3D printing has been and continues to be a disruptive technology on the design and manufacturing supply chain. The advent of desktop, home, and prosumer 3D printers also has huge repercussions in the intellectual property (IP) domain.
"Anyone with a smartphone can scan an object and create a CAD file out of it complete with trademark logo," Lindsay Rothrock, a trademark attorney with Benesch, Friedlander, Coplan & Aronoff LLP in Indianapolis, said in an interview with Design News. "And it can be printed by anyone, using really shoddy material, so people would not necessarily know that it's not a genuine product, which can undermine the value and the reputation of the brand."
Selling pirated products is one problem. But there is plenty of potential for harm from those who simply make copies for their own use, à la Napster, bypassing the company that developed the product. It is essentially stealing.
Maker sites like Shapeways and Thingiverse share instructions for a wide variety of objects from gadgets, to jewelry, to phone accessories, to art. While some might think that this is Napster 2.0, the design files to these objects are all presumed to be original creations of the submitters and are thus offered with permission. Legal offerings include original work, public domain material, or material used with permission.
Shapeways notes on its site, "You design amazing products, we'll help you reach a global market." It does the 3D printing for you, whereas with Thingiverse, you use your own 3D printer.
Manufacturers have more to worry about than losing sales to those who decide to make copies of their goods rather than buying them. They also need to find ways to stay relevant, because printed products can compete at lower cost and, at least in some cases, be equivalent or even better in quality.
Rothrock said there is still a lot of uncertainty around how IP holders can protect themselves from infringers. "The law is constantly trying to catch up with technology. Meanwhile many people are trying to understand what is allowable in this space." Benesch, Friedlander, Coplan & Aronoff LLP has been giving seminars on the subject to clients, and interest has been strong. She said it has been mostly "people who are using 3D printing as part of their business, and want to be sure that they are not infringing."
Who's At Fault?
So how can manufacturers police this? Who do they go after? Is it the websites that distribute material without permission, the uploaders, or the downloaders?
When the music industry went after consumers who were illegally downloading it didn't work out very well and caused a lot of ill will. "This is a model that I think IP owners are going to have to learn to embrace," Rothrock said. "It becomes a new way of distributing products, by making the CAD files available, either on your own website or on one of these maker sites. It's a way to stay on top of technology and embrace it, rather than battle it."
This model is supported by the Digital Millennium Copyright Act (DMCA) passed by Congress in 1998, which allows for owners of infringed material, such as music, to have the offending material taken down from the web, and protects the website owners from prosecution, so long as they explicitly agree to do so, if an IP owner requests it. This is known as the safe harbor defense.
The toy company Hasbro has embraced this model and extended it to the sale of derivative works by granting licenses to "a select number of 3D artists to create artwork based on My Little Pony." These are available at Shapeways Superfanart.
"Our community was asking whether they could do it, so we started this partnership to enable our community to make fan-art-based products," said Shapeways CEO Peter Weijmarshausen said in an interview with ZDNet "You can only make original content with Shapeways, but of course there are a lot of people who are really passionate about existing [content]. If they can make those products based on existing IP, everybody wins. Hasbro will get money for their license, the designer will get money for their creativity, and Shapeways makes money to manufacture those products."
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If you peruse Shapeways and other similar websites, you will find renderings of popular TV characters. According to David Leichtman, partner at New York law firm Robins, Kaplan, Miller & Ciresi L.L.P., "Those items can stay on there until the copyright holder asks that they be taken down."
But what if a manufacturer doesn't want anybody copying its stuff? According to an article in Venable LLP, by Justin E. Pierce and Steven J. Schwarz, called "Approaches to Dealing with the Rise of 3D Printing," "Rights holders have a few options to pursue when they discover infringement. One such option is to sue the direct infringer, another is to pursue the parties who have knowingly aided in direct infringement, and yet another is to do both. Unfortunately, infringement due to 3D printing will likely present challenges in each scenario for rights holders in our current legal system."
The rights holder would have to find the infringer, which may not be easy, if the party downloaded the files from some remote location. Chasing these individuals down, one by one, could be costly and harmful to a brand's reputation.
Protecting Your IP
Prior Supreme Court rulings pertaining to VCRs protected the manufacturers of those devices, so 3D printer makers would likely be protected because 3D printers, like VCRs, have legitimate uses.
Finally, an original manufacturer could go after the website that provided the design files, but thanks to safe harbor, it'd have to prove that the site's owners knew that the material was protected.
One approach recommended by Pierce and Schwarz is to file design patents. Unlike utility patents, design patents pertain to the actual appearance of the product rather than its function. "Design patents have gained enormous popularity since the landmark damages award in the Apple v. Samsung smart phone case," they wrote. "As with counterfeit products manufactured using conventional techniques, design patents can be a valuable tool in fighting 3D-printed counterfeits. In contrast to utility patents, design patents can be obtained in about one year under standard examination, and in approximately three to four months under expedited examination. This allows the design patent to come into force while the product is still in the heart of its life cycle. Accordingly, design patents give designers and manufacturers a patent tool that can be used to strike fast."
They further suggested, "Given the fast pace at which 3D printers can change their product configurations, companies should seek design patent protection for portions of a product, as well as the product as a whole. This multi-faceted strategy can be useful to prevent counterfeiters from making small changes to a part of a product in order to circumvent design patent protection. Companies should also consider filing continuation applications — the process of keeping an application pending after the original application has granted — to allow changes in design scope to combat potential design-arounds as they come on the market."
Bryan J. Vogel of InsideCounsel Magazine offers up a more comprehensive overview of literature on the subject.
On the more positive side, for designers and inventors, this distribution model could provide a whole new outlet for their designs. By simply making their CAD files available to maker sites, they can make money on their ideas, without going through the trouble of setting up manufacturing or looking for companies to license their ideas.
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RP Siegel, PE, has a master's degree in mechanical engineering and worked for 20 years in R&D at Xerox Corp. An inventor with 50 patents, and now a full-time writer, RP finds his primary interest at the intersection of technology and society. His work has appeared in multiple consumer and industry outlets, and he also co-authored the eco-thriller Vapor Trails.
[image via Mister GC / FreeDigitalPhotos.net]