10 January, 2016
3D printing refers to the process of making a three-dimensional object from a computer-aided design (“CAD”) program file or scanning of a physical object through a 3D scanner.
The technology in relation to 3D printing has existed for more than 30 years or since the 1980s. However, the use of such technology has only recently become very popular as the key patents relating to 3D printing technology are expiring and more companies can make 3D printers with lesser licensing issues now. The lower 3D printer cost has also made 3D printing technology more affordable to the generalconsumers.
The market for 3D printing is growing by more than 20% each year and its use has been extended to wider sectors such as rapid prototyping in manufacturing, automobiles, firearms, construction, food, dental, and the medical industries. It is expected that the world’s demand for 3D printing will rise to US$5 billion in 2017.
Recent Legal Development
In October 2014, Yoshitomo Imura, a 28-year-old Japanese man, was sentenced to two years’ imprisonment for making 3D-printed guns and sharing the process online. He was the first person jailed for printing 3D guns.
When new technology emerges, people tend to become overwhelmed by it without being mindful of infringements and potential legal liabilities. A well-known example is the sharing of digital music over the internet in the late 1990s. Digital copying of music for sharing involves infringement of copyrights and Napster, once a popular audio file sharing platform, had to be shut down initially because its usage involved serious infringements of intellectual property rights and it was a serious threat to the established recording industry. In 2007, Chan Nai Ming was put in jail for distribution of infringing copies of movie files in the famous Hong Kong BitTorrent Case HKSAR v Chan Nai Ming (FACV No. 3 of 2007).
There are a number of potential legal issues involved in 3D printing.
Copyright is the right given to the owner of an original work which arises automatically when the work is created. In Hong Kong, the Copyright Ordinance (Cap. 528) protects copyright works.
In the context of 3D printing, copyright may be contained in the 3D physical objects to be scanned as well as the 3D printed objects, whichmay be considered original artistic works. The CAD software program file and the source code might be regarded as original literary works as well.
Even if the software is open-source, if an object is scanned without permission or the CAD files contain restrictive licence, duplication of the object by printing it in the 3D printer might constitute copyright infringement.
A patent protects an invention by giving legal rights to its owner to prevent others from manufacturing, using, selling or importing the products, substances or processes of the patented invention. Application for and later registration of a grant of patent is required in order to enjoy the protection under the Patents Ordinance (Cap. 514). Having a registered patent elsewhere in the world does not automatically provide patent protection in Hong Kong, as it may need to be separately registered here for patent protection.
In the context of 3D printing, if a physical object is a patented article, making a 3D replica of that article or using that article without the permission of the patent owner may constitute patent infringement.
A trademark is a sign that distinguishes the goods and services of one trader from those of others. It can be words, logos, colours, sounds, smells, the shape of the goods or their packaging, 3-dimensional marks or any combination of these. Registration in each jurisdiction is generally required for the trademark to be protected under the trademark law of that jurisdiction.
If a physical object or shape of a good has been registered as a 3-dimensional shape mark, then making a 3D replica of that mark and using it in trade as if it is the registered mark would constitute trademark infringement.
In Hong Kong, registered designs protect the appearance, such as shape, configuration, pattern or ornament of the products. Registered design owners have the right to prevent others from manufacturing, importing, using, selling or hiring the design product. Registration is required for the design to be protected by the Registered Designs Ordinance (Cap. 522).
Therefore, if a person produces 3D-printed version of a registered design product and sells it to the public, that person may be liable for infringement of a registered design.
The widespread use of 3D printing has raised other issues including product liability issue. For example, a person has been licensed to make a 3D-printed home-made helmet but later sustains injury due to a defect in the printing. Is the printer manufacturer or brand owner of the helmet liable for the loss or damage arising from the injury ? There are other ethical issues e.g. would it be ethical to print 3D human tissues and organs and test them in human patient, or to replace the existing human transplant ? Further, home-printed 3D gun mentioned above has raised issue of public safety.
With increasing availability and wider use of 3D printers, more legal issues should emerge from the use of the technology at both the commercial and consumer levels and it would be interesting to see how the law in this area develops.
If you have any queries regarding the above eNews or any other questions relating to the registration, enforcement or protection of copyrights, trademarks, designs or other information technology, experienced lawyers in our Intellectual Property department will be pleased to assist you.
Angela Wang, Partner, Angela Wang & Co