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3D PRINTING & 3D IP ISSUESPrepared by:Aylin DemirciCarr & Ferrell LLP120 Constitution DriveMenlo Park, CA 94025 USA650.812.3409 direct650.812.3444 mber 20, 2014

What is 3D Printing?nnA process for making a physical object from athree-dimensional digital model, typically bylaying down many successive thin layers of amaterial.Known also as “Additive Manufacturing” becauseprimarily additive processes are used, in whichsuccessive layers of material are laid down untilthe entire object is created.qqMelting or softening material to produce the layers, orLaying liquid materials that are cured with differenttechnologies etc.

Traditional ManufacturingnSubtractive manufacturing: Layers of material are removed from araw material or injected into a mold to create the desired shape.q Casting, fabrication, stamping, machining etc.

What is 3D Printing?nMaterials other than “ink” are dispensed from printer-type nozzles orsyringes onto a moving platform.nThe amount of material, the rotation of the platform and the designof the object is controlled via graphic design software (aka 3Dmodeling program) and based on a digital model.nThe software slices the design into hundreds (at times thousands) ofhorizontal layers.nThese layers are printed one atop the other, blending each layertogether with no sign of the layering visible, and a three dimensionalobject is constructed by building upon layers of layers of coveredsurface.

3D Printing ComponentsnMaterialsqEarly days:nqMetals, plastics, and ceramicsModern days:nEdible food (e.g. sugar, chocolate, dough), living tissue/cell (e.g. replicatingorgans, blood vessels), wax, glass filled polyamide, polymers, etc.Titanium jawboneFOODINI printer is printing adesired shape from chocolate

3D Printing ComponentsnMaterials (continued)Nylon bikini-N12 Ceramic brick for construction

3D Printing ComponentsnDigital Model (CAD-Computer Aided Design-File)qqA totally new object can digitally be created by using 3D modeling program, orAn existing object can be digitally copied via 3D scanner3-D model of a Zero-EmissionsHome designed by students of PennState Greater Allegheny via CADsoftware3D Scanner-SENSE

3D Printing Componentsn3D Modeling Programq3D computer graphic software that allows users to create and alter models viatheir 3D mesh.

Can I see one in action?

Advantages of 3D PrintingnFaster and cost efficient product development:qRapid prototyping: Quickly see, touch and test versionsof the product design before full blown production.qReconfiguring tooling machinery v. easily changingdigital model mid-production.qGM used 3D printing for 2014 Chevrolet Malibu's frontfascia prototyping, enabling aerodynamic and climaticwind tunnel testing without expensive production parts.

Advantages of 3D PrintingnData visualizing:qqThe visualization of non-visual data.3D printed visual representation of the Peak Ground Velocity(PVG) information of this year’s earthquake struck Napa,California.

Advantages of 3D PrintingnRapid manufacturing:qNew method of manufacturing where 3D printers areused for short run manufacturing in the relativelyinexpensive production of small numbers of partswithin hours.qIn this way of manufacturing the printed objects are notprototypes but the actual end user product.

Advantages of 3D PrintingnRapid manufacturing (examples)Nike is using 3D printing to prototype andmanufacture the Vapor Laser Talon football shoecleat.

Advantages of 3D PrintingnRapid manufacturing (examples)New Balance is 3D manufacturing custom-fit shoesfor elite athletes.Technicians use sensors and motion capture camerasto create a digital model of a runner’s stride. The 3-Dprinting technique is used to create highly specializedsoles and spike plates on shoes.In January 2013 a top middle-distance runner, Jack Bolas,raced in a New Balance shoe custom-made for his feetusing a 3-D printing process.

Advantages of 3D PrintingnRapid manufacturing (examples)Pat Starace, a mechanic, creates 3D printed prosthetic notonly looks like but also functions like Iron Man.5 year-old Texas boy, Keith Harris, who was born with adeformed right hand caused by a rare condition, got anIron Man inspired 3D printed prosthetic.

Advantages of 3D PrintingnRapid manufacturing (examples)q3D printing has been used to print patient specific implant anddevice for medical use.nnnqA titanium pelvis implantedA titanium lower jaw transplanted3D printed parts to rebuild the face of a personNASA granted contractor Systems & Materials Research 125,000 to develop a pizza printer. The prototype uses shelfstable powdered food and oils, offering nutrition while minimizinggarbage on board of a space vehicle.

Advantages of 3D PrintingnMass customization:qCompanies have created services where consumerscan customize objects using simplified customizationsoftware, and order the resulting items as 3D printedunique objects.

Advantages of 3D PrintingnMass customization (continued):

Advantages of 3D PrintingnMass customization (continued):qNokia released the 3D designs for its Lumia phone cases so that ownerscan customize their own case and have it 3D printed.

Advantages of 3D PrintingnDistributed manufacturingq3D printing with cloud computing technologies allowsdecentralized and geographically independentdistributed production.qDesign files can be processed digitally in one centrallocation, and then sent to any printer on the networkaround the world, creating global digital factories.q3D Printing MarketplacesnnTo buy, sell, customize and share digital model files.To 3D print via web-based software.

Advantages of 3D PrintingnDistributed manufacturing (continued)q3D Printing CentersnFedEx Kinkos, UPS, Staple etc.q3D Printing MarketplacesqModel repositories that have digital model files you can download for free.nThingiverse, 3D Warehouse, 3D Parts Database etc.On-line 3D printing services to both commercial and private customers,working from 3D designs uploaded to the company website. 3D-printeddesigns are either shipped to the customer or picked up from the serviceprovider.nShapeways, Ponoko etc.Some online sites do not offer 3D printing services but they do integratenetwork of third party owned 3D printers and connect them withcustomers/designer.nThreeding, 3DPrintWiseqq

Advantages of 3D PrintingnDistributed manufacturing (continued)q3D Printing Marketplaces-Ponoko

Advantages of 3D PrintingnDistributed manufacturing (continued)q3D Printing Marketplaces-Shapeway

Advantages of 3D PrintingnDistributed manufacturing (continued)q3D Printing Marketplaces-Shapeway

3D Printing Opportunitiesnn3D Printing is not new (e.g. 1980s) but the technologyhas become more accessible, sophisticated and costefficient.One of the major patents protecting a specific type of 3Dprinter expired in January 2014.qqnThe cost of high quality 3D printers has decreased steadily due tothe expiration of such patents.Some are under 1,000.3D printing is being used almost in every industry.qarchitecture, construction, automotive, aerospace, medical,biotech, clothing, jewelry, eyewear, food, etc.

Threats to IP RightsnThe potential for widespread personal manufacturing ofobjects and designs may facilitate large scaleinfringement that cannot be easily detected, prevented,or controlled.qqqqqAnyone can easily copy based on a scan or file.The digital design can be widely distributed just like any othercomputer file.The objects can be printed in a living room and stored in a garage.It is easy to move the printer/operation to another location or openanother account in the same 3D printing online market or switch toanother platform when discovered.The infringing products may not need to cross borders eliminatingIP enforcement mechanisms at the customs.

Threats to IP RightsnThe level of legal and intellectual property issues thatarose for music and movie industry in the digital age mayarise potentially for all industries.qqqqPeer-to-peer digital model file sharing.Counterfeiting.Consumers may print their own Tiffany’s rings, Oakley eyewear,Barbie babies, Picasso’s ‘She-Goat” sculpture, or figurines of BradPitt and Spider-Man.Famous trademarks, well-known cartoon characters or celebrities’likeliness may be printed on or as unflattering objects.

Which Rights Might be Affected?nTrademark/Trade DressnnCopyrightnnE.g. Creating a digital model of Darth Vader, printing a figurine ofDarth Vader etc.Patent (design and utility patent)nnE.g. Printing a purse bearing the word “PRADA” or Burberry'startan pattern.E.g. Printing a patented prosthetic, fastener etc.Publicity/PrivacynE.g. Printing a pillowcase bearing Brad Pitt’s face, or printing asculpture of Angelina Jolie.

Trademark/Trade Dress and 3D PrintingnTrademark and Trade Dress Basics:nTrademark: Source identifier by distinguishing thegoods and services of one person or company fromthose of another (e.g. traditionally words, logos orcombination of both).qnMust be distinctive.Trade Dress: Non-traditional trademark (e.g. productdesign, product packaging design, color, texture etc.).qMust be non-functional and distinctive.

Trademark/Trade Dress and 3D PrintingnTrademark and Trade Dress Basics:nTrademark Infringement: Unauthorized use of a trademark onor in connection with goods and/or services in a manner thatis likely to cause confusion, deception, or mistake about thesource of the goods and/or services.qnCounterfeit: Post-purchase confusion and unfair competition.§The direct purchaser’s confusion is not needed.§Post-purchase confusion by observers is sufficient.Dilution: Use of a famous mark diminishing the strength or valueof the mark by “blurring” the mark’s distinctiveness or“tarnishing” the mark’s image by connecting it to somethingdistasteful or objectionableqqEven if there is no likelihood of confusion.Even if the goods are not competing or related

Trademark/Trade Dress and 3D PrintingnTrademark example:E.g. printing a purse bearing the word “PRADA”

Trademark/Trade Dress and 3D PrintingnTrade dress example (product design):E.g. printing shoes with three parallel stripes on the upper area betweenthe laces and the sole.Adidas AG’s trade dress for “footwear”: “three parallelstripes applied to footwear, the stripes arepositioned on the footwear upper in the areabetween the laces and the sole”.

Trademark/Trade Dress and 3D PrintingnTrade dress example (product container design):E.g. printing human skull shapedperfume bottle.Mavive S.P.A.’s trade dress for“perfumes”: “Configuration of a glassbottle container for the goods in theshape of a human skull.

Copyright and 3D PrintingnCopyright Basics:nnnOriginal works of authorship fixed in any tangible medium ofexpression.Immediately protected upon creation without the need of aregistration.Copyright does not protect utilitarian objects excepts to the extentthere is some conceptually separable artistic/creative element.While the decorations on this vase is likely protected bycopyright, the shape itself is primarily utilitarian andtherefore not protected under copyright.The dragon shape lamp base islikely protected under copyright.

Liability Theoriesn3D Printing For Personal Use.n3D Printing Services Upon Order (e.g. FedEx Kinkos instore services, online marketplace platforms allowingusers to upload files and print their files or others’ files).n3D digital peer-to-peer sharing sites without any printingservices.n3D digital file hosting sites without any printing services.

Liability Theoriesn3D Printing For Personal Use§Trademark/Trade Dress§ “Use in Commerce”§ In connection with the sale, offering for sale,distribution, or advertising of any goods.§ No infringement or dilution if the printed productthat copies a trademark or trade dress used forpersonal use,§§Printing a pair of shoes with three parallel stripes andwearing them yourself --no infringement.Printing a pair of shoes with three stripes and sell it toyour friend---infringement (post-purchase confusion)

Liability Theoriesn3D Printing for Personal Use§Copyright§§§Copyright can protect the 3D design files in the same manneras blueprints are protected.Copying a copyrighted object digitally alone can beinfringement (via scanner or software).Sharing and printing the digital file alone also can beinfringement.§§Infringement of the designer’s copyrighted work.Infringement of the original copyrighted work.§Ex: Sharing digital files and printing Barbie looking babies fromscanned Barbie baby infringes Mattel's rights in the Barbie design.It also infringes the derivative work (digital model of the Barbiedesign) of the designer who bought the rights from Mattel to makedigital models.

Liability Theoriesn3D Printing Upon OrdernTrademark/Trade Dressq Direct statutory liability---analogue to “printers and labelers”§ Reproduce or imitate a registered mark and apply suchreproduction . . . to labels, signs, prints, packages,wrappers, receptacles, or advertisements.§ intended to be used in the sale or advertising of goodssuch that likelihood of confusion result.§ No likelihood of confusion if merely reproduce clipart of alogo in a computer software.§ Printing the PRADA word on the 3D purse?§ Printing shoes with three parallel stripes?q Secondary liability under case law.§ Contributory and vicarious infringement.

Liability Theoriesn3D Printing Upon Order and/or File Hosting/Sharingn Trademark/Trade DressqContributory infringement(1) intentionally induced another to infringe a trademark; or(2) continued to supply a product or service to a party with knowledgethat the buyer is engaging in trademark infringement.qKey notes:§§§General knowledge is not enough, must know or have reason toknow the specific infringement and continue supply goods orservices to that infringer.No legal duty to act until notice is given.No contributory liability for merely failing to anticipate that otherwould use the services to infringe.§Sony v. Universal City Studios; Tiffany v. eBay; Rout v. Amazon etc.

Liability Theoriesn3D Printing Upon Order and/or File Hosting/Sharingn Trademark/Trade DressqVicarious infringement(1) have an apparent or actual partnership,(2) have authority to bind one another in transactions with thirdparties or(3) exercise joint ownership of control over the infringing productqThe relationship between the direct infringer and theprinters/service provider matters.§§Rosetta Stone v. Google (on the matter of keyword triggeringadvertisement, there is no evidence that Google acted jointly withany of the advertisers to control advertising or sale of counterfeitRosetta Stone products)

Liability Theoriesn3D Printing Upon Order and/or File Hosting/SharingnCopyrightq Contributory infringement:§§qVicarious infringement§§qone who induces, causes or materially contributes to copyrightinfringement, by another but who has not committed orparticipated in the infringing acts him or herself, andhe or she had knowledge, or reason to know, of the infringementPossessing the right and ability to supervise the infringingconduct, andHaving a direct financial interest in the use of the copyrightedmaterials.Cases:§Metro-Goldwyn-Mayer v. Grokster; A&M Record v. Napster

Liability TheoriesnSafe Harbor Under DMCA (copyright only)qOnline service providers (e.g. web site hosting services, Internet serviceproviders, search engines) are protected from liability for direct infringementof their users if they quickly remove or disable access to infringing materialidentified in a copyright holder's complaint.qIn order to qualify for safe harbor:nMust have no knowledge of, or financial benefit from infringing activityon its network,nMust act expeditiously to remove or disable access to the complainedmaterial,nMust have a copyright policy and provide proper notification of thatpolicy to the subscribers, andnList an agent to deal with copyright complaints.

Liability TheoriesnIn-Store Printer/3D Marketplace Printers:nIn-store printer services as well as the 3D marketplace platformprinting services may likely be liable for copyright and trademarkinfringement since it may be difficult to claim no specificknowledge of infringement or lack of control over the infringingproduct while their staff prints, stores and ships the infringingobjects.nThe risk of trademark and copyright liability for 3D marketplaceplatform is higher since they manufacture the infringing articlesthat are sold to public.

Liability TheoriesnDesigner and Digital File Hosting Site:nDesigner and digital file hosting site may be liable undertrademark law even if they merely reproduce or host a digitalreproduction of the trademark in CAD software alone?qqqnnNo likelihood of confusion as to source or dilution until it is printed and used incommerce?In Medic Alert, no infringement was found when defendant merely reproducethe trademark as a “clip art” logo embedded in a computer program forreproduction by end users.But in 3D cases, the trademark is already on a product or the trademark is theproduct that is digitally created or hosted. Seeing a digital model of Adidasshoe on the site would likely lead the consumers think that the designoriginates from Adidas.They may have liability under copyright.If the design itself is infringing copyright, a take down notice maybe sent under Safe Harbor.

Liability TheoriesnPeer-to-Peer File Sharing Sites:nPeer-to-peer sharing site may be liable under trademark laweven if the file is in users’ computers in CAD software?qqnnSame as hosting sites, the digital model features a product (eitherbearing the trademark or the trademark is the product) and thereforeconfusion may arise.If the site is good for nothing but infringement, liability is highly likely.They may have liability under copyright.If the design itself is infringing copyright, a Safe Harbor noticemay not work because the P2P site is not one of the onlineservice providers listed under DMCA. The content is in the user’sserver.

In Conclusion The 3D printing does not exactly createnew IP issues but rather potentiallyexpands the magnitude of existing issuesThere is not any case law specifically onthe 3D printing IP matters but we mayapply case law for other technologies andindustries (e.g. peer-to-peer file sharing,online service providers’ liability,manufacturer’s and supplier’s liabilityetc.)

Advantages of 3D Printing n Distributed manufacturing (continued) q 3D Printing Centers n FedEx Kinkos, UPS, Staple etc. q 3D Printing Marketplaces q Model repositories that have digital model files you can download for free. n Thingiverse, 3D Warehouse, 3D Parts Database etc. q On-line 3D printing services to both commercial and private customers,