Posted By: Joseph Citelli
As new and more advanced technologies continue to develop, the laws of the nation struggle to catch up, and the boundaries of legal protections for intellectual property are strained. With few exceptions, the law historically fails to anticipate problems posed by modern technologies, often addressing problems long after they occur when the technology in question may have already become obsolete.
One such technology that will undoubtedly cause problems for intellectual property owners is the development of 3D printers. Manufacturers describe the process by stating that “3D printing is a technology which makes it possible to build real objects from virtual 3D objects. This is done by ‘cutting’ the virtual object in 2D slices and printing the real object slice by slice.” While the thickness of the “slices” can vary, the process involves stacking each slice on top of another until the copy has the same size and shape of the original.
In this manner, 3D printer users can create exact copies of many real world items. While the printers’ abilities have already begun to make headlines, it is the versatility of these machines which makes them inherently dangerous to intellectual property owners. Infringement of protected materials can be accomplished easily, efficiently, and most importantly, without the knowledge of the intellectual property owner. It is clear that the very nature of these printers will lead to substantial concerns from copyright and patent holders alike. However, it is unlikely they can prevent either the widespread disbursement or the use of these printers.
Secondary Liability Standards
Existing legal doctrines are likely to insulate all but the most careless manufacturers from potential liability. The majority of intellectual property litigation involving 3D printers will likely target manufacturers rather than individuals. This is because “[w]hen a widely shared product is used to commit infringement, it may be impossible to enforce rights in the protected work effectively against all direct infringers.” See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 914 (2005). Lawsuits will likely seek to hold manufacturers responsible for secondary liability under a theory of contributory or vicarious infringement. “One infringes contributorily by intentionally inducing or encouraging direct infringement, and infringes vicariously by profiting from direct infringement while declining to exercise the right to stop or limit it.” Id.
The Supreme Court recognizes two categories of contributory liability: “[l]iability under our jurisprudence may be predicated on actively encouraging (or inducing) infringement through specific acts … or on distributing a product distributees use to infringe copyrights, if the product is not capable of ‘substantial’ or ‘commercially significant’ noninfringing uses.” Id. at 942. It is important to recognize that even one potential noninfringing-use can negate contributory liability; “[T]he sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial noninfringing uses.” See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984).
Thus, a threshold question for secondary liability litigation is whether 3D printers are capable of commercially significant noninfringing uses. Moreover, in contributory liability lawsuits, “[C]ontribution to infringement must be intentional for liability to arise.” See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1170 (9th Cir. 2007). Furthermore, under the Perfect 10 standard, an “[A]ctor may be contributorily liable for intentionally encouraging direct infringement if the actor knowingly takes steps that are substantially certain to result in such direct infringement.” Id. at 1171. Therefore, a plaintiff would be forced to demonstrate manufacturers’ took affirmative steps to encourage or induce direct infringement by customers.
To prevail under a theory of vicarious liability, “[A] plaintiff must establish that the defendant exercises the requisite control over the direct infringer and that the defendant derives a direct financial benefit from the direct infringement.” To fulfill the “control” element, a plaintiff must show the defendant had a legal obligation to stop or limit direct infringement, as well as the ability to prevent it. See Grokster, 545 U.S. at 930. (emphasis added).
Contributory Liability for Manufacturers
It is extremely unlikely that a manufacturer will be found contributorily liable for selling the 3D printers. Even if a plaintiff is able to prove the manufacturers possessed reasonable knowledge that their product would be used to infringe copyrighted or patented material, “if the product is capable of substantial non-infringing use,” courts are unlikely to find contributory liability. See Perfect 10, Inc., 508 F.3d at 1170. Under the Sony standard, the mere potential for a device to engage in non-infringing uses will be sufficient to avoid finding contributory liability. See Sony, 464 U.S. at 417. Because this is a relatively low standard and thus one that manufacturers of 3D printers will easily satisfy, manufacturers are relatively safe from the majority of potential lawsuits.
This relative safety is not absolute however, as careless manufacturers who advertise their printers in a manner that could be considered to induce or encourage infringement are still susceptible to secondary liability. When a distributor takes affirmative steps to foster infringement through the use of its product, the distributor will be liable for that infringement. However, given the current state of the law, it is unlikely that manufacturers will advertise their printers in such a way. Advertisements for 3D printers reflect manufacturers’ confidence in their insulation from liability, and at least one manufacturer has gone as far as advertising the printer as “[o]ne tool to replace them all.” However, even a statement as bold as this is unlikely to rise to the level of inducing infringement.
Vicarious Liability for Manufacturer
It is equally unlikely that manufacturers will be found vicariously liable. “[T]o succeed in imposing vicarious liability, a plaintiff must establish that the defendant exercises the requisite control over the direct infringer and that the defendant derives a direct financial benefit from the direct infringement.” See Perfect 10, Inc., at 1173. Manufacturers do not possess control over the printers once the printers are purchased by consumers, and there is no feasible way for manufacturers to monitor individuals’ uses. Moreover, it is uncertain how, or even if, manufacturers would receive a “direct financial benefit” from such direct infringement by individual users.
In conclusion, because 3D printers are capable of substantial non-infringing uses and are not advertised as infringement-inducing devices, it is unlikely manufacturers will have much to worry about in terms of secondary liability. Manufacturers simply lack the ability to control individual infringement on a large-scale basis, and the machines were developed to provide many non-infringing uses. However, this does not mean that individuals are insulated from liability by using the printers. Yet unfortunately for copyright and patent holders, because it is virtually impossible to detect individual instances of infringement that will likely occur in the seclusion of one’s home, the majority of infringing issues posed by 3D printers are likely to go unnoticed and thus unpunished.