3D Printing: What are the legal and IP implications for your trade mark?
3D printing, or additive manufacturing, as it is also known, has become the centerpiece for what our manufacturing future may look like. Influential commentators have dubbed 3D printing no less than the “Third Industrial Revolution”, and various national leaders have identified it as a matter of strategic importance.
Not surprisingly, given that 3D printing is a manufacturing phenomenon with the capacity to bring about profound industrial, economic and even social change, 3D printing will also raise a variety of legal challenges, including in intellectual property. There will be patent issues involving improvements in 3D printers and scanners; both trade secret and patent issues will arise in connection with the development of appropriate manufacturing materials. However, perhaps the most interesting IP questions will be in the areas of trademarks, copyright and design. This article will consider the trade mark implications of 3D printing, while copyright and design aspects will be discussed in a forthcoming article.
To better understand the trademark issues posed by 3D printing, attention must be drawn to the visual depiction of the various actors that are part of the 3D printing ecosystem.
Building Brand Equity
First, how does 3-D printing work?
Traditional manufacturing is based on subtractive manufacturing, where one starts with a piece of material and creates the desired object by removing what is “unnecessary” to shape the object into its final form. This manner of manufacture has proved ideal for the industrial manufacturing model of the 19th and 20th centuries. 3D printing however, works is based on additive manufacturing. Pursuant to instructions, usually from CAD files, the “printing” machine builds an object in the shape specified in the instructions, micro-layer by micro-layer. In its simplest form, the customer downloads the desired CAD file into the 3D printer and adds the appropriate material; the machine, following these instructions, then fashions the object. As such, the manufacturer becomes the customer. The principal advantages of this method of manufacture are that it enables small runs pursuant to the customer’s specification and rapid prototyping, with virtually no waste of materials.
Thus, it can be seen that this ecosystem has a variety of actors, vis: manufacturers of 3D printers and 3D scanners; manufacturers of materials; software developers; software purveyors; software aggregators; commercial fulfillment centers and service providers. Against this backdrop, what happens to trademark and branding?
Ultimately, it is the dream of every business to create valuable brand equity. This means that customers will come to prefer the branded product, allowing the manufacturer to enjoy a pricing premium by virtue of the brand. To this end, where the product is a three-dimensional object, traditional brand management has concerned itself with selecting an appropriate name for the product, ensuring product quality, engage in suitable advertising and marketing of the product, and managing the manner in which the product is distributed.
However, how does this all play out in the world of 3D printing? We find that the manufacturer no longer enjoys direct control over either the manner of manufacture, the circumstances under which the mark is affixed to the product, or the means of distribution. In a word, three of the principal pillars on which the traditional practice of branding rest may no longer be present. The final product in the 3D printing world is created by the end user, operating his 3D printing device by means of instructions contained in a CAD file. In accordance with these instructions, the resulting product may include the brand name, but the brand owner may not have control over the program file and the resulting product. In such a world, how can one develop a branding program that will cause end users to manufacture an “authorized” product bearing the brand? Indeed, what is an “authorized’ product in such circumstances? Furthermore, the law in various countries provides that prima facie liability attaches under products liability laws when an allegedly defective product bears the trademark of the manufacturer. How will the law of products liability translate into the world of 3D printing?
Enforcing Your Trade Mark in 3D Printing
Our understanding of trademark enforcement may also need to change. This is inevitable given that 3D printing will significantly alter, if not wholly render irrelevant, border control measures to seize counterfeit goods. The reason is simple—in a world where manufacturing takes place at the site of the 3D printer, there is no need to import the product. The act of “importing” is embodied within the downloaded program that provides the instructions for manufacture. The notion of a physical border in such circumstances is largely irrelevant.
Add to this the fact that enforcement has always found it extremely difficult to enforce infringement rights when the infringing act is carried out by an individual within the confines of his home. The music industry has struggled with this problem for over a decade and has come up with some partial solutions. Will a world where virtually “everything” can be made at home require trademark owners to similarly seek at least partial solutions? In this regard, perhaps the trademark community should already be taking the necessary steps to convince national and international bodies that the same principles that guide the take-down of unauthorized on-line musical works under the copyright laws should be applied to 3D printing files.
As suggested above, manufacturers will need to come up with new ways to ensure that goods that are produced by 3D printing are “genuine”. Various suggestions towards this end have been made. First, efforts are underway to develop a system where the “genuine” computer file generates an authorized and properly marked product that is identified as such. Second, DNA marking is being considered–at least one company is making use of plant DNA to mark genuine products with visible or invisible “signatures” that mark a product as “genuine.” Third, investigations are underway to explore whether selectively embedding nanoparticles in “genuine” product as a “signature” is feasible. In terms of the ecosystem of 3D printing, will the marking technology be embedded within the 3D printers (and at what price?) or will they be applied to the product from an external source?
A final consideration: what is the role that marks and brands will play with respect to the manufacturers of the 3D printers and scanners, on the one hand; and materials used in 3D printing, on the other? Currently, one discerns two trends in the manufacture of manufacturing and scanning devices. The first trends involves dedicated 3D printer manufacturers, such as 3D Systems and Stratasys, each of which is seeking to provide a variety of hardware products under the company house brand. The second trend focuses on existing hi-tech multinational companies, such as HP, which are seeking to add 3D printing capability to their product offerings, in effect seeking to extend their current house brand into a new product area. Or perhaps, at the end of the day, the industry will develop in such a way that printers and scanners will become commodity items, in which brand equity will play only a small role. Instead, akin to the ink cartridge or razor blade replacement business models, what will really matter commercially is who controls the market for these materials. In such a world, the challenge will be for materials manufacturers to become market leaders and to emerge with strong brand identities, and as a result, enhanced profit margins.
Perhaps the ultimate goal in fashioning a meaningful approach to trademark protection and brand development in the 3D printing ecosystem will be to create a culture in which the consumer will prefer the “genuine” product. If so, we are very much in the first minutes of what is a trademark and brand management challenge that may well take us into extra time.
This article is the 1st in a series of two articles on the subject by Dr Neil Wilkof. The 2nd article in the series will be published next month, so stay tuned!
Dr Neil Wilkof
Dr. Eyal Bressler & Co
Speaker at GFIP 2015
Neil Wilkof is a member of Eyal Bressler and Co., Ramat-Gan, Israel, where he is engaged in both contentious and non-contentious IP matters. He has been ranked a leading practitioner in his field by various bodies and designated a Top 300 IP Strategist. He is currently a member of the Board of Directors of the International Trademark Association.
Mr. Wilkof is the author of numerous articles as well as several books, including Trade Mark Licensing, second edition with Daniel Burkitt (Sweet & Maxwell) and Overlapping Intellectual Property Rights, co-edited with Professor Shamnad Basheer (Oxford University Press). He also is the co-author, together with Professor James Conley and Peter Bican, of the WIPO-commissioned study, "Patents and the Public Domain." He serves as one of the contributors to the blog, IPKat. Mr. Wilkof has lectured in various places, including the United States, Singapore, India, England, Germany, the Netherlands, Switzerland, and Israel.