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).

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