Authored by John F. Hornick and Carlos J. Rosario
Many people believe 3D printing will disrupt IP law as it becomes mainstream. Now, three companies are petitioning the highest court in the U.S. to create a new test to delineate what types of objects can be copyrighted. The three companies, Shapeways, Formlabs, and Matter and Form, submitted a "friend of the court" brief to the U.S. Supreme Court in association with a clothing case, where the Court may address the question of what it copyrightable.
Generally, 3D printed objects that are ornamental and nonfunctional are copyrightable. For example, a 3D printed sculpture. However, 3D printed objects that are purely functional are not copyrightable. For example, a wrench or a fuel nozzle. In cases where the object is both ornamental and functional, the line is not clear.
Under the U.S. Copyright Act, to be copyrightable an object’s design must incorporate "pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Different courts have applied this test in different ways. Using this test, it is difficult for courts to determine whether things like belt buckles, door knobs, or mannequins are copyrightable. As a result of not knowing with certainty what is copyrightable and what is not, undesirable things may happen. As Shapeways points out in its brief, companies attempting to assert copyrights may sue to protect objects that may not be copyrightable.
As a result, makers and companies may be less likely to print objects for fear of liability. This is commonly referred to as a chilling effect. Demanding that internet service providers take down nonornamental 3D printable designs may also result in removing digital blueprints that are not copyrightable. In any case, the lack of clarity in the law could potentially inhibit innovation, and Shapeways, Formlabs, and Matter and Form are asking the highest court in the land to do something about it.
Currently, the U.S. Circuit Courts of Appeals, which are one step below the Supreme Court, have applied an amazing ten different tests to determine whether an article is functional or not. In 1980, the Second Circuit (which includes New York) found that belt buckles were akin to jewelry, and that their design was ornamentation and separate from keeping "trousers at waist level." In 2004, the Seventh Circuit (which includes Chicago) found that mannequin heads were not functional because the designer’s judgment was not affected by functional concerns. In 2005, the Fifth Circuit (which includes Texas) found that casino uniforms’ ornamentation was not conceptually separate from their functionality because the uniforms were not marketable separate from their utility.
Tests like these have been applied to objects including shoes, furniture, flying saucers, and adult toys. Other examples include decorative bicycle racks, which were found to be useful and not copyrightable; toy airplanes, which were found to be ornamental because they were miniature real airplanes, and thus copyrightable; ornate lighting fixtures, which were found to be useful and not copyrightable; and lamp bases, which have been found to be ornamental and copyrightable.
As you can see, there is no clear line as to whether an object that has some function may be copyrightable. Shapeways points out that while the Sixth Circuit (which includes Michigan and Ohio) has found that portions of cheerleader outfits (such as tassels) can be copyrighted, the Second Circuit held that decorative portions of prom dresses are "intrinsic" to the overall functionality of the dress. What a mess.
Since 3D printed designs may be sold all over the country, Shapeways argues that this ambiguity in copyright law "will chill innovation and creativity, increase litigation over copyrightability [as 3D printing increases], and disrupt the nationwide marketplace for mixeduse objects, and impose these inefficiencies on consumers." Shapeways is probably right. Just as increased patent litigation may cost consumers in the end, increased copyright lawsuits may end up costing consumers in the long run.
We will be watching closely to see if the Supreme Court decides to make a brightline test to determine whether an object is copyrightable when it possesses some functionality. Until then, stay tuned! Originally printed in 3D Printing Industry on March 8, 2016. 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.