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					The Law Of Shapes To Come




3D Printing and the Protection of Shapes




       Martin Schwimmer • Leason Ellis LLP
The Law Of Shapes To Come

 Theories of Protection
 Trade Dress Fact Pattern
 Historical Context
 3D Framework
To refresh, there are several types
     of protection for shapes

 Copyright

 Design Patent

 Trade dress
         3D File Sharing “Players”
                                  3D File
 Start
                                  Downloader
 here

3D Scanner
                       3D File
                       Web Host



                                  3D File
                                  Printer




             3D File
             Creator
Copyright
               Copyright


Pictorial, graphic, sculptural works, but not
 the ‘mechanical or utilitarian aspects’ if the
             work is a useful article
Design Patent
           Design Patent

  “The subject matter of a design patent
application may relate to the configuration or
      shape of an article, to the surface
ornamentation applied to an article, or to the
  combination of configuration and surface
               ornamentation”
Trade Dress
        Trade Dress


Visual appearance of a product or
   packaging that signifies source
What is this?
What is this?
What is this?
What is this?
While we’re on the topic…



 Reg. No. 3855964                      Reg. No. 3457218




                    Reg. No. 3786590
Example of Complexity in
 Enforcing Trade Dress
GROENEVELD TRANSPORT EFFICIENCY, INC. v.
    LUBECORE INTERNATIONAL, INC.




    District Court Jury Awarded $1,225,000
Trade Dress Infringement Test

 PROTECTABLE OR FUNCTIONAL?

 SECONDARY MEANING?

 LIKELIHOOD OF CONFUSION?
         Protectability
Product shape must be arbitrary to be
             protectable
   Application of Test in Lubecore

    IS THE SHAPE PROTECTABLE OR FUNCTIONAL?


 Shape of base minimizes amount of material needed in
  construction


 Volume of reservoir dictated by amount of grease that vehicle
  needs during each servicing interval

 Use of clear material in reservoir allows easy viewing of how much
  grease remains in pump
    Lubecore: Functionality
NOT: “Need to compete”

NOT: “No alternatives”

IS: “Serves a purpose”
    Supreme Court


TrafFix Devices, Inc. v.
Marketing Displays, Inc.,
  532 U.S. 23 (2001)
Evidence of Secondary Meaning

 “Look for” Advertising

 Unsolicited 3rd Party
  Press

 Survey Evidence
           IS THERE
 A LIKELIHOOD OF CONFUSION?

Most important factors:

 Similarity of Marks

 Similarity of Goods

 Channels of Trade
Likelihood of Confusion
Why are we talking about this?
IP Response to New Technology

 Redefining Fair Use

 Redefining Indirect or Intermediate
  Liability
        Intermediate Liability
 DVR/time-shifting service (ReplayTV)
 MP3/cloud-based file storage (MP3.com)
 Online storage locker/music search engine
  (MP3Tunes)
 Online streaming of TV broadcasts (iCraveTV)
 Parental control DVD player (ClearPlay)
 Search engines (Google)
 Internet TV company (Veoh)
 Video-sharing website (Vimeo; YouTube)
        Intermediate Liability
 Remote DVR (Cablevision)
 Virtual rental of DVDs (Zediva)
 Online marketplace for pre-owned digital
  music/cloud storage (ReDigi)
 DVR box/commercial skipper (Hopper)
 Streaming TV (Aereo)
 Media monitoring co and search engine for
  broadcast TV and radio (TVEyes)
      Important Court Cases
 Sony Corp. of America v. Universal City Studios,
  Inc. [“Betamax”] (S. Ct.)

 American Geophysical Union v. Texaco Inc. (2d.
  Cir.)

 Basic Books, Inc. v. Kinko's Graphics Co.
  (S.D.N.Y.)

 MGM Studios, Inc. v. Grokster, Ltd. (S. Ct.)
         3D File Sharing “Players”
                                  3D File
 Start
                                  Downloader
 here

3D Scanner
                       3D File
                       Web Host



                                  3D File
                                  Printer




             3D File
             Creator
       Mere Act of Scanning

 Trademark – Not Use in Commerce

 Copyright – Maybe (Archival)

 Patent - No
       Mere Act of Uploading

 Trademark – Maybe, depends on
     knowledge

 Copyright - Yes

 Patent – Maybe (knowledge + specific intent that
  someone will make infringing product)
         Mere Act of Hosting

 Trademark – Maybe (Tiffany)

 Copyright – Yes (DMCA, YouTube)

 Patent - Maybe (knowledge + specific intent that
  someone will make infringing product)
    Mere Act of Downloading

 Trademark – No (except resale)
 ◦ NYC: bill introduced to criminalize purchase of
   counterfeit goods


 Copyright – Yes (BitTorrent)

 Patent – No (unless inducement)
        Mere Act of Printing

 Trademark – No (except resale)

 Copyright – Yes

 Patent - Yes
              Patent Infringement Liability
  35 U.S.C. 271

 (a) Except as otherwise provided in this title, whoever without authority
  makes, uses, offers to sell, or sells any patented invention, within the United
  States or imports into the United States any patented invention during the term of
  the patent therefor, infringes the patent.

 (b) Whoever actively       induces infringement of a patent shall be liable as an
  infringer.

 (c) Whoever offers to sell or sells within the United States or imports into the
  United States a component of a patented machine, manufacture,
  combination or composition, or a material or apparatus for use in practicing a
  patented process, constituting a material part of the invention, knowing the same
  to be especially made or especially adapted for use in an infringement of such
  patent, and not a staple article or commodity of
  commerce suitable for substantial noninfringing use,
  shall be liable as a contributory infringer.
         Patent Infringement Liability
 Direct Infringement: Printer
  ◦ Printer is always a direct infringer through the act of making the
    infringing article, regardless of whether the Printer is also the
    Downloader or whether Printer receives instructions from
    Downloader.

 Contributory Infringement: None
  ◦ The printer and raw material used to make the articles are
    suitable for substantial non-infringing use (e.g., many non-
    infringing articles can be printed). In addition, 3D CAD files are
    not (likely) “components” under the statute. See, e.g., Microsoft
    Corp. v. AT&T Corp., 550 U.S. 437 (2007)
    (holding that a golden master disk containing software that is
    used to make duplicate copies of the software does not qualify as
    a “component” under 35 U.S.C. 271(f)).
                  Patent Infringement Liability
 Active Inducement: Creator, Host, Downloader (potentially)
  ◦ Active Inducement requires:
      A direct infringement
      A knowing inducement of infringement with specific intent to encourage another’s
       infringement
  ◦ The printer is the direct infringer
  ◦ If the Creator, Host, or Downloader has knowledge of the patent, creating the
    3D file and making the file available to download by others could potentially
    create liability as an inducer. The question is whether, with knowledge of the
    patent, providing a file that is intended to by printed is encouraging another to
    infringe by using the 3D file for its intended purpose.
  ◦ Hosts for 3D Printer File sharing sites can help to insulate themselves from
    liability by instituting a takedown policy similar to the DMCA safe harbor rules.
    Once a Host is made aware of a 3D file that, if printed, would result in a direct
    infringement, the Host should voluntarily remove the offending file.
     Thank You
     Martin Schwimmer
       Leason Ellis LLP
One Barker Avenue, Fifth Floor
   White Plains, NY 10601
 schwimmer@leasonellis.com
      @trademarkblog

				
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posted:10/18/2013
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