Articles and Information

Originally published in Managing Intellectual Property

The objective of this article is to analyze the legal implications of 3D Printing in Brazil, more precisely, whether the Brazilian legislation currently in force adequately protects owners of Intellectual Property rights from infringement through 3D Printing.

Therefore, this article will not analyze the history and evolution of the 3D Printing technology, which were better studied and analyzed in other papers and articles[1].

However, just to contextualize, 3D Printing in Brazil is becoming more and more popular. Besides, 3D printers can be built using the projects and guidelines available in the Internet and sometimes, curiously, using pieces and parts produced by 3D printers themselves. Branded or ready to use 3D printers for home applications are nowadays easily found in the Brazilian market and can be bought online. A CUBE X TRIO 3D printer, for example, is offered for sale in Brazil for approximately USD 5,000.00 and although it is not a professional model, it is capable to print three colors items as big as a basketball.

The source of the controversy

Many authors have indicated that 3D Printing means, for tangible goods, the same that digital technology meant to intangible assets, such as music, movies and books, and the industry of consumer goods will have to reinvent itself in order to face this new challenge. Some authors see 3D Printing as a new industrial revolution. 3D Printing certainly opens a new range of possibilities for the industry and, as many other inventions – and almost everything man creates – it is twofold, having good and bad sides.

Becoming more and more popular, 3D Printing will pose new challenges for the industry. But looking at this technology in the Brazilian scenario, the day on which it will be so popular and accessible that people will use it to produce goods at their end instead of buying products available on the shelves, is still not in the horizon. As 3D Printing popularizes and its new uses for the industry unfold, the Intellectual Property (IP) community gains some time to analyze whether or not Brazil’s laws are capable to protect IP rights within this new environment. But experience in other technology fields shows that this window will not last forever.

The lessons taken from the “digital revolution” evidence that popularity speeds up the process of making the technology more accessible. More accessibility on its turn makes the technology more popular and all this process incrementally speeds up, until a certain momentum is gained and kept. This is especially true in relation to 3D Printing technology, which started as an “open” technology and receives contributions from almost everywhere and massively from social networking.

After that momentum is gained, normally laws have been left behind, became obsolete and look like a dog running after its own tail. Most of the time, laws become obsolete not because they do not provide remedies for the infringements that are taking place, but because such remedies cannot be implemented as fast as it is needed and that they lose effectiveness, since issues such as jurisdiction, venue, evidence of the infringement, cannot be easily or satisfactorily determined.

There is an unwritten golden rule that a law which cannot be enforced will not be respected. As a consequence, development of the technology continues merely ignoring the law, and only very randomly a legal remedy is successfully enforced against an infringer. But this success, instead of motivating developers to avoid further infringing IP rights, encourage them to look for means of infringing such rights in different manners and platforms. They do not stop infringing, they simply use a different modus operandi against which the legal remedies can hardly be effective.

At this point, two groups stand up for their positions. A group will defend the technology and its free use, no matter what. For this group, infringement of IP rights is necessary for the technology to develop, popularize and benefit the community as a whole. They will advocate their “right to infringe” based on arguments such as freedom of speech and the heritage of human knowledge. The other group will advocate that IP laws are obsolete and need to be reformulated. They will rally for new legal provisions that reinforce IP rights penalize infringements with more penalties and stronger fines. They will eventually claim for legal remedies that will barely respect legal principles of due process of law and rules of evidence. Needless to say that none of these groups are totally right or wrong.

Brazil is not different and every time a new technology challenging IP rights arises, the same discussion starts over again. Normally, the IP rights owners group would claim that IP laws are obsolete and need to be reissued, with stronger penalties and higher fines. This advocacy does not properly consider significant aspects of the discussion, such as: (i) changing laws is a very time consuming process, especially in Brazil; (ii) new redaction of law provisions may be not as accurate as necessary, creating room for inconsistent rulings; (iii) every time a law changes its court interpretation and precedents are lost; and (iv) more penalties and higher fines do not necessarily imply in better law enforcement, mainly because obstacles to enforcement would remain unaddressed.

In Brazil, the tendency is to jump to a conclusion that the current laws are obsolete and a brand new legislation is required. This is not different in relation to 3D Printing and a group strongly advocates that Brazil’s current legal frame is not capable to tackle infringement of IP rights by means of usage of 3D Printing. Is that true? Let us check it out.

3D Printing infringement situations

Use of 3D Printing may occasionally result in infringement of the following IP rights: (i) patents; (ii) industrial designs; (iii) trademarks; (iv) copyright; (v) software; (vi) integrated circuit topography; and (vi) trade dress. Brazil is a member country[2] to the Paris Convention for the Protection of Industrial Property, Berne Convention and Trade related Intellectual Property Aspects (WTO Agreement). Protection of IP rights is safeguarded in the Brazilian Constitution[3]. Besides, Brazil has in place its Industrial Property Law[4], which govern protection of patents, industrial design, trademarks and repression of unfair competition; a Copyright Law[5], which protects work of arts and follows the French system of author’s rights; a Software Law[6], which protects source codes of software; and a law providing protection for Integrated Circuit Topography[7]. This article will not deal with copyright and software infringement through 3D Printing.

In Brazil, Patents are granted after substantial examination. A 3D printed object that reproduces without authorization of patent owner a patented invention or utility model will be considered an infringement. Brazilian Patent law establishes the circumstances under which an infringing act is considered a tort and/or a crime. Torts are defined as the acts of producing, using, offering for sale, selling, importing and contributing for said acts, a patented object without authorization of the patent owner. Crimes are defined as manufacturing without authorization a patented product and exporting, offering for sale, selling, stocking, hiding and receiving an infringing product with economical purposes; as well as supplying material or equipment to be used to infringe a patent. According to the law, some of the acts defined as torts are excusable due to fair use. Acts defined as crimes against a patent are not excusable under fair use provisions. In any event, in order to be excusable the act of reproducing a patented object requires that it has no commercial purposes and does not damage the patent owner’s economic rights over the patent.

It must be noticed that the law differentiates the act of producing (tort) from the act of manufacturing (crime). Therefore, it is worth asking whether using a 3D printer to print a patented object will be considered “producing” or “manufacturing” said object? According to the rationale of the Patent Law[8], manufacturing would require production at an industrial level, considering the number of manufactured pieces and the continuity of the process. Production would refer to a limited number of produced pieces and occasional production. The importance of this differentiation – besides the fact that it qualifies either as a tort or as a crime – lacks relevance when the object is 3D printed to be sold, because reproducing a patented object with economic intention is defined as patent infringement by Brazil’s Patent Law.

It is also worth mentioning that supplying of CAD ou 3DPDF files to be used to 3D print patented objects can be considered contribution to patent infringement and as such, both a tort and a crime[9].

Industrial design registrations are granted in Brazil without substantial examination, which can be requested after the registration is granted and at the owner’s own discretion. This fact does not negatively affects the right, but courts tend to avoid granting ex parte injunctions (to compel third parties to discontinue an alleged infringement) based on industrial design registrations due to the lack of this previous substantial examination (when there was none).

Notwithstanding that, the same rules that apply to patent infringement are also applicable to infringement of industrial design registrations and define which acts are considered torts and those that are considered crimes. The acts are the same, but to the definition of crime the law added that in order to be considered an infringement the copied product must either reproduce an object protected by industrial design registration or substantially imitate it and is capable to mislead the public. This similarity clause is not contemplated in the provisions that define the corresponding torts (it is only among those that define crimes) and the law appears to be inconsistent in relation to this issue.

Contribution to infringement of industrial design registrations is not considered a crime, but only a tort and fair use is an excuse solely for those acts qualified as torts. There are no fair use exception for the acts defined as crimes. Again, use is only excusable under fair use clause when it has no commercial intent and the act does not damage the economic rights of the owner of the industrial design registration. The verbs “to produce” and “to manufacture” are also used to differentiate torts and crimes in relation to industrial design registrations, but their definitions are still omitted.

Trademark registrations are granted after substantial examination and trademark rights encompass the right to use the mark with exclusivity in relation to the goods and/or services covered by registration (exception made for well-known marks) and the right to protect the integrity and reputation of the mark. Brazilian Trademark Law does not have provisions that qualify trademark infringement as a tort, but only the circumstances under which certain acts are considered crimes, and they are: to reproduce or to imitate a registered mark in a manner capable to mislead consumer and the public; modify the registered mark; to import, to export, to sell, to offer for sale, to hide or to have in stock a product that reproduces or imitates a registered mark. The fair use excuses provided for in the Trademark Law do not appear to be applicable to a case of reproduction of a registered mark by 3D printing, except for the legal authorization for third parties to use registered marks to indicate compatible accessories and components for the original product.

Again, use in commerce (and in relation to competing or similar goods and services) is required to characterize the infringement. Therefore, if one reproduces a branded product using 3D printing for his/her own use – and not to sell or to offer for sale – there will be no infringement. But what if said product is 3D printed in significant quantity and freely distributed to potential consumers of the original product? There is no “commercial” intent, but the economic rights of the trademark owner are apparently damaged. Can the trademark owner claim that such use is diluting the mark and stop the printing of 3D copies? This question is still to be answered by judgment of real court cases.

Topography of integrated circuit is also protected by means of registration in Brazil. The protection granted by registration prohibits unauthorized third parties to reproduce the topography by any means and to import, to sell and to distribute (for commercial purposes) the reproduced topography, an integrated circuit with the reproduced topography or a product that contains an integrated circuit with the reproduced topography. The law does not differentiate torts and crimes and the infringement acts may qualify as either one. Reproduction of the topography for study purposes only is not considered an infringement and this could be the only legal exception applicable to reproduction of integrated circuit topography through 3D printing.

Trade dress is not registrable[10] in Brazil and protection is granted at court level as part of the doctrine of repression of unfair competition. Rights over a trade dress accrue from continuous and pacific use of the trade dress in commerce. To reproduce and use in commerce an identical or confusingly similar trade dress which deviates clientele of the original product[11] is an infringement and qualifies as a crime. There is no exception for fair use in the law, but if use has no commercial intent, it will not be considered and infringement. However, it is worth asking what if reproduction of the trade dress by third parties through 3D printing does dilute its distinctiveness? Still to be answered.

Conclusion

Brazil’s IP laws relating to patents, industrial design registrations, trademarks, integrated circuit topographies and trade dresses, appear to be adequate to protect not only the rights of IP owners, but also to protect the free dissemination of the 3D Printing technology and the home users of 3D Printing.

However, in order to guarantee this threefold protection – IP rights, free dissemination of 3D Printing and domestic users of 3D Printing – interpretation of the existing legal provisions will have to determine the differentiation between to produce and to manufacture; will have to define objective parameters to establish the legal level for damages to the economic rights of the patent owner which will or will not qualify an unauthorized act of reproduction of a protected object as an infringement act; as well as to establish the conditions for private use, for lack of commercial intent and for the absence of damage to acquisition of trademark or trade dress distinctiveness.

The above objectives will certainly be accomplished if the laws are not changed and real cases are brought to the courts. In the long run, maintaining the laws and adapting their interpretation will prove to be more efficient than simply changing the laws and starting from the scratch. Technology will not await for the legal changes to be introduced and if the laws are unable to be efficiently applied and enforced, they will be simply ignored.
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[1] “Patents, meet Napster: 3D printing and digitization of things” – Deven R. Desai and Gerard N. Magliocca; “The Intellectual Property implications of low-cost 3D printing” – Simon Bradshaw, Adrian Bowyer and Patrick Haufe; “It will be awesome if they don’t screw it up: 3D printing, Intellectual Property, and the fight over the next great disruptive technology” – Michael Weinberg; “What’s the deal with copyright and 3D printing?” – Michael Weinberg; and “The shape of thing to come” – World Intellectual Property Review, May/June 2013 (p. 14/18)

[2] The list is limited to the International treaties that are relevant for this article.

[3] Brazil’s Federal Constitution of 1988, Article 5, Items XXVI, XXVIII and XXIX.

[4] Law no. 9,279 of May 14, 1996 (herein below referred to as Patent Law and/or Trademark Law.

[5] Law no. 9,610 of February 19, 1998.

[6] Law no. 9,609 of February 19, 1988.

[7] Law no. 11,484 of May 31, 2007.

[8] Where it refers to industrial applicability as a patentability requirement.

[9] If not an infringement of the right in the software.

[10] This does not mean that some elements of the trade dress may be registered as marks, industrial designs etc. as the case may be.

[11] The hypothesis here excludes reproduction of a trade dress of a business because this cannot be 3D printed.