The money models

What if you could print any designer chair, iconic jewelry, or antique car parts for a fraction of the actual price?

We already know that a purely philanthropic or non-profit purpose doesn’t usually shield a website from the weight of IP law enforcement. However, sites that overtly try to profit from or monetize others’ copyrighted works or patented inventions may more quickly attract attention, and lawsuits.

Take for example, 3Docean, which allows users to buy designs for an Alessi tea set that retails for a few hundred dollars elsewhere. On another site, the3dstudio, users can download the model for a Jonathan Adler chair that retails for $700 at Neiman Marcus—quite a steal.

The downloadable Alessi tea set and Adler chair are far more troubling from a legal perspective than the Catan game pieces. They are highly distinctive, artistically expressive and entitled to copyright protection, and they may also have separate patent protection. In both instances, the websites offering the downloadable 3D files use the trade names of the original designer/manufacturer—Alessi and Jonathan Adler—also implicating trademark concerns. That said, it’s unclear how many sales have been made (and how many products have been printed as a result of such sales), so again, the cost-benefit analysis may not warrant litigation. (Would you really want a tea set printed in plastic or resin?)

But what if tens of thousands of people were downloading the Catan pieces, the Alessi tea sets, and the Adler chair designs and fabricating these items daily? What if you could print any designer chair, iconic jewelry, or antique car parts for a fraction of the actual price? And what happens as the tech improves and can print using more materials and colors?

That’s the future lawmakers, inventors, and designers need to start thinking about, because it’s coming. They need to envision a not-too-far-off future where 3D printers are as common as inkjet printers and users trade 3D designs as fluidly as they exchange URLs. And they need to think about how to use the law to vindicate IP rights without stifling innovation.

3D printing and patents

Patents protect both functional inventions (“utility patents”) and ornamental or decorative designs (“design patents”), so the 3D printing of a patented invention or article would constitute direct infringement.

Although the mere act of downloading a 3D design for, say, a patented spark plug wouldn’t necessarily constitute patent infringement, the act of fabricating the patented spark plug would be, as a valid patent provides the patentee the right to exclude others from, among many other things, making, using, or selling the invention. This is considered direct infringement, and a website like Shapeways, that will actually fab products and sell them, could be liable for direct infringement if it made and/or sold a patented invention. (Note that direct patent infringement is a strict liability offense, i.e., it occurs whether or not the infringer knows of the existence of the patent, and there is no “fair use” exception as there is in copyright law.)

Thingiverse would likely be immune from a claim of direct infringement, as it merely hosts the 3D design files uploaded by its users. But it could be liable under a theory of indirect infringement (PDF). Anyone who, in the words of the Patent Act, “actively induc[es] another to infringe a patent” may find him or herself indirectly infringing and could also be liable for damages. This has real implications for both Thingiverse and Shapeways. Specifically, as the nature of 3D design files shifts from hobbyist items to popular and commercial ones, such websites will need to do more than passively assume uploaders comply with user agreements that pay lip service to IP laws.

One smart and simple move in this direction would be the introduction of a “Flag” option on each product page—the appearance of a trade name or a specific item name (e.g., “Alessi,” “Jonathan Adler,” etc.) should set off some warning bells within the community, which could mark the item for investigation by staff. This isn’t to say that websites must run costly IP searches each time a file is added to their archive—just that in their current form, such websites invite being termed “weak on IP,” a label that’s been brandished with some success by both trial lawyers and lobbyists.

More importantly, the 3D printing revolution should not get off on the wrong foot with rightsholders. The community has a unique opportunity to build synergistic bonds with artists, designers, inventors and companies of all kinds to jointly exploit 3D printing technology in new and lucrative ways, and to create a robust, collaborative community free of the acrimony we’ve seen in many recent IP disputes. It would be a shame if all that creative potential were squandered in a flurry of endless litigation. On the other hand, rightsholders should be careful not to be too heavy-handed, as engaging in extensive litigation early on may forestall easy opportunities to commercialize the technology and profit from decentralized distribution.

The only patent litigation relating to 3D printing thus far has involved 3D printing companies. There have been no allegations of infringement relating to the use of a 3D printer to fabricate a patented object or device. This isn't entirely unsurprising, as home 3D printing has yet to cross a certain “complexity threshold” which would allow replication of sophisticated inventions more likely to enjoy patent protection. But when commercially popular, sophisticated items are commonly printable, make no mistake, patentees will take notice.

We’ve been discussing “utility” patents, but 3D printing also has strong implications for “design” patents, which protect the ornamental or decorative features of a product. Jonathan Adler’s chair would likely have been eligible for a design patent. Design patents are sometimes written off by practitioners because they are more limited in scope and comparatively easier to design around than utility patents; for those and other reasons, they can be challenging to enforce. But the advent of the 3D printing era may breathe new life into design patents and litigation surrounding them.

Generally, to establish that a design patent is infringed, the patentee must prove that an ordinary observer, familiar with prior art designs, would be deceived into believing that the accused product is the same as the patented design. This inquiry presents a close question of fact that is highly susceptible to human error and simple misperception.

In the case of a patent infringement claim based on a 3D-printed copy, however, the mathematical precision with which 3D printers fabricate items would go far to remove doubt from this traditionally fact-intensive infringement inquiry. After all, an aggrieved patentee could argue (assuming evidence existed to support such a claim) that the 3D design file was generated from a scan of the original, patented design, and the copy was fabricated with the same digital precision as an MP3 copy of a song.

Courts would no doubt invite such clarity and juries could find it compelling, making patent litigation a highly desirable recourse when design patents are at issue.

3D printing and copyright

Although copyright is a different kind of beast from patent, it too will play a crucial role in the 3D printing world’s unfolding future. As we’ve seen over the past decade, copyright litigation offers rightsholders a powerful set of tools to combat infringement. Then again, those accused of copyright infringement have some potent tools of their own, like invoking the DMCA safe harbor, and the defenses of fair use and innocent infringement.

Although copyright is a different kind of beast from patent, it too will play a crucial role in the 3D printing world’s unfolding future.

Some people forget that an original creative work is copyrighted the moment it is fixed in a tangible medium of expression (i.e., not purely in the mind). Moreover, the degree of creativity needed for copyright has been described as “very slight.” While a clever haiku bouncing around your head is not copyrighted, type it in the comments and voila—it is instantly copyrighted (and hey, if Jay-Z uses it in his next hook, you may be entitled to damages!). Copyright registration isn’t required, but it’s important for establishing priority, ownership, and collecting damages.

Copyright will come into play in a few important ways in the 3D printing context. First, and most simply, copyright protection is available for any object containing even a “slight” degree of creative expression—pottery, unique furniture, action figures, and industrial design pieces come to mind. Bear in mind that in the case of furniture and industrial design, two areas ripe for disruption by 3D printing technologies, the less utilitarian and the more expressive the design, the stronger the copyright protection. In the case of the Adler chair we discussed earlier, there’s no doubt that its “creative” part can be separated from its “functional” part. It may not be a Rothko, but it’s entitled copyright protection, and printing a copy would be infringement.

Copyright is also implicated because the 3D design files themselves will be protected to the extent they represent original creative work (i.e., a design) in a fixed tangible medium of expression (i.e., a computer file). This is an issue that comes up frequently in the “stolen source code” context, where programmers assert their code was a copyrighted creative work (PDF). Downloading or sharing those files could constitute copyright infringement, although the strength of the protection for such files will turn on whether courts treat them more like blueprints than art.

Generally, proving copyright infringement requires the copyright owner to show copying of the protected, i.e., original and expressive, elements of the work. This is easy when a duplicate object is fabricated, but perhaps more difficult when the only “copy” exists as a digital representation of a real object. That said, creating a 3D design file from a scan of a physical object may be considered unlawful “format shifting.” If a fancy chair can be represented in bits and sent to a friend, what’s to say it’s not a "copy" of the original? This argument takes on greater force if you believe that the design file serves little purpose beyond facilitating the fabrication of an identical chair.

This is one area that lawmakers may eventually consider especially ripe for new regulation. By making this kind of “physical-to-digital” format shifting illegal under the auspices of copyright law, Congress would protect designers of all sorts of objects—from the humble dishwasher part to the ornate chair—and possibly give them a separate cause of action that courts could easily wrap their heads around.

These considerations should cause lawmakers and the 3D printing community to look ahead to a time when the law may expressly forbid the very act of making 3D models from scans of real world objects for commercial purposes.

3D Printing And Trademark

Like patent and copyright, trademark is considered an intellectual property right. But unlike patent and copyright, trademark isn't really about inventiveness or creativity (necessarily) - it's about protecting consumers and making sure they can be confident that a product marked with a manufacturer's symbol (or bearing a certain "trade dress" - a shape or styling) was actually made by that manufacturer.

By selling downloadable 3D designs like “Jonathan Adler” chairs or “Alessi” tea sets, websites invoke the name and trademark of the original manufacturers and implicate trademark concerns that have nothing to do with the object made available for download. Just as if I brewed my own cola and called it “Coca Cola,” these sites could confuse consumers as to the provenance of the 3D files themselves.

The best future

Imagine it's the year 2050. You wake up groggily to the voice of your robot butler, who gently reminds you it’s your 30th anniversary. You’re dismayed to have forgotten (again), but not at all worried—while your car still doesn't fly, you are the proud owner of a dishwasher-sized 3D printer in your kitchen that connects wirelessly to your home network. You hop onto Amazon, navigate an extensive selection of 3D files, and buy a Tiffany-licensed CAD file for a piece of jewelry she’s had her eye on. You choose your material (hopefully you've got some precious metal composite somewhere), hit print, and a few minutes later, your only concern is how to wrap the bracelet you just fabricated.

But what if, instead of buying a licensed model on Amazon, you could simply download a torrent for the same bracelet? The current IP regime isn’t particularly well-suited for regulating that kind of activity, but if history is any guide, rightsholders will seek to apply traditional notions of copyright and patent against any party that makes infringing 3D designs available without authorization.

So what are rightsholders to do? For starters, they should be careful of heavy-handed enforcement against sites like Thingiverse, which lack the resources to fight big legal battles on a shoestring budget. But rightsholders will want to be vigilant, particularly against “money model” sites that openly seek to commercialize the IP of others. Allowing those sites to develop, and perhaps even flourish alongside revolutionary and increasingly widespread technology, may instill a belief that their “stuff” ought to be much cheaper than it is.

The most important thing at this early stage is dialogue. It’s clear that rightsholders have a formidable array of legal tools to go after both 3D printing hobbyists and the websites that provide 3D design files. Stepping on the wrong toes can diminish enthusiasm for one of the most promising technologies of this generation, discourage risk-taking and innovation within the field, and stigmatize innovators in the 3D printing community. That’s an outcome no one should want.