used in a private setting, regardless of the lawfulness of the source.
...nor to acts performed on an experimental basis which relate to the subject matter of the patented invention.
The act may be of a professional nature, so that competitors of patentees will be able to print the patented subject matter for experimental purposes. This will allow it to be studied for further development.
3. Assuming the product is protected by a design protection for its appearance
Unauthorized 3-D printing of products protected by a design right constitutes counterfeit manufacture.
How to escape this liability?
Acts performed privately and for non-commercial purposes whether the source is lawful or not, acts performed for experimental purposes, and acts of reproduction for illustration or teaching purposes which mention the registration and the name of the right holder, escape the claim of infringement.
4. How to avoid infringement litigation?
It is recommended for any service provider to ensure that appropriate general terms and conditions of sale are drawn up, limiting or even exonerating from liability. It is recommended that collaborating project leaders who provide printers to their collaborating projects submit access to this material to the commitment and guarantee of the user to print from legal CAD files, which result from their own creation, are free of rights or have been the subject of a rights assignment to their benefit.
It is essential that the holder of copyright on a protected object or file regularizes contracts by which he authorizes or not the 3D digitization of his work, the modification of the CAD file and that he defines the terms of the authorized printing (material, quality, format...) Without this precision, an assignment or a license of copyright would not allow the purchaser of an object to reproduce it by 3D printing.
This analysis is carried out under the currently applicable law. To date, infringement by reproduction by means of three-dimensional printing does not yet appear to have been pleaded before the courts in France. In practice, property rights holders will be faced with a plethora of individuals who commit non-commercial acts of counterfeiting. Fighting counterfeiting by private individuals will undoubtedly be a long-term battle, as evidenced by the litigation concerning the illegal downloading of musical, audiovisual and software works.
Source: Coraline Favrel, lawyer and lecturer in intellectual property, favrel-avocat.com.