3D printing and IP: It's not just child's play

Matthew Jefferies and Thomas Pro

By Matthew Jefferies and Thomas Pro

July 20th 2017 at 10:57AM
UPDATED July 20th 2017 at 12:31PM
3D printing and IP: It's not just child's play

As both Toys R Us and Hasbro embrace the new medium, Marks & Clerk's Matthew Jefferies and Thomas Prock explore the pitfalls and opportunities the landscape presents the industry.

3D printing in the toy industry is on the march.

Toys R Us recently released a child friendly 3D printer in a partnership with XYZprinting. Hasbro has also recently embraced 3D printing, filing a patent for a 3D scanner which allows children to scan their favourite toys and output the scan to a 3D printer. Hasbro has also collaborated with Shapeways to offer its designs for sale on a 3D printing online marketplace.

Hasbro and Toys R Us are two companies that appear to understand that the main barrier to infringement of their Intellectual Property (IP) rights – the inability to easily create physical copies of their products – could be eroded by the proliferation of 3D printing.

As the music industry has learned with online downloads, pursuing infringement actions against end consumers is often costly and can negatively affect a company’s image. It can therefore be preferable to offer viable alternatives to illegal downloads. In partnering with Shapeways to license out their IP, Hasbro therefore appears to have taken a leaf out of the music industry’s book to combat infringers, and has established an additional revenue stream in the process.

Having said that, the online licensing of rights to manufacture designs is only possible if the designs themselves are protected by Intellectual Property rights. If no protection is in place, then there is no deterrent against third parties producing unauthorised copies of the designs.

Toys and registered design rights

While many IP rights exist, the most important one for the protection of toys is probably registered designs. Registered design rights protect the aesthetic look of products. Depending on the jurisdiction, design rights can protect the shape and configuration of the whole, or a part, of an article. They can therefore be used to prevent the unauthorised manufacture of a product, and in some countries could even be used to prevent the unauthorised distribution of 3D printing design files for printing the product.

To obtain a registered design, it is necessary to file an application for registered design protection at the intellectual property office for the relevant country.

To make registered design rights more useful in combating infringers using software to modify the design prior to printing, it is advisable to focus design registrations on those features of the product that are believed to make it attractive to buyers, but to omit those features that are deemed of lesser importance to the appearance of the product. In so doing, emphasis is placed on the product features that are less likely to be modified by a consumer trying to individualise a product prior to printing. Registered design attorneys can provide advice to ensure that the design rights provide the strongest protection possible.

Where design files for 3D printing a product are being illegally distributed over the internet, Internet Service Providers (ISPs) can be requested to intervene to prevent this distribution. Having said that, ISPs do need to know that files that are to be blocked at least have a high likelihood of infringing an Intellectual Property right. This can be demonstrated particularly easily if the file that is to be distributed shows a trademark owned by the party requesting the blocking.

3D printing provides opportunities as well as threats

Whilst 3D printing could be a threat to existing business models, it offers opportunities for forward thinking companies to make use of new and exciting revenue streams. In order to do this, strong Intellectual Property protection will be essential. As protection often needs to be obtained prior to a product being announced or launched, designers should keep Intellectual Property in mind whenever new products are being developed.