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Dan Cohn

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Dan’s practice focuses on intellectual property, including patents, trademarks and copyrights, as well as advertising, marketing and E-commerce. He also has substantial experience in post issuance proceedings, and was lead counsel on the first two Post-Grant Review Proceedings ever to be instituted, which were successful.

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In Part 1, we addressed the pros and cons of molding your mark directly into your goods in the context of 3D printing. In Part 2 of this series, we evaluated potential benefits and pitfalls that businesses may encounter when applying a mark to products at a later stage in manufacturing (e.g., via sticker or ink-printing). Here, we will look at two counterfeiting scenarios: Case 1, in which your mark has been molded or 3D printed into your product, and Case 2, in which your mark is ink-printed on your product.

In both scenarios, you have no utility patents, design patents, trade dress, or copyrights with which to protect your product. Of course, this addresses a particularly limited situation. However, a great number of businesses find themselves in a similar position. Not all products can be patented. Not all products are proper subjects for trade dress or copyright protection.

In both cases, along comes a so-called “counterfeiter” who obtains a specimen of your product, scans it with a 3D scanner, and starts making copies. In Case 1, the 3D scanner acquires a scan of your mark on your product. The copies made by the counterfeiter in Case 1 therefore also include your mark, leading to clear-cut trademark infringement. However, in Case2, the mark is not detected by the 3D scanner, and is therefore not included on the copies.

In Part 1 of this series, we addressed the impact of 3D printing on companies that mold their marks directly into their goods. Now, in Part 2, we will evaluate potential benefits and pitfalls that businesses may encounter when applying a mark to products at a later stage in manufacturing (e.g., via sticker or ink-printing).

Many companies decide not to mold or 3D print their marks directly into their product. Such a decision may be based on a cost analysis, or on the desire to remain agile in the marketplace. As discussed previously, such costs may fall drastically while agility will greatly improve as 3D printing becomes more widespread. Even so, many companies are simply unable to mold or 3D print their marks directly into their products. The product may be too small to directly bear a trademark at all, or may not have an externally visible surface to serve as a suitable location to display a mark.

In a previous series of posts, we explored several copyright issues as they apply to 3D printing. In this series, we will address the impact of 3D printing on trademark infringement by counterfeiting. Here, we will address the pros and cons of molding your mark directly into your goods in the context of 3D printing and counterfeiting.

In Part 2 of this series, we will evaluate potential benefits and pitfalls that businesses may encounter when applying a mark to products at a later stage in manufacturing (e.g., via sticker or ink-printing).

In Part 3, we will look at some hypothetical “counterfeiting” and trademark enforcement situations, and discuss the impact of 3D printing your mark into your product as compared to ink-printing.

In Part 1 and Part 2 of this series, we discussed copyright issues for 3D printers. Not all companies have made the decision to jump into the world of 3D printing. Parts 1 and 2 may not have applied to you at all. However, no matter your business, your company may have to deal with a third party printing your company’s product, in violation of your rights.

If a direct competitor has begun printing a product which is clearly in violation of your copyright, enforcement is relatively straight forward. However, the scary (and revolutionary) thing about 3D printers is that anyone can print your product from the comfort of their easy chair. Infringers are no longer restricted to the few businesses that can afford to ramp up large-scale production. How do you handle enforcement if the infringer is a relatively small time start-up? What if the infringer is a fan of your product?

At a high level, creating a 3D printed product involves several steps. First, the product itself is conceived. Next, the product is designed in a computer aided design program, and must be converted into a set of electronic instructions that tell the 3D printer how to create the product. In some instances, the CAD program itself may create the printer instructions. The last step is the actual printing of the product. Not all businesses can employ in-house designers and technical personnel who are capable of engineering a product and/or creating printing instructions for that product. For those that can, it may still be more economical to hire outside help from time to time.

In this three-part series, we will discuss various copyright issues that may arise from 3D printing. The first two posts in the series will address copyright issues for companies that are just beginning to utilize (or are thinking about utilizing) 3D printing. The final post in this series, however, will address a company’s reactions to other 3D printers who create potentially infringing products. In this post specifically, we will address some basic copyright pitfalls of 3D printers.

Copyright laws, of course, protect artistic works by guaranteeing their authors the right to control how those works are reproduced, distributed, modified, etc. Many types of works in the visual arts may be fodder for copyright infringement by 3D printers; sculptural works are the most likely candidates. Using a 3D printer to recreate a copyrighted work or a derivative of a copyrighted work is likely to be textbook copyright infringement. 3D printing has not created many new copyright infringement issues, but has instead allowed for such infringements to occur much more easily.