How to fight infringement in a 3D world
3D printing has burst into the public consciousness in recent years with what seems like a Faustian bargain for designers, inventors, and manufacturers: the promise of a new ‘industrial revolution’ but at the cost of widespread theft, perhaps leading to complete devaluation, of intellectual property.
3D printers are devices that take a digital design file and build, layer by layer, a corresponding three-dimensional solid object. Beginning with a February 2011 cover story in The Economist, scores of articles have warned that 3D printing will facilitate widespread unauthorised copying of patented, copyrighted, and trademarked goods. So what is the solution—how can IP owners monitor and prevent infringement via 3D printing? That question has been much discussed but answers have proved elusive.
We think there is a very good reason why no-one seems to have a foolproof strategy for preventing 3D printing IP theft: it does not exist. But do not despair. Forward-thinking companies have a tremendous opportunity now to create a 3D printing brand strategy based on mutually beneficial relationships with consumers, designers, and the 3D printing community, and some are doing so already. This will be the best way for IP owners to establish a precedent for customers to pay for authorised 3D printing designs and products, before customers become accustomed to free unauthorised copying.
Current scenarios
Consider this example of an increasingly common scenario. A copyright owner discovers design files for chess pieces based on characters from its popular television show posted on a site for 3D printing enthusiasts. End users may download the files and 3D print the pieces in their own homes. The conventional response is purely reactive: the IP owner serves a takedown notice on the hosting site or a cease-and-desist letter on the designer who created the file, and follows through with the threat of litigation if necessary to remove the infringing derivative work.
Problem solved, right? Well, no. The digital file has been downloaded hundreds or thousands of times already. It is ‘in the wild’—those downloaders can 3D print chess sets, or send the file to friends, or post it elsewhere online, or modify it to create new derivative works. And who knows how many other unauthorised derivative designs are out there online that the copyright owner missed entirely?
This purely reactive strategy is like playing the children’s game Whac-a-Mole: an infringement is ‘whacked’ once, only to pop up again elsewhere in an endless cycle. Meanwhile, the copyright owner may have alienated fans who only intended to merge their passions for 3D printing and the television show. IP owners should resist the urge to rely solely on this reactive strategy, which will often prove futile and counter-productive.
Coincidentally, a company that sells the Whac-a-Mole game, Hasbro, pioneered a more proactive approach. Hasbro partnered with Shapeways, an internet marketplace and 3D printing service, to create the website SuperFanArt. The partnership provides licensed Hasbro designs for 3D printing using Shapeways’ service; specifically, selected 3D printing designers are allowed to create and sell new designs based on Hasbro’s My Little Pony characters. The partnership is growing—the website is now soliciting fan designs for other popular Hasbro brands including Transformers.
This type of collaboration benefits consumers, designers, and IP owners. Customers can purchase unique, professionally designed 3D printing files or prints, designers bring new ideas to life for a commission, and the IP owners are compensated, expand their product offerings, and still exercise control over their brands.
“While the industry is in its relative commercial infancy, companies should invest in the future by looking for ways to pursue legitimate 3D printing avenues and make them more accessible.”
Other companies have gone even further. ROCCAT, a manufacturer of computer gaming accessories, not only sells 3D-printed customised add-ons for its devices, it also makes the source files available for download.
Printing v file-sharing
To understand why a more proactive strategy may work for 3D printing, it is instructive to understand the differences between 3D printing and file-sharing services that facilitated widespread unauthorised copying of music and movies beginning in the 1990s. Many commentators have noted similarities between 3D printing and file-sharing, leading to this doomsday prediction: those file-sharing platforms showed that many people will steal digital files rather than pay for them. The music industry’s sales cratered.
The Recording Industry Association of America’s (RIAA) attempts to stem the tide through lawsuits against individual copyright infringers became a public relations nightmare. While iTunes and streaming music services eventually recouped some of those revenues, sales never fully recovered and copying remains endemic. Some argue that this scenario will be repeated for 3D printing but on a much larger scale: as the technology advances, more and more physical objects can be 3D printed, and therefore easily copied. Eventually, makers of all types of goods could suffer the music industry’s fate.
While the RIAA apparently believed that it had no choice but to begin a litigation campaign in 2003 due to rampant illegal downloading, 3D printing in 2015 presents a quite different situation. Most important, 3D printing is not purely digital: the digital file containing an object’s design is analogous to a digital music or movie file, but there still must be a printer somewhere to convert that file into a finished good.
The consumer 3D printer market is growing but still small, with technology researcher Gartner estimating worldwide shipments of just over 200,000 3D printers in 2015. Low-end consumer models still cost hundreds of dollars and are limited in what they can make in terms of materials and colors. More fully featured models (though still somewhat limited in what they can print) cost thousands of dollars, outside the price range and technical ability of many consumers. In short, unlike the music industry, it will be years before average consumers are able to create unauthorised copies of many types of IP-protected objects even if they wanted to.
There is another key difference between 3D printing and music file-sharing: if the stereotypical music downloader was a university student looking for free party music, the equivalent 3D printing file downloader is a maker tinkering with existing designs as a starting place to create something new. This could be the My Little Pony fan, or the student customising his or her tablet stand. Right now 3D printing primarily attracts those who wish to innovate, not steal—potential allies and resources for IP owners who chose to collaborate.
A third key difference is that because 3D printing is still in a relatively early stage, the online markets for downloading files and printing are still being established. With music downloading, the illegal services established themselves with millions of users first; later-arriving legitimate services such as iTunes faced an uphill battle. By partnering with legitimate 3D printing services such as Shapeways now, IP owners can help establish online marketplaces that respect IP rights and marginalise unscrupulous sites.
Reward rather than threaten
By thinking ahead and looking for opportunities like the Shapeways-Hasbro partnership, IP owners can monetise their rights in the 3D printing space, and perhaps more important, steer consumers towards respecting and paying for IP rights with incentives instead of threats. The early monetary returns on these endeavours may be nominal until prices for printers and online print services reach a level that can sustain the public’s interest. But as 3D printing becomes more mainstream, early adopters will be best positioned to capitalise on its growing popularity.
Proactive efforts could take the form of restrictions instead of collaborations, of course, but technological efforts to prevent 3D printing copying will face practical difficulties. For instance, digital rights management (DRM) schemes are likely to be even less effective for 3D printing than for music and movies in protecting against unauthorised copying. Consumer products already exist that take scans of real world physical objects and convert them to 3D digital models, which then can be used in 3D printing copies of the objects; examples include Fuel 3D Technologies Limited’s Scanify and MakerBot Industries’ Digitizer Desktop 3D Scanner.
It is difficult to see how a DRM scheme could be used to prevent copying of physical objects through this method. No doubt, some will try: researchers at the Virginia Polytechnic Institute and State University have suggested using nanomaterials in goods as a ‘signature’ to stop counterfeiting, as described in Scientific American. But 3D printing technology will probably evolve around any such efforts, and in any event at present these ideas are still in the developmental stages.
We are not suggesting that IP owners simply forgo enforcing their rights if they are infringed. Not all 3D printing end users will look to develop new designs or develop new and useful products; some will take advantage of the technology for simple copying. There will be bad actors, and IP owners will need to pursue infringement claims in some circumstances. But this is not unique to 3D printing, of course.
What we are suggesting is that 3D printing can become a tool to enhance, not destroy, the value of IP rights. While the industry is in its relative commercial infancy, companies should invest in the future by looking for ways to pursue legitimate 3D printing avenues and make them more accessible and accepted. Only then will the value of 3D printing IP rights bring owners a return on their investments.
Vann Pearce is a partner at Orrick, Herrington & Sutcliffe in Washington, DC. He can be contacted at: vpearce@orrick.com
Chris Higgins is a senior associate at Orrick, Herrington & Sutcliffe in Washington, DC. He can be contacted at: chiggins@orrick.com
This article reflects the authors’ views, not necessarily those of their employer or clients.
