At a high level, creating a 3D printed product involves several steps. First, the product itself is conceived. Next, the product is designed in a computer aided design program, and must be converted into a set of electronic instructions that tell the 3D printer how to create the product. In some instances, the CAD program itself may create the printer instructions. The last step is the actual printing of the product. Not all businesses can employ in-house designers and technical personnel who are capable of engineering a product and/or creating printing instructions for that product. For those that can, it may still be more economical to hire outside help from time to time.
The creation of the 3D printer instructions creates another layer of copyright that must be accounted for. Remember: with any given project, there are likely several layers of copyright protection. Initial product sketches and drawings are copyrightable. If your employees created those works, your business is the owner of the copyrights in those works. However, engineering drawings and CAD files are also copyrightable. If you hire out for these services, hopefully you already have language in your contracts that assigns ownership of the engineering drawings and CAD file copyrights to your company. (You do, right? If you don’t, you should.) By adding in the additional step of creating the 3D printer instructions, another layer of copyright has been added.
Without obtaining ownership in the copyright to the printer instructions (which may be merely the CAD files), actually using the printer instructions to create your product could be an infringement of the third party designer’s copyright in and to those instructions. To the extent you have the right to print the product yourself, the third party designer could prevent you from ever distributing the files to an outside manufacturer if the demand for your product outstrips your ability to print it.
Yes, we have seen this happen. When a product is successful, companies that had anything at all to do with the creation of the product (and some companies that did not) sometimes pop up and demand a bigger piece of the pie. Do not give them a legitimate reason to make such a demand. When using third party design and engineering companies, be sure to secure ownership of all copyrights. Talk to your IP attorneys to make sure you are protecting yourself.
For additional information, please contact Dan Cohn or Joe Orlet.