United States: IP Strategies For The Rise Of 3D Printing

Last Updated: April 15 2015
Article by Justin E. Pierce and Steven J. Schwarz

By now, you have probably heard the buzz about 3D printing. 3D printing, also known as "additive manufacturing" is a process of making three-dimensional objects from a digital model by depositing successive layers of material on top of one another to form the object. Although 3D printing has been around for more than 30 years, recent advancements have drastically improved the quality of printed objects, while also lowering costs. A number of websites have emerged that allow individuals to upload and download digital design files, which will lead to more widespread use of the technology. 3D printing is also advancing beyond printing solid objects to more complex objects, such as printed electronic parts and even human tissue. The use of 3D printing technology is set to grow in the near future, as key patents relating to laser sintering (one of the most affordable forms of 3D printing) expire.

Consequently, the rise of 3D printing poses unique intellectual property challenges for designers and manufacturers of products, especially those relating to consumer products. The long lead times and capital expenditures associated with conventional manufacturing of consumer goods can be virtually eliminated with 3D printing. For basic items, counterfeiting can be as simple as making a computer model of your product using a three-dimensional scanner, and printing the product from that model using a 3D printer. Also, due to the decreasing size of 3D printing machinery, counterfeiters can move operating sites quickly to avoid law enforcement. Further, similar to a number of illegal digital music and video file-sharing services, counterfeiters may sell designs or instructions (e.g., a three dimensional model) for consumers to use on their own 3D printers to make the counterfeit product at home. These changes in manufacturing pose infringement issues not directly addressed by current intellectual property strategies. This article suggests some approaches and strategies that can be used to combat counterfeiting and infringement by entities using 3D printing technology.

Approaches to Dealing with the Rise of 3D Printing

Direct vs. Indirect Infringement

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.

First, suing a direct infringer means that you have to identify and/or locate the infringing entity; and it may not be practical to expend significant resources to find an infringer, especially when the infringer turns out to be an individual using a 3D printer who has made a small number of unauthorized copies. The cost of pursuing such individuals (combined with potentially negative public relations) will almost always exceed the benefit of any recovery of monetary damages.

Second, intellectual property owners may have difficulty targeting manufacturers of 3D printers due to a Supreme Court decision1 in 1984 that exempted manufacturers of recording devices from copyright infringement provided those devices had a legitimate purpose.

Third, when it comes to 3D printing services, an intellectual property owner may be able to sue the service for indirect infringement if the service printed an infringing object on demand. Yet, to succeed in such a case, the intellectual property owner would have to prove that the service knew the printing of the object violated the IP owner's rights.

Proactive Approaches

While intellectual property owners may find enforcement of their rights more challenging in this new environment, manufacturers and product designers should consider the following proactive approaches:

  • Focus on innovation and speed to market – Although it's easier said than done, businesses must strive to implement a production cycle that stays ahead of competitors and counterfeiters alike. Companies that bring their products (and new versions) to market quickly, not only entice consumers to purchase the new versions of a product, but also make it hard for those trying to imitate the latest version of their product.
  • Adapt business models that harness the benefits of 3D printing technology – As legitimate usage of digital music download and video streaming services continues to grow, it is clear that more and more consumers are seeking to buy or consume high-quality digital or streaming content from authorized sites and sources. Thus, we also expect to see the same from consumers in the near future. As they will seek user-friendly 3D printing service and expect a certain level of quality in the final 3D printed product. Savvy brand owners and manufacturers can harness the benefits of 3D printing technology to offer a wide variety of product accessories, and efficiently offer replacement parts. In fact, large corporations like Hasbro and Hershey's have already begun integrating 3D printing into the licensing of their brands; enabling the commercial printing of everything from "SuperFanArt" My Little Pony figurines to "CocoJet" Hershey's dark chocolate.2 By proactively using 3D printing to both produce high quality goods and enable greater consumer access to one's brand, businesses have much to gain from an early investment in this market.
  • Build multilayered IP protection - Routinely lockdown, provide notice of, and enforce IP rights for each of the unique, distinctive and complementary elements of branding, content, design and innovation associated with key products and services as early as possible. Provide notice of IP ownership and appropriately mark (or virtually mark) those products. Next, enforce these rights on a regular basis against infringing entities that pose a threat to either the company's business or to public health and safety.

Intellectual Property Strategies for Dealing with 3D Printing

Design Patents

Design patents have gained enormous popularity since the landmark damages award in the Apple v. Samsung smart phone case. 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.

Given the nature of many products manufactured by 3D printing, such as household products, smart phone cases, etc., design patents can often protect the heart of the product – its appearance. 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.

Utility Patents

3D printing may present a unique challenge with respect to utility patent enforcement. As discussed above, many counterfeiters will shift from a model of manufacturing counterfeit products in factories, to a model of distributing computer files used by consumers to print counterfeit products in the home. This scenario is analogous to the revolution in the music industry, when it shifted from consumers buying compact disks in retail stores to consumers downloading music files from various online services.

Shifting manufacturing from the factory to the home presents an issue for utility (and design) patent enforcement, which requires a direct infringer to "make," "use," "sell," or "offer to sell" the patented invention. Under a file-distribution model, patent holders may be forced to assert their patents against the end consumers, or alternatively, sue the counterfeiter under theories of indirect infringement, which can be more difficult to prove.

To better protect against infringement under the file-distribution model, companies should be proactive about including claims in their utility patent applications that combat the unique aspects of infringement by 3D printing. For example, companies could claim a computer readable medium containing instructions to manufacture their product, or a computer-implemented method of distributing instructions for manufacturing a product. To protect against infringement by traditional manufacturers using 3D printers in the factory, companies should also consider claiming methods of manufacturing their products via 3D printing, or the 3D-printed product itself. The Lego Group, for instance, has recently applied for a patent claiming a method of manufacturing its product in a layer-by-layer, or 3D printing, fashion. Its recent patent application (U.S. Patent App. No. WO 2014005591 A1) also claims 3D-printed Legos themselves, as well as Lego sets made of 3D printing components. This type of patent application represents an example of the progressive brand protection strategies that will become necessary to effectively enforce patent rights in the future, and should be followed by those wishing to maintain brand strength in the 3D printing market.

Copyright

Copyright is traditionally used to protect creative works that serve no functional purpose. In the context of 3D printing, this means that the majority of functional objects (e.g. tools and component parts) copied and printed by 3D printers will not be protected by copyright. In contrast, objects such as toys, sculptures, ornaments and certain decorative accessories will be protected by copyright.

Consider the following illustrative scenario on how courts will likely analyze copyright infringement in the 3D printing context. Company A sues Company B for copyright infringement because Company B is selling a 3D-printed product that allegedly infringes the copyrighted shape/design of Company A's decorative water container.3 The court finds that the decorative water container is similar to "modern sculpture" and "has a distinctive shape." The court, however, in applying the concept of conceptual separability, finds that it is impossible to conceptually separate the distinctive appearance element of the water container from its functional element of holding content. As a result, even though the facts show it is likely that Company B copied the design of Company A's water container, the court finds that Company B is not liable for copyright infringement of Company A's design. The court reasons that the primary purpose of Company A's water container design is to provide a useful function, i.e. "to hold the contents within its shape," and that copyright can only protect nonuseful objects.

It is important to note that this does not mean useful objects will have no protection. Patent rights protect many of the useful articles that are beyond the scope of copyright. And, as discussed above, design patents can protect elements of a useful object's appearance, while utility patents can protect novel aspects of how a useful object operates or works. Further, in many countries, rights holders can obtain trademark rights on distinctive elements of a useful object's appearance. Therefore, as discussed earlier, we recommend using a multilayered strategy to combine the necessary complementary rights in a way to cover each element of a functional object. In a recent example of this technique, the maker of Uggs-brand shoes filed suit against retailers, alleging common law trademark infringement, trade dress infringement, and design patent infringement of its rights in specific Uggs shoes. Though the case is still pending, by layering varying types of protection onto an otherwise non-copyrightable shoe, this rights-holder has greatly increased its probability of success, and thus its control over the Uggs brand. Finally, while this case does not involve 3D printing, it makes clear that layering trademark, trade dress, and patent protection is an invaluable tool when protecting functional, non-copyrightable objects, and a tool that will prove even more important as 3D printers become more advanced and accessible.

Another tool in the arsenal of copyright holders will be the Digital Millennium Copyright Act (DMCA), which can be used against unauthorized entities offering to 3D print goods that are protected by IP rights. In a recent example, HBO successfully used the DMCA to force a company to stop making 3D printed phone chargers modeled after the Iron Throne from the popular cable television show Game of Thrones. Similar rights-holder actions, both under the DMCA and the Copyright Act more broadly, have resulted in the online removal of 3D-printed items including, among others: a model of the "cube" from Paramount's Super 8 film4; Pokémon character planters5; Final Fantasy VII video game figurines6; and the now infamous "Left Shark" figurines, based on a costumed performer in the Katy Perry 2015 Super Bowl Halftime Show.

However, while these notices often result in the removal of the offending item from 3D printing websites, it is important to note the risk inherent in sending them. Specifically, as these requests are often published online and subject to strong public pushback, rights-holders should think carefully about the impression that their legal claims will make on consumers. Indeed, as illustrated by the "Left Shark" cease and desist letter, some attempts to protect a brand may in fact do more harm than good.

Trademark or "Trade Dress" rights

3D printing will pose serious concerns for many industries that heavily rely upon branding to sell their products. Unconventional trademarks rights such as trade dress, trademarks in 3D shapes and colors will play a key role in protecting company brands in the 3D printing context. Consider, for example, that 3D printing technology can now be used to the ability to print ingestible products such as food, supplements and pharmaceuticals. In fact, infringers using 3D printers and the "right mix" of ingredients now have the capability to mass-produce certain ingestible products with the same outward physical appearance as legitimate products. This could result in a significant volume of counterfeit goods reaching the marketplace. This is particularly worrying when such products would be combined with potentially flawless imitation packaging, labelling and instructions for use, since the overall product could appear to the relevant consumer as identical to the genuine item.

Naturally, this is a growing concern for brand and public safety conscious companies within these industry sectors as there are few, if any ways, to control the ingredients counterfeiters may use to imitate an ingestible product. As a result, rights holders may be faced with a scenario where goods that look identical to their own products are reaching the marketplace, but with either ineffective or potentially dangerous ingredients. This clearly could result in situation that exposes the right holder to reputational damage and significant legal liability. We know that this sort of scenario has taken place many times in the past, however the availability of improved 3D printing technology potentially enables increased local production – and a corresponding increase in the complexity of policing.

To address this situation, rights holders will need to consider how to incorporate the monitoring of products created by 3D printing into their on-going anti-counterfeiting programs. While this is easier said than done, there are a number of basic steps that should be taken now. For example, brand owners should ensure that all products placed on the market are fully protected by way of trademark registration. This includes not just the brand name and related stylistic or logo elements, but also securing three-dimensional registered trademark protection for those products which have distinctive character. Further, rights holders should secure registered design protection for the external appearance of the products themselves and their packaging where appropriate.

Trade Secrets

A final and important consideration for rights holders will be the risk posed by infringers obtaining the actual recipe (or right mix of ingredients) for the item in question, and the mass production of the recipe by way of 3D printing. While remedies may exist by way of enforcing patents and rights in confidential information, such steps are reactive. This technological development highlights the need for a proactive stance through increased vigilance in the marketplace. There are a number of steps rights holders should take now to enhance their ability to protect and prevent disclosure of their trade secrets. These steps include, for example: 1) systematically identifying valuable confidential information, 2) requiring confidentiality and non-disclosure agreements with all employees, contractors and even customers, 3) limiting access to confidential information, 4) using and adhering to "confidential" designations on documents, 5) using copy protection and embedded codes to trace copies, 6) controlling visitor and employee access to certain facilities, and 7) restricting downloading of confidential information. Taking these steps can significantly reduce the risks posed by trade secret theft. Further, in the unfortunate event that trade secret theft still occurs, rights holders following these steps will be better positioned to enforce their rights in trade secret litigation.

Conclusion

3D printing will provide right holders and designers with major manufacturing and economic benefits, likewise it is very likely that some will use 3D printing to further anti-competitive behavior or surreptiously expose the public to health and safety concerns. While the global marketplace for 3D goods is early on its development, it's not too early to consider how rights holders can take proactive and practical steps to get a better handle on how the rise of 3D printing will impact their businesses.

Footnotes

1 Sony Corp. of America v. Universal City Studios, Inc. (1984).

2 "Introducing SuperFanArt," SHAPEWAYS.COM, (http://www.shapeways.com/discover/superfanart (detailing Hasbro's partnership with Shapeways for licensed 3D printable toys); Shandrow, Kim L., "CocoJet: 3-D Printing and Hershey's Chocolate, Together at Last," ENTREPRENEUR.COM (http://www.entrepreneur.com/article/241596) (describing Hershey's partnership with 3D Systems to create a commercially available "chocolate making machine" named CocoJet).

3 Inhale, Inc. v. Starbuzz Tobacco, Inc.

4 Masnick, Mike, "Prop Wars: Can Paramount Prevent People From Offering Up Plans To 3D Print Movie Props?," TECHDIRT.COM, (https://www.techdirt.com/articles/20110630/03133214920/prop-wars-can-paramount-prevent-people-offering-up-plans-to-3d-print-movie-props.shtml).

"Pokémon targets 3D printed design, citing copyright infringement," WORLDIPREVIEW.COM, (http://www.worldipreview.com/news/pok-mon-targets-3d-printed-design-citing-copyright-infringement-7067).

5 Statt, Nick "Print chop: How copyright killed a 3D-printed Final Fantasy fad," CNET.COM, (http://www.cnet.com/news/print-chop-how-copyright-killed-a-3d-printed-final-fantasy-fad).

6 Donahue, Bill, "Katy Perry Gets 3D 'Left Shark' Design Pulled After Threats," LAW360.COM, (http://www.law360.com/articles/619441).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.