3D Printing - OCBA - 081214

BEUSSEWOLTERSANKS &MAIRE, P.A.Intellectual Property Law

Presented by:

Kevin W. [email protected]

-and-Cian G. O’[email protected]

3D Printing:Changing the Practice, or Business As Usual?

Orange County Bar Association – Intellectual Property Committee

Presented to:

August 12, 2014


Overview of 3D Printing

3D Printing – Ubiquitous

Orlando Sentinel

New York Times


3D Printing – What You Need– 3D Printer – works by adding layer upon layer of

print material. Also known as “additivemanufacturing.”

– Print media/material• i.e. instead of toner or ink, spools of plastic, concrete,

other material– Software to design the object and to direct the

printer– 3D scanner (optional)

• Allows an object to be scanned and converted into aprinter-readable file

3D Printing – What You Need• 3D Printers:


3D Printing – What You Need• Print Media/Material

– Plastic filament• http://store.makerbot.com/filament

– Metal• Some systems “weld” the metal into the desired shape.• Other systems use 3D printing to make a wax model, then create a

plaster cast to use with traditional metal-casting techniques.– http://www.shapeways.com/materials/steel?li=nav

– Food-grade material• May include powdered insects, grass, beet leaves, chocolate, and

more.• http://www.businessweek.com/articles/2014-01-28/all-the-food-

thats-fit-to-3d-print-from-chocolates-to-pizza


3D Printing – Plastics


3D Printing – Metals• Print Material: Metal


3D Printing Food


3D Printing Food• Print Material: Food-grade

Laser-sintered “MealCubes” fromgranulatedmealworms.

Source: TNO of theNetherlands

(worms)


3D Printing – What You Need• 3D Scanner:

– MakerBot Digitizer• http://store.makerbot.com/digitizer

– Trimensional• http://www.trimensional.com/printing/

– Reconstructme – uses XBOX Kinect camera• http://reconstructme.net/


3D Printing – What You Need• MakerBot Digitizer


3D Printing – What You Need


3D Printing - Marketplaces

• Shapeways: www.shapeways.com• Thingiverse: www.thingiverse.com• makexyz: www.makexyz.com• CGTrader: www.cgtrader.com• And many more…


3D Printing - Marketplaces


3D Printing – Beyond the DesktopCompanies and researchers are already using living cells as “ink” to print tissue andorgans.

http://www.newscientist.com/article/dn24019-accidentally-cut-your-ear-off-just-3d-print-a-new-one.html


3D Printing – Next…?

http://3d-babies.com/


Putting It All Together

http://www.today.com/money/barbie-readies-battle-3d-printed-medieval-armor-1D79928360

http://www.shapeways.com/model/2155138/faire-play-bow-and-quiver.html?li=shortUrl

http://zheng3.com/faire-play/


Putting It All Together


Legal Implications


Legal Implications

• 3D Printing is a “disruptive” technology.• Acquisition and Enforcement challenges will

change.• Will you now pursue the individuals printing at

home and/or sellers of 3D data files?• IP infringement detection may be harder.


Legal Implications• 3D printing infringement players:

1) 3D Printer Manufacturers2) Raw Materials3) Software files (i.e. CAD)

* Written by the user* Acquired from a Friend** Downloaded from a site that hosts CAD files.

• Suits against players (1) and (2) likely will not succeed sincethey may be used for non-infringement articles.Remember Betamax?

• Suits against player (3) may be similar to file-sharing suitsand the MP3/Napster era.


Legal Implications

• Copyrights• Trademarks and Trade Dress• Model Releases• Utility Patents• Design Patents


Legal ImplicationsCopyright

• If an object is original, it can obtain copyrightprotection.

• Copyrightable dolls, action figures, figurines, toys,etc. are especially vulnerable to 3D printing.



• Exact digital modeling may not meet the originalityrequirement.– Meshwerks, Inc. v. Toyota Motor Sales, U.S.A., 528 F.3d

1258 (10th Cir. 2008).

• Modified digital reproductions of a public domainobject may be copyrightable.– Osmet Models, Inc. v. Mike’s Train House, Inc., 97 U.S.P.Q.

1395 (2010).



– Protection for printed article?• Are design elements of the printed article conceptually

separable from the utilitarian elements?– Protection for Data/CAD files used to create the

printed article?• Created by a scan of the printed article or by an independent

author using a CAD program?– Does it matter? (Meshworks/Osmet)

• Use some sort of DRM to take advantage of the DMCA’s anti-circumvention provisions?

– DRM on CAD files?– DRM in the hardware/consumables?


Legal ImplicationsTrademarks & Trade Dress

• Remember, “almost anything at all that is capable of carryingmeaning” may be a trademark. Thus, the Lanham Act is not“restrictive.” Qualitex v. Jacobson, 514 U.S. 159, 162 (1995).

• Essentially, if trade dress is distinctive (meaning it is capable ofidentifying source and is non-functional), one may obtaintrademark protection.

• Post-Sale Confusion Doctrine: Infringing use can injure a markowner even if purchasers of infringing product are not confused—protects the “prestige” of a mark. Mastercrafters Clock & Radio Co.v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464 (2dCir. 1955).


Registered Trade Dress

U.S. Reg. No. 4,260,075

Apple’s “Smart Cover” for iPadU.S. Reg. No. 2,357,459

Gretsch rectangular guitar design –Bo Diddley signature guitar


Legal ImplicationsTrademarks and Trade Dress

• Since creating a 3D object requires a 3D image file,placement of word marks/logos on objects mayassist in identifying 3D copies.– Will take effort to remove the mark from both the CAD file

and the printed article– Consider embossing your brand so that scans pick it up.

Simply using different color won’t help.• Keep track of CAD file sales for secondary

meaning/dilution (fame) purposes – include mark ontrade dress to reinforce source.


Legal Implications

Model Releases

• 3D scanning and printing allows companies to implantconsumers into a scene unique or specific to the company.

• Disney is using 3D printing to allow guests to be “printed” intofamous scenes and characters.

• Model releases which provide for digital imaging and storagemay be needed depending on future uses of such images.

Legal ImplicationsModel Releases

http://www.3ders.org/articles/20131024-disney-predicted-3d-printer-in-every-home-within-a-decade.html


Legal ImplicationsUtility Patents

• Provides patent protection to utilitarian function of aninvention.

• May cover products unknown at the time of patenting (ifcovered by patent claims).

• Though 3D printing will not interfere with obtaining utilitypatents, patent enforcement may become problematic.--Think $$$$: Who and where to sue if thousands of at-homemanufacturers exist.--Contributory or induced infringement claims may be limitedin value if 3D image files are shared freely, peer-to-peer, etc.


Legal ImplicationsUtility Patents

• Many patents are directed to a system, device, orapparatus.

• Having claims directed at specific subsystemswithin the system (those which may be easilyreplaced using 3D printed parts) may be one wayto enhance patent protection.

• Also, direct claims toward the materials used in3D printing and/or toward 3D printing software;


Legal Implications

• Example:– A system comprising:

• A widget;• A cover configured to surround the widget; and• A base to support the cover and widget.

– A cover comprising:• A surface configured to surround a widget that is part

of a system;• An attachment point configured to attach to a base.


Legal ImplicationsDesign Patents

• Design patents provide for protection of anornamental design of an object.

• May be used to protect ornamental designs ofreplacement parts or portions of replacementparts.

• Cheaper to obtain than utility patents• Quicker to obtain (13-15 months)


Example of Design Patent

TOY FIGURE (aka “Yoda”)US D265,754


Legal Implications


Expiring Patents• Fused deposition modeling (FDM): patents expired

around 2009 and led to price drop in 3D printersemploying this technology. Plastic/metal material isfed to a nozzle (1) that heats the extruded material (2)into layers from the bottom up. CAM (Computer AidedManufacturing) software controls thevertical/horizontal movement of the nozzle 1.

• In January 2014, patents expired covering a lasersintering technology for 3D printing, in which layers ofpowder are sintered with a laser.

• Is the patent system helping or hurting the availabilityof 3D printing technology?


Legal ImplicationsFuture Enforcement Tools?

• Digital Millennium 3D Printing Act?--Impose notice and takedown rules on the sites that host 3D printing filesand software?

• www.thingiverse.com and www.shapeways.com already have takedownpolicies in part because their CAD files may have copyrighted content.– Does hosting data files which infringe create secondary liability

• Does the DMCA Notice and Takedown protocol cover this now?– Probably not because with 3D printer CAD files, the copyright owner

likely owns copyright in the printed article and not necessarily theuser-generated CAD file.

– Takedown request would be based on future capability to infringe.


Current IP Takedown Policies• User policy states “the Company has adopted and

implemented a policy respecting intellectual property thatprovides for the removal of any infringing or unauthorizedmaterials”

• Takedown procedure for Copyright: submit your name, theprotected work, identify the alleged infringing material, astatement that you believe this in good faith. Uponinvestigation, host site may remove content.

• For Non-Copyright infringement: some sites haveimplemented the DMCA procedure for “your intellectualproperty (other than copyright)” requesting the sameinformation as the DMCA procedure above, with modifyinglanguage for patent/TM (e.g. “please provide the patentnumbers”)


What Can Be Done?• Possible regulation of gatekeepers such as 3D

scanner or printer makers and Internet hostingsites– Allow only approved files– Have ISPs help monitor through “safe harbor” law for

secondary liability– Must balance any potential laws against individual

rights and benefits of technology involved• Attack the technology?

– DRM on files– Restrictions built into the hardware


Thank You

3D Printing - OCBA - 081214

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