Shapeways Explains What Happens When a Design Patent is Infringed

When it comes to copyright law involving 3D design work, no one seems to grasp the perplexing and unhinged infringement rules quite like the 3D printing and law expert Michael Weinberg. Currently working with 3D printing service bureau Shapeways, Weinberg has been on top of all the latest controversy and confusion involving the United States Copyright Office and their laws regarding 3D design patents. In fact, Shapeways has recently filed comments with the Copyright Office in order to help them understand how copyright claims work on the internet.

With outdated, unclear copyright laws starting to break under the pressure of the modern digital world, it’s important to understand what happens when a 3D design patent is infringed upon. Although clarity has always been lacking for digitalized copyright laws, the debacle involving Thingiverse users and the eBay store just3Dprint is when the situation really got heated. The eBay store had downloaded thousands of 3D models from Thingiverse, as well as the designers’ photos, and was reselling them despite the fact that many of the models carried restrictive licenses. Eventually, the Thingiverse community came together to help resolve the issue, but the questions still remains: what are the actual laws regrading patent infringement over 3D designs?

Unlike 3D scans, which Weinberg dispelled as non-copyrightable in a recently published Shapeways whitepaper, design patents are much more strictly bound by the law. Weinberg explains the need for reformatted copyright laws in light of the extensive legal dispute between Apple and Samsung. The lower court involved in the case determined that Samsung’s smartphone had infringed upon a number of Apple design patents, such as the rounded edges of the phone and app icons. Despite the fact that the Samsung phone provides most of its value outside of the infringed design patent, the lower court determined that Apple should receive all the profits from the phone due to the minor infringement. The US Supreme Court is currently deciding whether this ruling makes sense or not.

So, what exactly does this messy case have to do with Shapeways and the 3D printing industry in general? Well, Weinberg and Shapeways believe that infringement accusations on models from their 3D design marketplace should follow the process of utility patent infringement cases. In a legal brief by both Shapeways and Engine, which was drafted by Katherine McNutt and Hyosang (Mark) Kim of the Juelsgaard Intellectual Property and Innovation Clinic at Stanford University Law School, the argument is that the infringement should be proportional to the value that the patent-protected elements bring to the final object.

In the case of utility patent infringement cases, damages are generally tied to just the part that is doing the infringing, rather than the entire product. For instance, Weinberg presents the example of a car that uses a bolt that happens to be infringing upon a patent. He argues that the patent holder of the bolt, which plays a minor role in the value of the entire car, should not be entitled to the entire profits of the car, but instead with the proportional value that the bolt itself provides. This change of infringement law could be especially useful for those complex designs that include a number of elements unrelated to just a single design patent, and would also prevent the first patent holder from suing and recovering all of the profits themselves.

Shapeways legal expert Michael Weinberg

By implementing utility patent infringement laws into 3D design, it would also discourage patent trolls from claiming rightful ownership over the profits made from the designer’s work, simply because a small element of the object may be infringing on their design patent. For those looking for an example that includes 3D design and printing to help better understand this dilemma, Weinberg implores you to consider this. Let’s say you design a complex coffee cup for your Shapeways shop, one that has an intricate handle and pattern, and also an askew lip. After successfully selling your coffee cup design to a number of customers, suddenly a letter shows up, claiming that this askew lip on the coffee cup is infringing someone else’s design patent.

So, even if this accusation rings true, the rest of the design is completely original and legally viable. Does the accuser deserve all of the profits made on the coffee cup, because one small element happened to infringe upon their patent? Weinberg argues that this would lead to a slippery slope with more patent trolls and less innovation, something that would surely slow the momentum of the entire 3D printing industry. The brief was filed earlier this week, but it will certainly take some time before the Supreme Court makes a decision in this case. Weinberg and Shapeways promise to keep us all updated as the case develops, and in turn, will explain what the eventual decision will mean for their designer community. Do you have strong feelings on this subject? Discuss over in the Shapeways Brief for 3D Printing Copyrighting Laws forum over at 3DPB.com.