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Evaluating IP infringement risks for designers and consumers of 3D printing services

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Consumer-grade 3D printers really just kind of suck. From the tedious maintenance and oversight demanded by the printers to the long waits associated with printing tiny monochrome trinkets that often need to be sanded or filed to remove artifacts, 3D printing at home has become little more than a novelty.

And 3D-printer manufacturers are reacting: 3D Systems exited the consumer market and Stratasys scaled back its MakerBot efforts to focus more on professionals and educators, while others, like Solidoodle, simply closed shop. The technology may be viable (and awesome!) for home use in the future, but other options currently exist that may be better for most people.

One of these options is commercial 3D printing services. Companies such as Shapeways, Sculpteo, Meltwerk, i.materialise and others spend big bucks (hundreds of thousands of dollars per printer) on top-of-the-line professional 3D printers that utilize different technologies to print intricate designs in many varieties of materials, including metals and ceramics. They typically host marketplaces to connect designers with consumers, or allow individuals to upload CAD files for on-demand printing of objects described by those CAD files.

The number of designs hosted by these 3D printing services is staggering: A recent search of Shapeways for jewelry ring designs yielded more than 18,000 hits, while a search for “GoPro” had more than 1,000 hits, including items such as customized mounts, clips, handles and cases. Clearly, a lot of people are spending a lot of time and effort on making things (or at least the designs for these things).

Most of the designers and consumers utilizing 3D printing services probably aren’t too concerned about intellectual property (IP) infringement. Designers might feel this way because they aren’t yet making much money off their designs (they’re still small fish), they’re creating what they believe to be original designs, they’re unaware of anyone ever getting caught infringing or they just don’t care (some regard the maker community as being anti-IP).

Or perhaps they’re IP savvy and are comfortable with their non-infringement positions. Consumers likely feel comfort in their single-purchaser status — why would someone want to sue them if they’ve only purchased a single item? Or perhaps they feel anonymous and hidden, because of the widespread use of aliases on 3D printing service sites.

The following compares some of the relative risks associated with using 3D printing services, for both designers and consumers.

Patents (risk: low)

In the U.S., patents come in two main flavors: utility patents and design patents. (There are also plant patents, but 3D printing of plants is still limited primarily to planters and green sculptures that use existing seeds and plants.) Utility patents protect new and useful processes and things (“machine, manufacture, or composition of matter, or a new and useful improvement thereof”), while design patents protect new, original and ornamental designs embodied in or applied to things. Many 3D-printed objects could conceivably fall within one or both of these areas of protection. Should the typical designer or consumer of 3D-printed objects be concerned?

To answer this, it first helps to know how patents are enforced. A patent gives its holder the right to exclude others from making, using, selling or importing the patented item. Typically, a patent holder enforces its patents by first identifying infringers. Then, the patent holder will frequently request or demand that the infringer cease and desist from the infringing activity, which often leads to licensing discussions or litigation. While many have debated the impact of patent assertion entities (also known as patent trolls), this long-standing model has served the patent holder reasonably well for dealing with conventional patent infringers.

A typical patent infringement litigation can last 3+ years and cost $3 million or more, if it goes through trial.

The traditional patent enforcement model is not well-suited to users of 3D printer services. Many consumers print an object only once, because they are manufacturing for themselves, rather than to make money by selling to others. Single-instance patent infringers are typically not seen as economically feasible targets because patent lawsuits are expensive, an injunction against the individual would be relatively worthless and any awarded damages would be far exceeded by the cost of the lawsuit. In addition, it is difficult to identify patent infringement.

Imagine having to (1) identify a design for an infringing product from among the thousands of posted designs on multiple websites, (2) determine whether a product embodying that design has been sold and (3) identify the seller and/or buyer of the infringing product. That last step is not an easy task — people generally use a pseudonym or alias on the 3D printer services, which adds an extra layer of complexity for tracking infringers.

Unless the patent holder observes a marked decrease in sales that’s attributable to 3D-printed versions of the patented product, the patent holder is not likely to bring suit against a designer or consumer using a 3D printing service. Enforcing a patent against minimal infringement acts is impractical and uneconomical (unless you’re 3D printing a patented stealth bomber or another high-dollar item). A typical patent infringement litigation can last 3+ years and cost $3 million or more, if it goes through trial. Thus, as 3D printing services as currently being used (primarily individuals buying and selling at low volume), patents are not a huge threat. On the other hand, for designers dealing in high volumes or high-dollar amounts, it might make financial sense to confirm non-infringement positions for some products.

Copyrights (risk: medium)

Copyrights protect original artistic, creative works. In the context of 3D printing, copyright would apply to original (not copied) sculptures, jewelry designs and most other 3D-printable articles whose value is derived, at least in part, from their artistic nature (even if they are also useful in some way). Unlike patents and trademarks, which must be applied for, a copyright attaches immediately when the work is “fixed in a tangible medium” (e.g. sculpted, written down, displayed on a computer screen, etc.). While patents protect an invention for 20 years (15 years in the case of a recent design patent), copyright protection lasts for the life of the author plus 70 years after the author’s death.

A copyright owner can bring a copyright infringement suit in a U.S. district court upon satisfying a number of jurisdictional requirements. This traditional enforcement mechanism is similar to how patents are enforced, making it somewhat unwieldy, expensive and time-consuming. However, copyrights are also subject to the Digital Millennium Copyright Act (DMCA), which applies to websites that host content uploaded by users, such as designers uploading their designs to sites maintained by 3D printing services. Under the DCMA, these sites need not (and are not expected to) monitor all uploaded content to ensure that no copyrights are being infringed.

It’s best to avoid blatant copying, e.g. of graphic characters, famous sculptures, etc.

Instead, the sites simply provide a mechanism that allows copyright owners to send a “takedown request” to the site upon discovering an uploaded file that allegedly infringes the copyright owner’s copyright. The site then removes the file and notifies the uploader (i.e. the designer) of the takedown notice and subsequent file removal. The uploader can either accept the takedown or challenge the copyright owner’s claim and request reinstatement of the file on the site. The site informs the copyright owner of the reinstatement, and the copyright owner can either accept the reinstatement or sue the uploader in federal court for copyright infringement.

Perhaps the best thing about the DCMA is that it allows sites like YouTube, Vimeo and Imgur (and the 3D printing service sites discussed here) to be able to function as file-sharing communities without having to monitor every uploaded file to ensure no copyrights are being infringed. Such monitoring, to the extent even possible, likely would be burdensome enough to choke these types of sites out of existence. By following the DCMA takedown flow outlined above, the sites can continue to function while still demonstrating at least a semblance of respect for copyrights.

For users of 3D printing services, the multi-step DMCA takedown flow gives at least a feeling of safety, in the form of a prescribed notice (first strike) before things get ugly. For the designer, that extra step may provide enough time for a design to get noticed and, perhaps, purchased, by consumers browsing or searching 3D printing service sites. The designer could gain a following that could lead to sales of the designer’s other product designs, including those less prone to DMCA takedown requests.

However, willfully disregarding a copyright does present considerable risk. Unlike patent law, in which the patent owner needs to prove infringement and damages in order to recover, copyright law assumes damages of up to $150,000 for willful acts of infringement. So, perhaps it’s best to avoid blatant copying, e.g. of graphic characters, famous sculptures, etc., where copyright infringement is less defensible.

Trademarks (risk: medium)

Trademarks generally indicate the source of goods and distinguish the goods of one seller from those of another, and can be in the form of words, names, symbols, devices or combinations of those. Like patents, and unlike copyrights, federal trademark protection is applied for. Unlike both patents and copyrights, trademark protection never expires, unless the trademark owner stops using the trademark or the trademark becomes genericized (e.g. aspirin, escalator and trampoline).

A quick search of 3D printing service sites reveals lots of hits for brand names, such as Coca-Cola, Nike, Playboy, Mercedes and others. Some hits are for parts or accessories (which very well may be free of any IP protection), while others are articles with the brands’ logos. At least some of these could serve as the basis for relatively straightforward trademark infringement cases.

However, as with patent cases, trademark litigation can be expensive and time-consuming. The ease in finding potentially infringing trademark uses is pretty easy though — starting with just a simple text search. While other legal requirements would need to be satisfied to prove infringement (e.g. likelihood of confusion, etc.) at court, designers choosing to sell products on 3D printing service sites based on uploaded designs that replicate well-known brands and logos subject themselves to considerable risk.

Conclusion

Incredible design and manufacturing capabilities are available to almost anyone right now, thanks to 3D printing services and the designers/makers who populate those services’ marketplaces with designs that are creative, original and/or functional. While we wait for the law to catch up to the technologies underlying 3D printing services, it makes sense to consider where the biggest IP risks lie. By simply focusing on original and/or function designs and avoiding well-known trademarks and copyrighted characters, you’ll go a long ways toward lessening the likelihood of finding yourself a target of an IP lawsuit.

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