By Ian Johnson ‑ December 6, 2016
3D printing used to be a product design company’s domain but it is quickly becoming an affordable technology. How should rights owners respond to the threat of their IP being reproduced without permission?
Trademarks and 3D printed products
3D technology has become increasingly more mainstream due to the reduced cost of 3D printers. This has made it commercially viable for companies to offer to reproduce objects that people request. This is permitted if the reproduction of an object has been licensed by professional designers or the public at large. But what happens when 3D printers are used to recreate objects carrying a registered trademark or products that are subject to copyright?
In July 2015 the Wall Street Journal reported on the trend for hobbyists to create 3D printed objects based on Hollywood franchises such as Iron Man and Star Wars. The creations that were inspired by LucasFilm were then sold commercially and the hobbyists were asked to share design blueprints with a wider community.
For the owners of big film franchises, this constitutes a threat to revenues. In 2012 Disney paid George Lucas $4 billion for the Star Wars franchise. The Star Wars franchise is estimated to have generated $30 billion in revenues, of which a little more than $6 billion is box office revenues. The rest is games, toys, DVDs, books and licencing.
Whilst 3D printing is still in its infancy, rights owners are acknowledging the threat. Just as the music industry was decimated by piracy and digital downloads in the 1990s and 2000s - and to an extent, home recording - there are concerns within the entertainment industry that 3D printing could have a similar impact on revenues from merchandising.
The issue goes wider than entertainment. The very definition of a trademark is a ‘word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others’. If a trademark appears on 3D printed products that have not been licensed by the owner of the trademark, how can a consumer trust the quality of that product or differentiate it from the real thing?
How to regulate?
Customs authorities have faced the issue of counterfeiting for decades, seizing reproductions before they go on sale. However 3D printing uses digital files so physical goods cannot necessarily be seized. A CAD file can be sent to anyone with a 3D printer and the recipient could instantly create counterfeit goods for their own use or for sale. In addition to current laws relating to copyright, design rights, and trademarks, new legislation may be needed to address counterfeit items created by 3D printing.
With access to unlicensed material far easier in the Internet age, brands and trademark owners may continue to rely on the Digital Millennium Copyright Act (DMCA) which enables them to request that anyone infringing copyright or a trademark take down the offending item from a website. The question is: ‘how long will it be before it is published online again and another take down order is required?’
What can IP owners do?
3D printing of goods is a considerable risk to brand value. With a standard still to be set for managing 3D printing infringement, rights owners need to consider carefully whether to pursue infringements or consider offering new and affordable licencing models for individuals that wish to use their brands on a non-commercial basis.
It is important that IP owners see 3D printing as not only a threat but a revenue opportunity. As technology evolves, 3D printing will not be the last innovative trend to disrupt the future of IP. Efficient management of IP will become increasingly important to maintain reputation and IP ownership.
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