December 18, 2013
American Intellectual Property Law Association
By E. Robert Yoches; Elizabeth D. Ferrill
Authored by Elizabeth D. Ferrill, Benjamin T. Sirolly, and E. Robert Yoches
In November 2012, 3D Systems, Inc., one of the major 3D-printer manufacturers, filed a patent-infringement suit against Formlabs, Inc.1 A couple of months earlier, Formlabs, a Somerville, Massachusetts, start-up of MIT alums, debuted its $2,500 "professional" grade stereolithography,2 3D printer on Kickstarter.3 3D Systems accused Formlabs of infringing its patent directed to "improved method[s] of stereolithographically forming a three-dimensional object."4 By early November 2013, the case had settled.
This case appears to be the first litigation involving 3D printers.5 3D Systems is the granddaddy of additive-printer manufacturers (the more formal name for 3D printing). Based in Rock Hill, South Carolina, the company was founded in 1986 by Chuck Hull, who continues to serve as its Chief Technology Officer. 3D Systems is also a powerhouse in the 3D-printing intellectual-property ("IP") arena, with a dominant position in patents related to additive manufacturing, many of which list Hull as an inventor. Some of these patents, like the one in the Formlabs suit, have priority dates back to the early 1990s.
As many of these stereolithography patents approach expiration, some have predicted that stereolithography printing will soon explode.6 It happened before when a set of patents related to fused deposition modeling7 ("FDM") expired, leading to the rise of MakerBot Industries and its hobbyist Replicator 3D printer. The prices of the low-end FDM printers dropped from many thousands of dollars to as little as $300 within a few years.8
So the stage is set for an influx of affordable 3D printers, with additional capabilities that may soon give individuals the ability to manufacture parts of the same quality as injection molding and other more traditional means. The cost decrease and capability increase make this nascent technology a challenge for IP rights holders, especially those with rights in products a 3D printer can create. Many think reliable and inexpensive 3D scanners are on the horizon,9 which would allow people to scan objects in three dimensions and reproduce products with 3D printers from scan files.
As a result, traditional IP strategies may no longer provide adequate protection for printable designs, so now is the time to consider how best to protect products that have such designs. The first step is to understand how different forms of IP can be used to protect these products.
IP and 3D printing intersect in four areas:
In this context, "materials" include both the "ink" for the printers, such as plastics, metals, ceramics, and even biomatter, used to make the final product, and the supporting materials, such as the liquid baths and postproduction chemicals used during printing and finishing. "Instruction files" can mean files of different formats, some that have been created virtually using a computer-aided design ("CAD") program and others that may have been created as an output from a 3D scanner scanning a real-world physical object. Finally, some instruction files might be a bit of both, e.g., a file that originated as a scan, but was later modified before 3D printing.
3D printing has been around since the 1980s, and some of the printing technology has been patented, as noted above. However, there are new printing techniques being developed that could be ripe for patenting, and the search for diverse printing materials and safer supporting materials continues. Many traditional IP strategies centering on utility patents apply to protecting the printers, printing techniques, and materials.
Unlike the relatively well-understood strategies for protecting printers and printing methods, a special challenge exists in protecting the objects printed by the various printers. Two-dimensional objects have limited IP protection, but three-dimensional objects have many more options, and when anyone with a home printer can reproduce such three-dimensional objects, it is not clear how the designers of the objects can protect their designs. It may require a web of patents, trademarks, copyrights, and digital-rights management. While the process of procuring these rights is fairly well understood, cost-effective enforcement is a challenge.
Following the Apple v. Samsung10 jury's billion-dollar damages award11 in 2012, design patents again entered the public discourse. And in the future, the design patent will likely be a cornerstone of any comprehensive IP portfolio protecting product designs capable of being 3D printed.
A design patent protects the design in the patent or a "colorable imitation" of that design.12 A design patent can be used to claim an entire object or only an innovative part.13 Design patent infringement requires showing that an ordinary observer familiar with the types of designs at issue would be deceived into believing that the accused product is the same as the patented design.14 Design patents are less expensive to obtain than utility patents and take less time to get.15 On the other hand, design patents often have limited scope, particularly when they have been narrowly claimed to cover the patent owner's commercial product.
Design patent infringement often occurs when a third party makes a knock-off product, which is an identical copy or substantially the same as the claimed design. With recent developments in 3D printing, individuals may be able to print duplicates of their favorite products at home. When combined with a scan from a 3D scanner of the original product, these "printouts" may be an almost exact copy.16 The home user may have scanned the original product himself or may have downloaded a file from the Internet.17
Utility patents can provide broad protection, including products unknown at the time of the invention.18 A utility patent, for example, can cover functional aspects of a product. A utility patent is infringed when another, without authority, makes, uses, or sells a product or a method of operation having all the elements in a single claim of the utility patent. The relevant utility patents could include those directed to the structure of a printed device or the device's method of operation. Also, utility patents can be flexible, powerful tools, because a single patent can include many claims covering many different versions (known as "embodiments") of a single invention. This flexibility can provide multiple options when it comes time to enforce the patent.
If someone uses a 3D printer to make a device that is covered by a patent, that person may be an infringer by making a patented product without authority. The same is true if the person uses a method covered by the patent with a device created by 3D printing.
A trademark or service mark is a word, phrase, design, or expression that identifies the source of a product or service.19 To merit protection, a trademark must be distinctive and carry meaning indicating the source of the good or service.20 Trademarks can be registered at the federal or state level. A trademark is infringed when a party uses an identical mark or one that is confusingly similar to the registered mark on products or in relation to services that are covered by the registration.
Trademarks currently capable of being printed by a 3D printer include word marks, as well as logos, labels, and color combinations. 3D-printed objects—in particular, those that have been created using a 3D scanner—may still include trademarks if the person who made the scan does not remove them. For instance, a household product copied with a scanner could include the original manufacturer's logo on the handle.
3D-printed objects may also implicate trade-dress laws. Trade-dress law is similar to trademark law, but relates to product packaging and design. When certain characteristics of the appearance of a product or its packaging signify the source of the product for consumers, this collection of characteristics may be a protectable form of IP known as "trade dress" under federal law.21 Similar to design patents, trade dress cannot cover elements dictated by function.22 With this caveat, trade dress may be used to protect "almost anything at all that is capable of carrying meaning, including the design of Coke bottles, silverware, and cell phones."23 A trade dress in product design is enforceable only if there is "secondary meaning," which means that the consumer has come to associate the product design with the source of that design.
Copyrights protect creative expression, but not articles having an "intrinsic utilitarian function."24 A product mixing both creative expression and utility will receive copyright protection for the expressive parts. For example, a copyright attaches to a computer program's human-readable source code and screen displays, but not its basic functions, because the source code and displays contain expressive content.25 The owner of a copyright has certain exclusive rights, including the right to reproduce and distribute the copyrighted work, and doing so without the copyright owner's permission is copyright infringement.
Initially, copying a physical object that is protected by a copyright without permission is still copyright infringement, whether that object is made by a 3D printer or a "whittling knife."26 Using a CAD program to create a copy of a copyrighted object is also copyright infringement, even if the resulting CAD file is never used to 3D print the object.
Moreover, copyright protection may extend to the instruction files.27 When the object in question is one not protectable by copyright (a "useful object"), then there is likely no copyright protection in a file made by a 3D scan of that object.28 Perhaps limited copyright protection will attach in an independently created CAD file that depicts a useful object, to the extent that creative elements of the design exist independently of the utility of the design. Moreover, analogizing from the case law involving building blueprints, while copying such an instruction file might be copyright infringement (to the extent the file has creative elements), printing an object described by this file may not be.29
When the object in question is protectable by copyright, copying a 3D scan file of an artistic object requires the permission of the copyright holder. Only if someone creates a new artistic object from scratch using a CAD program would the person have a copyright in the file, not if the file were the result of a scan or other photographic process.
Inventors seeking protection for their designs get them when they create the work to be protected. Registration with the U.S. Copyright Office provides some procedural advantages, and is required before filing suit.
Traditional enforcement strategies for IP rights must adapt to stop infringement from 3D printing. Current enforcement strategies focus on big players with deep pockets: manufacturers, distributors, and retailers.
Today, most complex 3D printing is not done in the home. Rather, individuals turn to centralized 3D-printing factories, such as Shapeways, which allow enforcement strategies similar to traditional ones. Shapeways prints, sells, and ships 3D objects based on designs posted by others, typically individuals. Customers visit the Shapeways site, select designs from one of the site's many “shops" or upload their own, and direct Shapeways to 3D print the designs on their behalf. If a 3D-printing factory prints and sells a patented design or something substantially the same, it could be liable for direct infringement.
On a related note, there are Internet trading posts for 3D-printable models that can be downloaded for free.30 Individuals create these files and upload them to the site for free distribution. While these trading posts may not be a direct infringer (since it does not actually print any objects), if the trading post knowingly distributes files that infringe a copyright or that could be used to print a patented design, it could be liable for indirect infringement, which includes inducing infringement and contributory infringement.31
But in the future, 3D-printed products may never pass through the hands of any major players. For example, an individual could scan a product at home and then print out a duplicate. Alternatively, a person could download an instruction file from a peer-to-peer file-sharing network and 3D print it. In these scenarios, neither the file nor the printed device passes through a large entity. Finding a handful of 3D-printed objects made outside the standard distribution channels is very difficult. Even when detected, suing a small infringer will often cost far more than the price of a single infringing device, so enforcement through the courts may not be cost-effective.
Confronted with these new challenges, inventors and designers will need to look for alternative enforcement options. Those options range from existing ones to new systems.
Even today, an inventor who finds his design on Thingiverse or a similar site can request the design's removal through the Digital Millennium Copyright Act's ("DMCA") takedown procedures.32 The DMCA requires that each site implement procedures for IP notice and takedown. This procedure has already been used to varying degrees of success. Paramount Studios, the copyright holder of the "cube" from the Super 8 movie, used this procedure to request that Shapeways remove a 3D CAD file for the cube's design.33 The owners of the copyright in the "Iron Throne" from HBO's Game of Thrones also used this takedown procedure.34 The key to this strategy is diligently monitoring locations with infringing files and designs, and promptly filing the takedown requests.
Alternatively, inventors could offer "authentic" instruction files for sale online. Individuals would have no need for an infringing file if they buy an authorized one. Perhaps the authorized file could come with some guarantee from the designer that the design has been tested for safety or durability. This is the theory behind iTunes, which generated 12.9 billion dollars in fiscal year 2012 selling digital music that in many cases is freely available on the Web.35 Following iTunes's model, inventors could sell "authentic" files to users frustrated with low-quality free designs. Selling or even giving away 3D-printed files that complement traditionally manufactured products might also increase brand and product loyalty. Smartphone maker Nokia, for example, recently released a free design for users to 3D print cases for a new Nokia smartphone.36 The producers of The Hobbit: Desolution of Smaug offered the digital blueprints for a particular "key" that figured prominently in the movie, to allow fans to 3D print the key on their own or through Shapeways.37 Although the design had some printing issues, it represented a forward-thinking step in which Nokia sought to marry its product with the 3D-printing trend. In the end, companies selling these files may be rewarded with a new revenue stream and less infringement.
In connection with the "authentic" file-distribution strategy, designers could employ a type of digital-rights management to protect designs for 3D printing. Today, some products are sold to consumers (such as video-game systems) that will only work if connected to the Internet. This Internet connection allows the game software to verify the validity of the license of the program. 3D-printing manufacturers might pursue (or be required to pursue if laws change) similar digital-rights management schemes. For example, 3D printers might need to check with a centralized database of patented designs or copyrighted instruction files to ensure that the object being printed was not infringing someone else's rights. Alternatively, a licensing entity may grant permission to print the object, but only with a proper access code from the designer. Without proper permission, 3D printers would refuse to print. Such a system does not exist, and would require a collaborative effort between rights-holding entities and the 3D-printing manufacturers.
Finally, individual rights holders could band together to create organizations to monitor and enforce their rights on their behalf. Such collaboration agreements would be more cost-effective than individual rights holders going after individual infringers. Using an ASCAP model,38 those wishing to use protected designs could even subscribe to the organization to have access to all the designs of the organization's members. Perhaps a micropayment scheme could compensate designers based on the number of people who use their designs.
3D printing presents unique challenges to IP rights holders. Traditional IP strategies may no longer work in this new environment, so people wanting to protect their inventions may need to broaden their approach. Procuring rights is only the first step. Rights holders will also need to approach enforcement flexibly and diligently to protect their ideas in the age of 3D printing.
Endnotes
1 3D Sys., Inc. v. Formlabs, Inc., Civil Case No. 12-cv-03323 (D.S.C. filed Nov. 20, 2012).
2 Stereolithography is an additive-manufacturing process by which successive layers are created by focusing a beam of ultraviolet light onto the surface of a pool of liquid photopolymer. Stereolithography, WIKIPEDIA, http://en.wikipedia.org/wiki/Stereolithography (last visited Nov. 17, 2013).
3 Formlabs, Inc., Form 1: An affordable, professional 3D printer, KICKSTARTER, http://www.kickstarter.com/projects/formlabs/form-1-an-affordable-professional-3d-printer (last visited Nov. 17, 2013).
4 Simultaneous Multiple Layer Curing in Stereolithography, U.S. Patent No. 5,597,520 (filed Apr. 25, 1994, and claiming priority back to Oct. 30, 1990) (issued Jan. 28, 1997).
5 3D Systems has filed another suit against Formlabs in another jurisdiction alleging infringement of eight additional patents related to stereolithography. 3D Sys., Inc. v. Formlabs, Inc., Civil Case No. 13-civ-7973 (S.D.N.Y. filed Nov. 8, 2013).
6 Christopher Mims, 3D Printing Will Explode in 2014 When Key Patents Expire, MASHABLE (July 22, 2013), http://mashable.com/2013/07/22/3d-printing-patents/. For instance, in February 2014, some patents covering selective laser sintering, another form of 3D printing, are set to expire. Selective laser sintering is a process by which a laser selectively fuses a thin layer of powdered material (e.g., plastic, metal, ceramics, or glass). After each cross section, the powder bed is lowered and a new layer of powder is applied on top, which is then selectively fused and so on. Selective Laser Sintering, WIKIPEDIA, http://en.wikipedia.org/wiki/Selective_laser_sintering (last visited Nov. 21, 2013).
7 Fused deposition modeling is another type of additive manufacturing where a solid object is created by layering thermoplastic material, which is heated to a semiliquid state and extruded from a nozzle controlled by a computer. FDN Technology, STRATASYS, http://www.stratasys.com/3d-printers/technology/fdm-technology (last visited at Nov. 17, 2013).
8 See Mims, supra note 6.
9 Chris Velazco, Meet Sense, 3D Systems' Cheap, Dead-Simple 3D Scanner For The Masses, TECHCRUNCH (Nov. 10, 2013), http://techcrunch.com/2013/11/10/meet-sense-3d-systems-cheap-dead-simple-3d-scanner-for-the-masses/.
10 Amended Jury Verdict, Dkt. No. 1931, Apple Inc. v. Samsung Elecs. Co., et al. (N.D. Cal. Aug. 24, 2012) (No. C 11-1846). The jury awarded a combination of damages related to design-patent infringement and utility-patent infringement. Because of how the verdict form was structured, specific damages amounts were not attributed to any one patent.
11 The judge later reduced the damages by around $450M and ordered a new trial on damages. On November 21, 2013, after a second trial on damages, a jury awarded $290M, taking Apple's total damages to around $840M. Damages Verdict, Dkt. No. 2822, Apple Inc. v. Samsung Elecs. Co., et al. (N.D. Cal. Nov. 21, 2013) (No. C 11-1846).
12 35 U.S.C. § 289.
13 Design patents can be used to protect the configuration and shape of a three-dimensional object or a surface ornamentation as applied to an object. Both types could be implicated by an infringing 3D-printed object.
14 Crocs Inc. v. ITC, 598 F.3d 1294 (Fed. Cir. 2010).
15 Dennis Crouch, Design Patents: Sailing Through the PTO, PATENTLYO (Apr. 2, 2009), http://www.patentlyo.com/patent/2009/04/design-patents-sailing-through-the-pto.html.
16 See, e.g., MakerBot Digitizer, MAKERBOT.
17 These files may be downloaded from reputable trading posts like Thingiverse, run by MakerBot, or by less reputable search engines like The Pirate Bay.
18 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 730-31 (2002).
19 15 U.S.C. § 1052.
20 Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995).
21 TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 28-29 (2001).
22 Id. at 30.
23 Deven R. Desai & Gerard N. Magliocca, Patents, Meet Napster: 3d Printing and the Digitization of Things, GEO. L.J. (forthcoming Oct. 2013), available at http://ssrn.com/abstract=2338067.
24 17 U.S.C. § 101; Mazer v. Stein, 347 U.S. 201 (1954).
25 Baker v. Selden, 101 U.S. 99 (1879); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983); Copyright Registration for Computer Programs, UNITED STATES COPYRIGHT OFFICE, 4 (Aug. 2012), http://www.copyright.gov/circs/circ61.pdf.
26 Michael Weinberg, What's the Deal with Copyright and 3D Printing?, INSTITUTE FOR EMERGING INNOVATION, 1 (Jan. 2013), available at http://publicknowledge.org/Copyright-3DPrinting.
27 But whether copyright laws protect CAD files used in 3D printing is an unanswered question. Michael Weinberg. See id. at 14.
28 See Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258 (10th Cir. 2008).
29 See, e.g., Robert R. Jones Assocs. v. Nino Homes, 858 F.2d 274 (6th Cir. 1988).
30 One such trading post is Thingiverse. MAKERBOT THINGIVERSE, http://www.thingiverse.com/ (last visited Nov. 17, 2013).
31 Indirect infringement is a form of secondary liability where a third party actively encourages another to commit direct infringement or provides a specially made component to another for the infringing activity. See 35 U.S.C. § 271(b)-(c).
32 MAKERBOT THINGIVERSE, Notice of Claimed Infringement or Violation of Rights; MAKERBOT THINGIVERSE, Intellectual Property Policy. For a great discussion of the background of the DMCA, see Weinberg, supra note 27, at 5.
33 Nate Anderson, Paramount: No 3D printing of our alien Super 8 cubes!, ARS TECHNICA (June 29, 2011, 5:21 PM), http://arstechnica.com/tech-policy/2011/06/paramount-no-3d-printing-of-our-alien-super-8-cubes/.
34 3D printing startup received takedown notice from HBO for IP infringement, WWW.3DERS.ORG (Feb. 13, 2013), http://www.3ders.org/articles/20130213-new-3d-printing-company-received-takedown-notice-from-hbo-for-ip-infringement.html.
35 Philip Elmer-DeWitt, How much revenue did iTunes generate for Apple last quarter?, CNN MONEY (July 21, 2013).
36 Chloe Albanesius, Nokia Releases 3D-Printing Kit for Lumia 820 Cases, PC MAGAZINE (Jan. 18, 2013).
37 Ricardo Bilton, 'The Hobbit' and 'Ender's Game' are making 3D printing Hollywood's smartest new marketing tool, VENTURE BEAT (Dec. 4, 2013), http://venturebeat.com/2013/ 12/04/the-hobbit-and-enders-game-are-making-3d-printing-hollywoods-smartest-new-marketing-tool/.
38 ASCAP is the American Society of Composers, Authors, and Publishers. It is a not-for-profit organization that collects licensing fees from users of music (such as a radio station or night club) created by ASCAP members and distributes those fees back to the members. ASCAP has over 450,000 members. American Society of Composers, Authors, and Publishers, WIKIPEDIA, http://en.wikipedia.org/wiki/ASCAP (last visited Dec. 2, 2013).
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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