Advances in additive manufacturing are making the work of counterfeiters easier, faster, and more accurate than ever before, but present vexing problems for intellectual property rightsholders. While counterfeiting via 3D printing is nothing new, stronger materials now being used allow for potential production of robust 3D-printed molds that allow mass-produced counterfeits. Creative IP strategies and a broad approach to IP can equip rightsholders with tools that may help curb this ongoing challenge.
The World Today in Additive Manufacturing
Additive manufacturing, also known as 3D printing, is a process of building up an object one layer at a time, allowing for complex and precise geometries not otherwise attainable. The results can be lighter, stronger, and simpler than their traditionally manufactured counterparts. Taken to its extreme, a 3D printer allows anyone to create any object on demand in their home, or in the case of counterfeiters, in their production facility anywhere in the world. 3D printing has been heralded by some as the next industrial revolution, potentially enabling a dramatic restructuring of the manufacturing, shipping, warehousing and distribution industries. The thinking goes: why ship products around the planet for storage in massive warehouses, if they can be printed locally on demand? While this notion still faces hurdles, 3D printing is far from its infancy, and is already reshaping industries as it matures from a novelty to a legitimate manufacturing force.
For more than a decade now, consumer grade 3D printers have been available for a few hundred dollars and can print just about anything that will fit within their print space, typically about a 10-inch cube.1 Vast online repositories contain digital models for objects that can be downloaded, modified, and printed.2 Many designs are for handy home gadgets: toys, cable clips, phone stands, toothpaste tube rollers, etc. that are typically unencumbered by IP rights. The sites typically ask uploaders to confirm their designs do not infringe the IP of others. The power of these sites to quickly distribute designs has been made even more clear in recent months with designs for products relevant to Covid-19 efforts. Online models are available for printing face masks, ventilator valves, nasal swabs, and more.3 This effort illustrates how distributed additive manufacturing can positively disrupt the traditional supply chain. But through less legitimate distribution channels, the same principle can be used to distribute counterfeit models. And, when the models are printed on more robust industrial printers, their capabilities are greatly increased.
While consumer grade 3D printers are typically limited to low cost plastics and small sizes, industrial machines are not so constrained. The past decade has seen dramatic advances in 3D printable materials, including metals, ceramics, and even flexible rubbers. With these materials, 3D printers can make strong objects that look near or as good as traditionally manufactured products. Sometimes 3D printers can be used to quickly make molds to be used with more traditional manufacturing processes, like injection molding. These printers, coupled with the availability of 3D scanners that can create digital models, provide a potential workflow to create similar counterfeit products that are difficult to trace.
Distributed creation of 3D objects that potentially infringe others’ IP rights presents a problem. What is the IP rightsholder to do when faced with a distributed base of end-user manufacturers who can easily reproduce a physical object that embodies their IP rights?
Building an Ecosystem to Protect IP Rights
Most companies consider utility patents as the first line of defense. But seeking IP protection on the ecosystem around the end product, in addition to its novel functionality, may also provide valuable recourse against additively manufactured counterfeits. Design patents, trademarks, and copyrights can all protect IP interests in ways that will hopefully be enforceable in a meaningful way.
A design patent is helpful because it covers the ornamental design of a functional article, independent of the material or manner of manufacture. In drafting, consideration should be given to which aspects of product are most easily identified with the original design. A starting point may be to obtain a design patent over the product’s outer contours. But it may also be advisable to file for design patent protection over distinctive sub-features which could be counterfeited. If a distinctive bend or flourish gives a product its appeal and would be most likely copied, it should be protected through a design patent. Design patents can also be used for tooling that creates the final products. For example, design patents can be obtained for molds used in injection molding or for articles used in the assembly of final products. Creating an ecosystem of design patent protection around the final product and the components used to assemble it maximizes options for the rightsholder in later enforcement proceedings.
Trademarks should also be included or even built into designs for products where possible, to allow consumers to differentiate between legitimate and counterfeit products. If a counterfeiter copies the trademark or an aspect of a product protected by trade dress, the trademark holder is afforded additional recourse. In certain materials, companies can also embed trademarks in design files that might not be viewable to the naked eye but are discernable with a scanner or under certain lighting conditions.4 These embedded watermark-style trademarks do not stop counterfeiting, but may provide some assurance to the knowledgeable end purchaser that the product is authorized.
Copyrights are also a valuable part of the picture. Photos of a product, advertising materials or marketing literature, and even the code associated with the digital model for a product design are all protectable through copyright. These kinds of copyrights provide yet more recourse for IP rightsholders over counterfeiters who might include copies of these materials with the counterfeits they seek to sell either on sales websites or “in the box” with the shipping product. Notably, many websites that distribute 3D-printable models come with click-wrap agreements that effectively place the design into the public domain. Copyright holders should carefully monitor the distribution of their models and avoid sharing their content with such sites.
Enforcing IP Rights Over Additively Manufactured Counterfeits
In a world where digital models can be sent around the globe and 3D printers allow reproduction of objects anywhere by anyone, IP rights enforcement can be challenging to say the least. However, Congress and the courts are working to keep up with technology to provide avenues for IP rightsholders to protect their assets.
The 1998 Digital Millennium Copyright Act (DMCA) established a procedure by which a copyright owner can ask an online provider to take down a work from its website that infringes the requester’s copyright. Although the DMCA predates widespread 3D printing, it has been used by holders of copyrighted digital models for 3D printable objects in the same way, to have websites take down digital models that infringe upon their copyrights. The process is quicker and much less expensive than involving the courts, and it can be a powerful tool for removing content from where it might otherwise be poised for viral distribution. The downside is that identifying each offending listing requires time and usually requires a separate submission to the host’s takedown procedure. Change may be coming to the DMCA though. In May 2020, the US Copyright Office released a statement asserting that the current DMCA provisions do not adequately balance the rights of IP rightsholders with internet service providers the way the act was intended.5 As a result, Congress may revise the DMCA to achieve that balance and further emphasize the power and importance of securing copyright protection. Despite the recent critique, this DMCA’s takedown procedures are widely used and will continue to be an option for holders of copyrights in digital 3D models.
Beyond copyrights, some websites provide a similar takedown process for product listings that are flagged by patent holders as infringing. Amazon, for example, provides procedures for holders of design and utility patents to flag infringing products on its site.6 While Amazon’s site does not provide details on how it decides on next steps, it stands to reason that a design patent with figures that easily demonstrate infringement is likely to lead to quicker resolution than a utility patent with dense claims requiring involved analysis. Although Amazon’s patent takedown procedures do not appear to be the norm, they may have a significant impact given Amazon’s clout in the market.
If a digital takedown notice won’t do the trick, litigation may be the best recourse. Enforcement of US IP rights typically comes in federal district courts, resulting in money damages or sometimes an injunction, and is certainly an option to tackle counterfeiters. However, federal courts have no jurisdiction over foreign entities with no US presence. This poses a problem for IP rightsholders seeking to enforce their US IP over foreign pop-up entities with nothing more than an online virtual storefront and a business in imported counterfeit 3D-printed products. Enforcement at the US International Trade Commission (ITC) may provide a solution. The ITC is an administrative agency designed to exclude goods found to infringe a US patent or trademark from being imported. And, through what is known as a general exclusion order, the ITC can exclude all products that infringe even if the importing entity is not named in a proceeding. The ITC does require that there be an industry in the U.S. practicing the patent and a substantial economic investment in the US related to the article practicing the patent, so it is not necessarily an option for all patentees. However, for the right entity, the ITC offers strong enforcement options against foreign infringement and could be an option to prevent importation of additively manufactured goods from abroad.
Additive manufacturing is going to continue to evolve and present new opportunities for creative design, manufacturing and, inevitably, counterfeiting. Accordingly, IP owners must adapt. By thinking of IP protection broadly and including protection of an ecosystem through design patents on products and molds, copyrights on photos, advertising materials, and code, trademarks on logos, colors, and brands, and enforcement through all avenues, IP rightsholders can effectively protect their market share and curb counterfeiters.
1 See, eg, MakerBot, www.makerbot.com (last visited 1 June 2020).
2 See, eg, Thingiverse, www.thingiverse.com (last visited 1 June 2020).
3 See, eg, Search – Thingiverse, https://www.thingiverse.com/search?q=covid (last visited 1 June 2020).
4 See Joel Zlotnick et al, 3D Printing, counterfeiting and risk, Keesing Platform (12 June 2019), https://platform.keesingtechnologies.com/3d-printing-counterfeiting-and-risk/
5 See generally US Copyright Office, section 512 of Title 17: A report of the register of copyrights (2020), https://www.copyright.gov/policy/section512/section-512-full-report.pdf
6 See Amazon.com – Report infringement, https://www.amazon.com/report/infringement (last visited 1 June 2020).
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