CONSIDERATIONS REGARDING THE PRIVATE AND NON-COMMERCIAL USE OF DOMESTIC 3D PRINTING AND ITS RELATIONSHIP WITH INDUSTRIAL DESIGN REGISTRATION
3D printing – also called additive manufacturing – is a highly widespread technology in modern design and plays a highly relevant role in solving complex problems in industries of varying scales, such as aerospace, healthcare, and electric vehicles.
Although the initial equipment had a high cost, currently, 3D printing is more popular due to greater economic accessibility and knowledge about the technology. In this way, as technology continues to evolve and its entry into the domestic environment extends domestic 3D printing may face certain issues involving Intellectual Property and Industrial Property rights, such as industrial design registration, established by the Industrial Property Law, Law No. 9,279, of May 14, 1996 (hereinafter Brazilian IP Law).
In this sense, Art. 187 of the Brazilian IP Law only describes the incriminated practice of unauthorized manufacturing of a product that incorporates a registered industrial design or substantial imitation of a registered industrial design that may lead to error or confusion. The two items of Art. 188 deal with acts of commercial exploitation of an object that illicitly incorporates a registered industrial design or substantial imitation that may lead to error or confusion.
In addition, based on the sole paragraph of Art. 109, where applicable, the provisions of Art. 42 and items I, II, and IV of Art. 43, the latter dealing with exceptions to the rights conferred by the titleholder, are applied to the industrial design registration. Therefore, the protection of the industrial design registration does not apply to acts performed by unauthorized third parties, on a private basis, and with no commercial purpose, provided that they do not cause damage to the economic interest of the registration holder; and acts performed by unauthorized third parties, with experimental purposes, related to scientific or technological studies or research, pursuant to items I and II of art. 43, respectively.
Complementarily, Art. 26.1 of TRIPS provides that: “The owner of a protected industrial design shall have the right to prevent third parties, without his authorization, from making, selling or importing Articles bearing or incorporating a design that constitutes a copy, or is substantially a copy, of the protected design when these acts are carried out for commercial purposes.”.
In general, based on the provisions of Art. 43 of the Brazilian IP Law, it is understood that the right conferred by the industrial design registration could not be exercised against certain uses, such as private use and non-commercial and experimental purposes, related to scientific or technological studies or research, respectively, as per items I and II of the said article.
Within the scope of 3D printing, the present discussion covers domestic 3D printing in the context of the limitation of private and non-commercial use, established in Art. 43 (I) of the Brazilian IP Law.
It is perceived that domestic 3D printing may fall under the exception of private and non-commercial use, as in an example case, where a toy printed on a 3D printer, which is used privately and non-commercially by an unauthorized third party, would not constitute a crime against an industrial design registration of such a toy.
However, with the future massive growth of domestic 3D printing use, the question arises whether such an exception of non-infringement of industrial design rights by private non-commercial use can be understood as a threat to industrial design registration holders, to the extent that the increased circulation of the protected property would inevitably result in a reduction in the volume of sales, for example, which would go against the exception of Art. 43 (I), resulting in damage to the economic interest of the industrial design registration holder.
At this point, it is worth mentioning that the commercial purpose indicated in item I of Article 43 does not denote any reference to the number of products. In addition, the limitation referring to the use that does not result in damage to the holder’s economic interest does not attribute any quantification or qualification to the possible damage. Therefore, it can be inferred that any damage caused to the holder’s interest would exclude acts performed by an unauthorized third party with the exception of item I of Article 43, configuring an infraction of the industrial design registration.
In the same context, the “economic interest” of Art. 43, one can apply what Art. 30 of TRIPS says “does not unreasonably conflict with its normal exploitation” with “does not unreasonably prejudice the legitimate interests of its owner”. That said, it can be understood that even when it marginally affects the economic interest, the private, non-economic act of domestic 3D printing can be allowed.
In the process involving the act of domestic 3D printing are also included other items that require special attention with regard to the protection conferred to the registration of the industrial design, which is the CAD and STL files.
With reference to the CAD file, this is generated through modeling software, which allows the design of objects or structures, for instance. The STL file is the file ready to be used for 3D printing, which is converted from the original CAD file and does not allow significant modifications to the object contained in the original CAD file. Both STL and CAD files can be purchased on various e-commerce platforms for 3D printing resources.
Some situations involving the circulation of files for 3D printing of an object protected by industrial design registration can be foreseen in the scope of domestic 3D printing, such as an unauthorized third party trades such files on a public 3D printing resources platform; and a third party purchase the said file and only prints the 3D object for private and non-commercial use. In the first situation, the unauthorized third party is making a such file available for purchase, therefore, it can be understood that private use would not be characterized, which could characterize infringement of the industrial design registration. In the second case, in principle, it would not be infringing the right of the holder of such registration, but since the holder’s rights have not been exhausted, this third party could not resell this object and/or file.
It is evident that these and other situations can also be addressed by the Copyright Brazilian Law (Law No. 9,610 of February 19, 1998) and the Computer Program Law (Law No. 9,609/98 of February 19, 1998). Furthermore, as it is well known, computer programs are constant targets of piracy, and the same may apply to files of this kind, which may give rise to anti-piracy actions.
Moreover, it is also possible to envisage the offer by an authorized person of a file for domestic 3D printing of a replacement/maintenance part of an artifact, in which such part is protected by industrial design registration. In this case, the quality of the final 3D printed object may not match the one initially offered by the owner, who has no control over it, which may cause losses to the user, as well as motivate actions in this regard.
There is no doubt that the subject in question opens a range of discussions and analyses, which permeate not only the rights of industrial design registration but also patents and copyrights.
References:
BARBOSA, Pedro M. Nunes. BARBOSA, Denis Borges. O código da propriedade industrial conforme os tribunais: comentado com precedentes judiciais: volume 1: patentes. Rio de Janeiro: Lumen Juris, 2017.
IDS-Instituto Dannemann Siemsen de Estudos de Propriedade Intelectual. COMENTÁRIOS À LEI DA PROPRIEDADE INDUSTRIAL. Edição Revista e Atualizada. Renovar: 2015.
European Commission, Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs, Mendis, D., Bernd Nordemann, J., Ballardini, R., et al., The Intellectual Property implications of the development of industrial 3D printing, Publications Office, 2020, https://data.europa.eu/doi/10.2873/85090
DECREE No. 1,355, 30 December 1994. Trade Related Intellectual Property Rights Agreement – “TRIPS”.
Law Nº 9,279, of 14 May 1996. Industrial Property Law.