Personal 3D printing has seen leaps in advancement in recent years, allowing users to render increasingly sophisticated creations from the comfort of their own home. These creations can include anything from gaming miniatures to medical devices, often for pennies on the dollar. With these advancements, however, comes a growing need for intellectual property owners to actively protect their property through trademark and copyright registrations.
To provide a general overview, modern 3D printing typically begins with the creation of an “STL,” a computer file containing information on the model to be printed. This model can be sculpted via computer aided design (“CAD”) software. 3D scanners, which can provide three-dimensional scans of existing physical objects, can also provide a foundation for shaping realistically sculpted CAD models. For example, a sculptor looking to print a miniature of their favorite sports car may scan a toy model to work on in CAD rather than recreate every detail from scratch. The CAD model is then exported into an STL file. “Slicing” software then converts the STL into instructions for the 3D printer to create the actual model. This is done by stacking thousands of thin layers of the printing material, often plastic or resin, atop each other until the particular component is complete—much like how a stack of paper can form a cube, but molded into virtually any shape imaginable. Users can then easily share these STLs online, including through a variety of popular sites that make such files available for free or for purchase.
Although the growing application of such technology is exciting for entrepreneurs and hobbyists, it can also pose a number of challenges for those who are seeking to maintain control over their branding and copyrighted material. §§ 32 and 43 of the Lanham Act already prohibit the unauthorized use of another’s mark in commerce where it’s likely to cause confusion, while § 106 of the Copyright Act gives copyright owners the right to reproduce, distribute, and prepare derivatives based on their original works. 3D printing allows users to potentially infringe on those rights in a scope that may be difficult to fully capture.
Take for example the growing popularity of tabletop gaming. In addition to traditional board games and card collections, many popular games have for years incorporated the use of miniature models that can include anything from futuristic space armies to rampaging beast hordes. With many model collections often numbering in the hundreds or even thousands, 3D printing presents an alternative to an often pricey trip to the local hobby shop. Rather than purchasing physical models, a collector can download a file for a remarkably similar—if not virtually identical—character and reproduce a potentially inexhaustible number of models on their own. Adding insult to injury, these models are often marketed under the original models’ trademarks and can consist of far less reliable materials, causing irreparable damage to its brand down the road.
So what to do about this emerging problem? To be clear, not every STL will be a question of trademark or copyright. The works at issue will still have to implicate either (1) the use of one’s mark or trade dress in commerce or (2) work that is actually protectable by copyright, separable from purely utilitarian features.1 Copyright owners will also want to consider potential fair use defenses as outlined under 17 U.S.C. § 107, such as noncommercial uses or uses with no impact on any potential market. This means that while users selling knockoff models online may present a viable infringement claim, the ones sculpting and printing out models for their own personal use at home may not.
In dealing with the former, one potential avenue from a commercial standpoint is to sell or license one’s own works and goods for 3D printing. But while digital rights management technology can restrict the unauthorized copying of music or movie files purchased or streamed online, there’s currently no clear analogue to STL files, which otherwise can’t store metadata. And as discussed above, outsourcing the actual manufacture of your work may be risky when it comes to ensuring quality control—as many of its practitioners can tell you, 3D printing is by no means an exact science and different printers can produce greatly different results.
Instead, for both trademark and copyright owners the most feasible answer may ultimately be an active monitoring and enforcement regime at a time when many users may not even be aware what constitutes infringing activity. By finding and addressing isolated cases of online infringement in what is still a relatively nascent field, trademark and copyright owners can help prevent them from growing into bigger problems further down the road and establish a reputation as vigorous defenders of their intellectual property.
While industries such as music and film have faced the problem of online infringement since the early days of the Internet, 3D printing now means many more will have to adjust to the reality that their products—and brand—are as downloadable as the songs on their phone. Until technology to protect IP catches up to the technology used to create it, the solution may often have to come in the form of the old-fashioned but time-tested cease and desist.
[1] As outlined by the Supreme Court’s landmark decision in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).
The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.
