3D printing and intellectual property – legal approach to technical revolution
Italy Studio IP Law Galli, Milan Brescia Parma Verona
IP lawyers are facing problems and opportunities linked to the increasing popularity of three dimensional (3D) printing technology in Italy, especially its key features of being able to be implemented at a low cost and through simple means. These two features lend this new technology to being diffused widely, potentially also for private customers. Diffusion among private clients has already started. In this respect, 3D printing has many points of contact with the infinite possibilities of virtual reproduction of original works offered by new digital technologies and, in particular, the Internet. To some extent, 3D printing coincides with the Internet. The combination of these technologies – 3D printing, digitisation and the Internet – creates a potentially explosive mixture, as the use of 3D printers permits the large-scale circulation of files that contain information suitable for the reproduction of a wide range of objects. This innovation is another step forward for information society, but inevitably also creates new opportunities for conflict with rights holders.
In contrast to patent protection, the fact that 3D printing is used for domestic production, which is outside the market may acquire legal relevance. According to Article 68 of the Code of Industrial Property “acts done privately and for non – commercial purposes” are expressly excluded from the scope of patent protection. This article does not provide for any type of distinction and therefore does not provide even for the general restriction that instead is required for the exceptions and limitations to copyright law. According to Article 5(5) of the EU Copyright Directive (2001/29/EC), the latter will be “applied only in certain special cases which do not conflict with a normal exploitation of the subject matter and do not unreasonably prejudice the legitimate interests of the right holder” acknowledging the so-called three-step test codified by Article 13 of the Agreement on Trade-Related Aspects of Intellectual Property Rights and Article 9.2 of the Berne Convention.
However, it has been argued that the interpretation of this exception in patent matters should be made consistent with this test, considering the principle of equality as envisaged under Article 3 of the Constitution, which requires that two equivalent situations must be treated similarly. A corresponding restrictive interpretation has already been given to the so-called ‘Galenic exception’, which considers the protection of the patent unenforceable to the “extemporaneous preparation, for unit, of medicinal products prepared within the chemistries on prescription, and (to) the medicine prepared with the same process”. The scope of this exception, also covered by Article 68 of the Code of Industrial Property, is limited to a situation in which “active ingredients industrially manufactured are not used”. This could mean that the patent implementation in a private and non-commercial area – through 3D printers – can be considered lawful only if the projects and files produced are not used in domestic counterfeiting of patented products.
The supply of the means used to infringe patented products – in particular, the supply of files or projects realised by third parties in order to allow the reproduction of patented products – should be considered unlawful. According to Italian case law this conduct – known also as contributory infringement – is unlawful when the party that provides those means is aware of the fact that they will be used in order to commit an IP infringement or when it knows that those means are objectively andunequivocally dedicated to patent implementation.(1) This rule is contained in Article 26 of the Agreement on the Establishment of a Unified Patent Court, but in Italy it was already achieved by interpreting the provision which submit not only the infringing products to corrective measures, but also the “specific means which are unequivocally dedicated to produce them or to implement the method or the protected process”.(2)
Italian case law has identified a case of contributory infringement of a patent in relation to a two dimensional printer in the “production and marketing of printer toners that appear to present unique function because they could be used only by the printer claimed”.(3) This is of particular interest in relation to 3D printers because one of their most common applications is the production of replacement parts, especially of small dimensions, for existing products. The so-called repair clause under Article 241 of the Code of Industrial Property, according to which “the exclusive rights on the components of a complex product cannot be invoked to prevent the manufacture and the sale of the components necessary to repair the complex product itself, in order to restore its original appearance”, must be excluded.
This rule derives from Article 14 of the EU Designs Directive (98/71/EC) and can be applied only to those exclusive rights which arise from a design registration. So the rule does not constitute a limit on the possibility of enforcing those exclusive rights which arise from other titles, especially from patents and trademarks.
Article 241 of the Code of Industrial Property places considerable importance on 3D printing in the field of design. Nevertheless, that provision can be applied only when, on the basis of specific circumstances, the replacement components are not used to restore the overall aesthetic appearance of the original goods. It cannot apply instead when the components are used to build products which are copies of the originals or to reassemble original components. Since the party that invokes the repair clause has the burden to prove that the replacement components are used for the reparation of the original goods, the repair clause cannot be invoked by the party that has provided the replacement components (or the files or projects built using a 3D printer) without specifying within the contract that the use of those parts was limited to the sole purpose of repairing original products.
Therefore, the repair clause cannot be invoked to justify the creation of:
accessories by a 3D printer, namely all the variable elements of an item’s exterior appearance,which are not imposed by the manufacturer, but are susceptible to the consumer’s choice at the moment of purchase; or
so-called ‘consumable’ elements, namely the elements of products that are replaced not only in the event of breakage, but also periodically, unless, according to specific circumstances, there is a real need to restore the original appearance of the product itself.
Article 241 of the Code of Industrial Property imposes no limit on the enforceability of trademark rights (registered and unregistered) so the same provision cannot be invoked to support the legitimacy of using 3D printers to produce replacement components of the original products that include the brand of the manufacturer. Even if the replacement element is sold with a disclaimer that indicates that the piece is unoriginal, affixing the trademark constitutes a parasitic exploitation of the reputation of the company that owns the brand and its products and should therefore be considered illegal under Article 9(1)(A) and (1)(C) of the EU Community Trademark Regulation (207/2009) as it is usually interpreted by Italian case law, which is quite favourable to trademark owners.
Contributory infringement can be qualified as illegal for brands, models and designs on the same assumptions applied to patent infringement. Any party that provides files or projects that permit theinfringement of the rights of a product whose shape is protected as a model or trademark or that allows the reproduction of a brand through the use of a 3D printer will be liable. The existence of contributory infringement in relation to IP rights other than patents must be regarded as undisputed in Italy.(4)
The same conclusion must be reached in reference to the use of 3D printers to create 3D objects protected by copyright. This include works of visual art (eg, as sculptures, engravings and other forms of art in three dimensions) and works of industrial design that, in accordance with national legislation, have artistic value in addition to creative value, as required by Article 2(10) of the Copyright Law.
The law allows no exceptions to the exclusive right of reproduction of the author (or his or her successor), even for private and non-commercial activities. This is due to the fact that the rules governing private copies concern the sole reproduction of recorded sounds and video and a back-up copy is provided only for computer programs, so this copy can be made only for the original file which is used for printing when it is independently protectable as software.
3D printers cannot be compared, at least at this stage, to video recorders or copying machines. This is because 3D printers need a printing project that will be expressed in a software language – from computer-aided design to the stereolithography files of 3D printers – in order to work (ie, to manufacture any type of object). Possessing the object to be copied is not enough to proceed with its 3D reproduction through 3D printing. Instead, software for the printing project must be obtained. A private party usually cannot obtain this software unless they have expert technical knowledge, which is not widespread.
If software that encodes a single type of product to be built by a 3D printer constitutes a creative work protected by copyright law in itself, this software cannot be reproduced without the permission of its author. Nevertheless, this is unlikely even considering the low level of creativity required for software protection.(5) The creation of this software in a computer language is usually done automatically by a software interface (eg, graphics programs and/or 3D drawing) which, through the input of the author,creates the file without a single line of code needing to be filled in. This process is similar to the one that leads to the creation of a text file which is automatically created by typing on a computer keyboard using word processing software.
Although the software considered per se is devoid of creative character, the project in itself could be protected against counterfeiting and against its offer for sale to the public, as well as against unauthorised copies being made of it. However, it cannot be protected against the development of an autonomous project needed to create an identical product, except in cases in which there are other exclusive rights on the work which has been reproduced. According to Article 99 of the Copyright Law, only when the project “represents a genuine solution to technical problems” can the right on “projects of engineering jobs or on other similar jobs” be invoked by the original author of the product’s projector his or her assignees. In this specific situation the holder also has the “right to fair compensation, that must be paid by those who created the project for profit, without his consent”. However, this right arises only when the author has issued a statement of reserves and filed the project at the Ministry of Heritage and Cultural Activities. This right lasts 20 years from the filing date.
The rules of fair competition must be respected, even when no other right of intellectual or industrial property can be invoked, but the use of a 3D printer is set up by a competitor of the original product’s author. According to Italian law, the rules governing unfair competition can be applied only between competing entrepreneurs. Nevertheless, a competitive relation is recognised even between entrepreneurs that operate at different levels. Therefore, the rules on unfair competition can also be applied to those who provide professional services to final users through the use of 3D printing or to those who give the files for printing projects to private users or create those files for private users on commission.
In particular, Italian case law considers the misappropriation of the works of others or the parasitic exploitation of the efforts of others as acts of unfair competition. The former regards slavish imitation considered in itself, when the production of a product starts from a sample of the original and allows an “economy of time, work, studying and spending”.(6) The latter is made by “copying of a wide range of goods which is not likely to cause confusion but allows others to misappropriate the investment that others have made in order to place on the market goods which have an originality and a stylistic coherence”.(7)
The relevance of these acts from a competitive point of view (and thus their qualification as acts of unfair competition) pre-supposes that they are carried out by an entrepreneur and therefore cannot be applied to 3D reproductions made by a private party for self-production purposes. Nevertheless, unfair competition accusations could be made against the party that provides directly designed components to create 3D reproductions, in particular files or projects that permit 3D printing and those parties that take an illicit advantage from these files or projects, for instance through advertising banners inserted on a web site from which it is possible to download the files.
(1) See Supreme Court of Cassation, November 1 1994, 9410, which confirmed the decision of the Milan Court of Appeal, July 15 1992.
(2) Article 124(4) of the Code of Industrial Property.
(3) Turin Court of First Instance, May 6 2004.
(4) See in particular the Supreme Court of Cassation, December 23 2009, 1055 regarding a wellknown
case of illegal downloading of works protected by copyright using a peer-to-peer system.
(5) Court of Cassation, January 12 2007, 581.
(6) See Supreme Court of Cassation, December 2 1993, 11953.
(7) See Court of Milan, July 10 2006; Court of Milan, January 29 2009; Court of Milan, May 12 2010;
Court of Milan, July 2 2012; Court of Milan, November 8 2012; and Court of Milan, May 27 2013.