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Schantz: Infringing IP in your home with 3-D printing

December 16, 2015
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By Matthew Schantz

If you have a solid gift-giving budget this season, and someone on your list has “maker” tendencies, you just might be putting your loved one on the bleeding edge of intellectual property with one of the newest technologies for creativity, invention, and (knowing or otherwise) infringement: 3-D printing. Some cultural segments may develop and thrive in a freely licensed, open-source-style community or one like what we see today in the “Creative Commons,” but until intellectual property owners and their lawyers figure out how to deal with 3-D printing hobbyists, and the maker community learns the applicable rules, we may see “interesting times” for those playing on this edge.

Traditional intellectual property law clearly applies to common uses for 3-D printers. If one creates an original, three-dimensional work of art and prints it using a 3-D printer, the artist will own copyright in that “sculpture” and could register and enforce those rights just like the author of a book would. Similarly, if an individual 3-D prints an insulated cup with unique, nonfunctional (i.e., “ornamental”) features, he could file to protect those features with a design patent. And if an individual made a new and non-obvious device that solved an engineering problem, she could file to protect that invention with a utility patent.

On the other hand, the fluid exchange of design information masks the difficulty of determining whether a particular design is protected by someone else’s rights. That 3-D-printed movie character toy is probably protected by copyright, and the sports team’s logo on your 3-D-printed Christmas tree ornament is almost surely a trademark. Even your engineering solution-invention might have been someone else’s first, and six months from now it could be covered by a utility patent. Continuing to make, use, sell, or offer that device for sale would then be infringement of that patent. Even distributing the design file so that others can make the device could be “inducing infringement” of the patent. It might be unlikely that an intellectual property rights holder would find out about an individual item made with a 3-D printer in the privacy of one’s home, but the strict-liability nature of most intellectual property torts, the availability of significant statutory damages for some, and the frequent traceability of online activities make careless production of downloaded designs a somewhat risky proposition.

Adherence to a few principles will avoid many of the intellectual property potholes on the road of 3-D printing. One should clearly avoid uploading content for others’ access or use that includes someone else’s character, brand, image, or likeness without that person’s permission. Any design that falsely suggests that it came from a particular third party or falsely indicates an affiliation with a third party could raise a trademark concern. And designs that simply copy highly designed parts of products made by sophisticated entities (say, a laser-scanned copy of the grill of a luxury car) are at fairly high risk of infringing a design patent. These concepts might not yet be “common sense” for those in the 3-D printing community.

As the 3-D printing ecosystem matures, its roots in the maker community might help deal with some of these limitations and dramatically increase the amount of content available for new community members to work with. We have seen that some software developers use copyright law to keep others from taking their code and putting it to their own uses, while others use copyright law to encourage redistribution of their software and improvements to it by means of open-source licensing. In the same way, some creators of 3-D printing designs might choose to license their intellectual property rights in their creations under an “open-source” model that allows others to use and build on their work. Hobbyists who value popularity and standing in the community could find this approach particularly appealing. Experts in 3-D printing design could parlay work on low-value designs with mass appeal into perceived expertise and high-value commercial design work. Such contributions by hobbyists and commercial interests alike will broaden the universe of resources, knowledge and works available to the community of 3-D printing designers.

It would also be helpful to the 3-D printing community if creators would simplify licensing of their designs using a set of standard terms, perhaps built on the existing licensing system known as Creative Commons. In the current Creative Commons system, content creators offer their works to the general public using one or more selections from a menu of licensing terms, such as a commitment to use the work only for noncommercial purposes, only on the condition that derivatives be licensed on the same terms, only if attribution to the original author is maintained in a certain way, and the like. As long as a person or entity is willing to accept these conditions, they can use the work without negotiating an individual license from the content creator. While 3-D printing content creators might wish to adopt some of these standard terms just as they are currently applied to photographs and other digital content, a customized, but simple, standardized, and easily understood set of license terms could facilitate even greater development of libraries of 3-D-printable content.

The 3-D printing community might grow from homebrew and maker roots to develop an open-source subculture or develop standard terms that 3-D printers (either the people or the devices) could understand, but for now, as far as intellectual property is concerned, “printer beware.”•

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Matthew Schantz is a member at Frost Brown Todd LLP whose practice areas include intellectual property law and litigation and privacy and information security law. The opinions expressed are those of the author.

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