The Intersection of 3D Printing and Trademark Law

Document

Cited in

Author	Nina Natalia Baranowska
Position	LL.M. with Concentration in Law and Technology (University of Ottawa), Researcher at the Civil Law Institute at the Faculty of Law, Administration and Economics, University of Wroclaw
Pages	251-265

2018

251

The Intersection of 3D Printing

and Trademark Law

by Nina Natalia Baranowska*

Everybody may disseminate this ar ticle by electronic m eans and make it available for downloa d under the terms and

conditions of the Digital P eer Publishing Licence (DPPL). A copy of the license text may be obtain ed at http://nbn-resolving.

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Recommended citation: Nina Nata lia Baranowska, The Intersection of 3 D Printing and Trademark Law, 9 (2018) JIPIT EC 251

para 1.

Keywords: 3D printing; trademark law; trademark protection; disruptive technology; counterfeiting; registration

of shapes; platforms; certificated files

dissemination of manufacturing process, participa-

tion of hobbyists, the role of CAD files, the possibility

of introducing modifications into a file, and the world-

wide scope of 3D printing based on the Internet con-

nectivity may have an impact on trademark protec-

tion to a certain extent. The paper analyzes the cases

of this impact and suggests possible solutions: sell-

ing 3D-printable certificated files by trademark own-

ers; price regulation; and better educational programs

on counterfeit goods. From the hard law perspective,

the solution may lie in establishing clear rules of lia-

bility for intermediary online platforms.

Abstract: The paper discusses the possible

impact of 3D printing technology on a trademark pro-

tection system and argues that, despite some obsta-

cles, selling certificated 3D-printable files by compa-

nies can be a reasonable new approach in order to

face up to the changes brought about by this new

technology. 3D printing (three-dimensional printing,

counter crafting), perceived by some as a disruptive

technology, is an additive manufacturing technique

to create objects by joining or printing layer upon

layer of material based on digital models. Certain fea-

tures of this technology such as democratization and

A. Introduction

1 “If you are not excited by 3-D printing it is because

you are not thinking big enough”.1 3D printing is

perceived by many authors as a cause of “A Third

Industrial Revolution” or at least a signicant

factor in revolutionizing the world around us.2 But

* LL.M. with Concentration in Law and Technology

(University of Ottawa), Researcher at the Civil Law Institute

at the Faculty of Law, Administration and Economics,

University of Wroclaw.

1 Linda Federico-O’Murchu, “How 3-D printing will radically

change the world”, (11 May 2014), online: CNBC

www.cnbc.com/2014/05/09/will-3-d-technology-radically-

change-the-world.html>.

2 See among others: Christopher Barnatt, “3D Printing: The

Next Industrial Revolution”, online: Explain Future

explainingthefuture.com/3dprinting.html>; Kent Roberts,

“The Rise of the 3D Printer: Hype or Revolution?”, (25

September 2014), online: AtlanticNet

net/blog/the-rise-of-the-3d-printer-hype-or-revolution/>;

Filemon Schoffer, “Is 3D Printing The Next Industrial

Revolution?” in TechCrunch (2016); Sam Rega, “How 3D

what makes this technology powerful enough to

compare it with the impact of a steam engine and

the Industrial Revolution in the XIX century, or the

Internet and Digital Revolution? One may say that 3D

printing is just an additive manufacturing technique

to create objects by printing layers of material based

on digital models. Although some predictions about

3D printing seem to be exaggerated, this technology

is clearly a new phase of technological development,

which is transforming our thinking of home printers

and putting the manufacturing process onto a more

advanced level.

Printing Will Revolutionize Our World”, online: Bus Insid

revolution-is-here-3d-printing-2014-8>; “3D printing:

not yet a new industrial revolution, but its impact will be

huge”, The Guardian (10 December 2013), online:

www.theguardian.com/commentisfree/2013/dec/11/3d-

printing-not-yet-a-new-industrial-revolution-but-its-

impact-will-be-huge>; “A third industrial revolution”, The

Economist (21 April 2012), online:

com/node/21552901>.

2018

Nina Natalia Baranowska

252

It has to be emphasized that no technology exists

in a vacuum. Quite the contrary, almost each new

technological advance has a signicant impact on

society, market and, what is important for this paper

– legal regulations. 3D printing is not an exception

here. As many commentators observe, 3D printing

will force legal scholars and also policy-makers to

rethink existing legal concepts within contract law

(e.g. the role of prosumers and online platforms, the

denition of a “producer”, etc.)

and tort law (e.g.

dening a liable person, proving a causal link, etc.).4

This paper focuses on the intersection of 3D printing

and trademark law and examines the boundaries of

the impact of 3D printing on the existing trademark

law system. As the starting point (Section B), 3D

printing is presented as a disruptive technology,

which could change the way people currently

produce and use products, and which characteristic

features could have an impact on trademark law.

Among those features are: freedom, easiness, and

low cost of designing and printing objects. They lead

to democratization and facilitation of the production

process and in fact may change or even eliminate

the role of the brand as an “intermediary” between

a producer and a consumer.

Next, Section C briey describes the traditional

role of trademark, which is the protection of the

products’ identication with a particular quality

source by using recognizable signs or expressions.

For further deliberations, it is important to highlight

two purposes of trademark protection – “consumer

protection” and “company incentives”. Those

remarks will help to understand the impact of 3D

printing on the trademark law system.

Section D indicates two major areas where the

relation between 3D printing and trademark

law collides. First of all, the problem whether

three-dimensional objects can be registered

as trademarks. The greater possibilities of 3D

printing will also raise several questions regarding

registering three-dimensional objects (shapes) as

a trademark, including the role of the trademark

law system, the growing scope of registrable subject

matter, the reasons for registration of shapes, the

enforcement of trademark protection, if the 3D

printing would become the norm. Secondly, the

problem of whether and to what extent the certain

elements of 3D printing such as democratization

and dissemination of manufacturing process,

participation of hobbyists, the role of CAD le, the

3 See for example: Thierry Rayna, Ludmila Striukova & John

Darlington, “Co-creation and user innovation: The role

of online 3D printing platforms” (2015) 37 J Eng Technol

Manag 90.

4 See for example: Patrick J Comerford & Erik P Belt, “3DP,

AM, 3DS and product liability.(3D printing, additive

manufacturing)” (2015) 55:4 St Clara Law Rev 821.

possibility of introducing modications into a CAD

le, and the worldwide scope of 3D printing based on

the Internet access could possibly interfere with the

trademark law system. In that section, it is stressed

that the private reproduction of a trademark is

generally not an infringement, which means that

the essence of 3D printing, embodied in a homemade

production, will not directly and radically affect the

core of trademark protection. The current scope

of trademark law thus excludes from trademark

protection many potential threats to a company’s

brand due to a commercially-oriented approach

and a blurred line between commercial and non-

commercial uses. The section also indicates how

realistic it is for 3D printing to become a serious

risk for companies from the product sectors. It is

explained that the series production is still a cheaper

way to produce goods and that the technical and

practical limits caused by 3D printing will not play

important role in many categories of counterfeited

goods. Therefore, the problem of using 3D printing

for counterfeiting purposes is currently limited to

the certain number of products – mainly luxury

goods, which are relatively easily accessible through

3D printing and protable for counterfeiters. Even

if the trademark protection may only apply when

commercial uses take place and to only some

categories of items, 3D printing opens up further

possibilities of counterfeiting goods and enables

anyone to become a counterfeiter at his/her home

and to take commercial advantages of 3D prints.

The section also discusses the cases of printing only

the trademark, printing the whole item, to which

the trademark is attached, and printing the whole

item without the trademark, as well as the blurred

line between a producer and a user and the line

between commercial and non-commercial activities.

Next, the role of a CAD le is explained and based

on that the section makes a prediction that in the

counterfeiting process the les would be offered

online by professional counterfeiters, rather than

produced by each individual. Finally, the section

presents further problems including the status of a

CAD le as a product, enforcing companies’ rights,

and territorial limitations of trademarks.

6 Section E proposes some solutions including a new

approach of companies in order to face up to the

changes brought about by this new technology,

taking as a reference point the Lessig’s concept

of modalities consisting of hard law regulations,

market regulations, social norms and “architecture”.

I claim that in the area of trademark law, hard law

regulation might not be an adequate response to

problems presented by 3D printing, mainly because

of limited abilities of enforcing rights and high

litigation costs. Therefore, the idea of selling 3D

printed certicated les by trademark owners will be

discussed. Although this idea has some disadvantages

(such as losing control over a product and its quality,

The Intersection of 3D Printing and Trademark Law

2018

253

increasing potential liability for products, confusing

consumers, etc.), this solution seems a reasonable

and more exible approach to adjust companies

to a new 3D printing reality. Next, I show that the

price regulation will be of key importance. I also

comment on the necessity of education - a society

which is well-informed about detrimental effects

of using counterfeit goods can make a wise and

conscious decision and even generate social norms

regarding whether it wants to contribute to the

counterfeit industry. The last solution will be to

establish clear rules of liability for intermediary

online platforms where it is possible to upload and

download unauthorized designs of a trademarked

good or trademark itself.

The following deliberations are not based on a

specic legal system, so that the general problems of

trademark law as a system of protection companies

(and to some extent consumers) can be presented

in a model approach. The discussion is, however,

supported by references to EU law, the Agreement on

Trade-Related Aspects of Intellectual Property Rights

(TRIPS), and some examples from the U.S. system.

B. 3D Printing as a Disruptive

Technology

3D printing (three-dimensional printing, counter

crafting) is perceived as one of the new disruptive

technologies. Jeremy Rifkin, an American economic

and social theorist, in his book from 1995 titled

“The End of Work: The Decline of the Global Labor

Force and the Dawn of the Post-Market Era”5 used

the ambiguous term “disruptive technologies” to

describe new technological phenomena which,

on the one hand, have a huge economic potential,

and on the other hand replace previous solutions,

causing old businesses and professions to disappear.

Indeed, new technologies can quickly reorganize

the world where we live and work and create a new

order with new range of products, services, but also

threats. A report by the McKinsey Global Institute

from May 2013 titled “Disruptive technologies:

Advances that will transform life, business, and the global

economy” indicated 3D printing as one of the twelve new

technologies which by 2025 will demonstrate the

greatest commercial potential and exert the largest

impact on social and economic changes.6 According

5 Jeremy Rifkin, The end of work: the decline of the global

labor force and the dawn of the post-market era (New York:

GPPutnam’s Sons, 1995).

6 McKinsey Global Institute, “Disruptive technologies:

Advances that will transform life, business, and the global

economy”, (May 2013), online:

com/business-functions/digital-mckinsey/our-insights/

disruptive-technologies>. These technologies are: mobile

Internet, automation of knowledge work, Internet of

to the report, the illustrative pools of economic value

that could be impacted by 3D printing include $11

trillion of global manufacturing GDP and $85 billion

revenue from global toy sales.7

3D printing is dened as additive manufacturing

techniques to create objects by joining or printing

layer upon layer of material based on digital models.

Additive manufacturing (AM) covers many specic

processes which vary in the materials and machine

technologies. A report on Standard Terminology for

Additive Manufacturing Technologies, published

by the American Society for Testing and Materials

(ASTM), initially by the group ASTM F42 – Additive

Manufacturing in 2012 and then developed by

the Subcommittee: F42.91 in 2015, indicates 7

categories of additive manufacturing, which are:

VAT Photopolymerisation, Material Jetting, Binder Jetting,

Material Extrusion, Powder Bed Fusion, Sheet Lamination,

Directed Energy Deposition.9

10 Additive manufacturing was invented in the 1980s

and was initially used for “rapid prototyping” of

mechanical models in plastic,

and for industrial

use. Before 3D printing technology, prototypes were

usually made in different geographical areas like

India or China so that it required the involvement of

time and human and nancial resources.11 The base

of 3D printing technology is well-known computer

aided design programs (CAD), which evolved from

the two-dimensional space digital drafting.12 The

Things, cloud, advanced robotics, autonomous and near-

autonomous vehicles, next-generation genomics, energy

storage, 3D printing, advanced materials, advanced oil and

gas exploration and recovery, renewable energy.

7 Ibid at 5.

8 See for example: Michael Weinberg, It Will Be Awesome If They

Don’t Screw it Up: 3D Printing, Intellectual Property, and the Fight

Over the Next Great Disruptive Technology (Public Knowledge,

2010) at 2; Lisa Harouni, “A primer on 3D printing”,

(November 2011), online: TEDTalk

talks/lisa_harouni_a_primer_on_3d_printing>.

9 American Society for Testing and Materials (ASTM), Group

F42 Additive Manufacturing Technologies, developed

by Subcommittee F4291, “Standard Terminology for

Additive Manufacturing Technologies”, (2012), online:

PAGES/F2792.htm>. See more Ben Redwood, “Additive

Manufacturing Technologies: An Overview”, online:

3D Hubs

additive-manufacturing-technologies-overview>;

Additive Manufacturing Research Group, Loughborough

University, “The 7 categories of Additive Manufacturing”,

online:

the7categoriesofadditivemanufacturing/>.

10 Barnatt, supra note 2.

11 Juho Vesanto, “Saving Resources by Prototyping with 3D

Printing – A Lamplight Case Study”, (30 September 2013),

online: 3D Print Ind

saving-resources-prototyping-3d-printing-lamplight-case-

study-17629/>.

12 See “CAD Software”, online:

2018

Nina Natalia Baranowska

254

years of research, and continuous improvement of

technological processes has transformed the AM

from an expensive and inaccessible technology to

easier and cheaper to acquire and use.13 The recent

expiry of patent rights over some of the technologies

invented in the 1980s, including 3D printing, has

sparked consumers’ interest in the potential of 3D

printing, which is perceived by many as the symbol

of the shift towards individualism and creativity.14

11 3D printing allows for the production of day-to-day

consumer products (furniture, clothes,

footwear,

sports gear,17 kitchen implements, ofce materials,

tools, toys, decorative elements),18 but can also be

applied in mass-scale production and professional

use (automotive industry, robotics, architecture,

construction, etc).

3D printing technology can also

be applied in the food industry.20 This technology is

solutions/cad-software>.

13 See Gil Laroya, “3D Printing Can Turn You Into a Designer”,

(16 December 2013), online: Hufngton Post

www.hufngtonpost.com/gil-laroya/3d-printing-

design_b_4440463.html>.

14 Hod Lipson & Melba Kurman, Fabricated: The New World of 3D

Printing (New York: John Wiley & Sons, 2013) at 22, 103; See

more: Chris Anderson, Makers: the new industrial revolution

(London: Random House Business Books, 2013).

15 Rachel Hennessey, “3D Printing Hits The Fashion World”, (7

August 2013), online: Forbes

rachelhennessey/2013/08/07/3-d-printed-clothes-could-

be-the-next-big-thing-to-hit-fashion/>.

16 Michael Fitzgerald, “With 3-D Printing, the Shoe Really

Fits”, (15 May 2013), online: MIT Sloan Manag Rev

sloanreview.mit.edu/article/with-3-d-printing-the-shoe-

really-ts/>.

17 Richard Lai, “EADS’s Airbike is a 3D-printed nylon bicycle,

actually looks rather decent”, (3 September 2011), online:

Engadget

airbike-is-a-3d-printed-nylon-bicycle-actually-looks-rat/>.

18 See for example: Steven Kurutz, “A Factory on Your Kitchen

Counter”, N Y Times (20 February 2013), online:

www.nytimes.com/2013/02/21/garden/the-3-d-printer-

may-be-the-home-appliance-of-the-future.html>; Dan

Nosowitz, “A Smooth, 3-D-Printed, Multicolored, High-

Resolution Vase”, (19 July 2013), online: Pop Sci

www.popsci.com/technology/article/2013-07/smooth-3-d-

printed-vase-has-four-times-resolution-makerbot>.

19 Michelle Starr, “Dubai unveils world’s rst 3D-printed ofce

building”, (25 May 2016), online: CNET

com/news/dubai-unveils-worlds-rst-3d-printed-ofce-

building/>; Francesca Perry, “Chinese rm creates ‘world’s

tallest 3D-printed building’”, The Guardian (31 January

2015), online:

jan/31/chinese-rm-creates-worlds-tallest-3d-printed-

building>; Clare Scott, “Saudi Arabian Government Meets

With WinSun to Discuss 3D Printing as Part of a Plan to Build

1.5 Million Homes in Five Years”, (3 August 2016), online:

3DPrint.com

winsun-housing/>.

20 Aaron Souppouris, “NASA is funding a 3D food printer,

and it’ll start with pizza”, (21 May 2013), online: The

Verge

nasa-funding-3d-food-printer-pizza>; Bianca Bosker, “3D

Printers Could Actually Make Donuts Healthy”, Hufngton

already irreplaceable in medicine, especially in the

eld of replacement and reconstructive surgery.21

Alongside printing of dental implants, prosthetics

and hearing aids,

research is presently focusing on

bioprinting. Bioprinting opens up new possibilities

in the scope of innovative transplantology methods

thanks to the possibility of recreating organs and

tissue from human cells using 3D technology.23

Signicantly, 3D printing can be a key factor in future

commercial application,24 but it can also provide

individuals with further possibilities to print objects

in their own homes and thus become a symbol of

the “do-it-yourself” movement (“DIY”).25 Lipson

and Kurman point out that 3D printing requires less

operator skills which, along with a high production

capacity, make “3D printers ideal for home use”.26

Taking into account the current developments of

3D printing, it is probable that 3D printers will one

day be used in the majority of private homes, like

computers and 2D printers.27 So far, however, 3D

printers intended for home use have not reached

the level to print sophisticated forms in materials

other than plastic.

Post (24 April 2013), online:

com/2013/04/24/3d-printed-food_n_3148598.html>.

21 Sean Gallagher, “Doctors save baby’s life with 3D-printed

tracheal implant”, (24 May 2013), online: Ars Tech

arstechnica.com/information-technology/2013/05/

doctors-save-babys-life-with-3d-printed-tracheal-

implant/>; Carol Torgan, “3-D Printing of Working Bionic

Ears”, (13 May 2015), online: Natl Inst Health NIH

www.nih.gov/news-events/nih-research-matters/3-d-

printing-working-bionic-ears>.

22 Ian Birrell, “3D-printed prosthetic limbs: the next revolution

in medicine”, (19 February 2017), online: The Guardian

feb/19/3d-printed-prosthetic-limbs-revolution-in-

medicine>.

23 Liat Clark, “Bioengineer: the heart is one of the easiest

organs to bioprint, we’ll do it in a decade”, (21 November

2013), online: WIRED UK

article/3d-printed-whole-heart>.

24 Kevin Maney, “3-D printing could break China’s economic

stranglehold and make manufacturing great again”, (2

April 2016), online: Newsweek

com/2016/04/15/3d-hubs-3-d-printers-manufacturing-

china-443350.html>.

25 See for example: Rhys Jones et al, “RepRap - the Replicating

Rapid Prototyper” (2011) 29:1 Robotica 177; See also the idea

of Maker Movement: “The Maker Movement Manifesto”, PR

Newswire (2013); Amanda Scardamaglia, “Flashpoints in 3D

Printing and Trade Mark Law” (2014) 23 J Law Inf Sci 30 at

34.

26 See ten principles indicated by autors in Chapter 2: Lipson &

Kurman, supra note 14.

27 Compare: Daniel O’Connor, “A 3D Printer in Every Home:

Redux”, (11 October 2016), online: TCT Mag

tctmagazine.com/api/content/8908b0b0-8fcc-11e6-bee4-

0a161eac8f79/>; Lipson & Kurman, supra note 14 at 20–22.

The Intersection of 3D Printing and Trademark Law

2018

255

Nonetheless, the scope of the application of 3D

printing technology is expanding, and constant

processes of improvement, application of new

materials, and a reduction in prices of the materials

and printers28 are facilitating the popularity and

accessibility of this technology. 3D printing is also

being promoted by the biggest tech companies

such as Amazon and Microsoft who are selling 3D

printers29 and creating more efcient working

environments with this technology.30

14 Many commentators see 3D printing not only as a

new manufacturing paradigm of the XXI century,

but also as a trigger for the changes in society, the

environment, trade, the market, entrepreneurship,

and of course law.31 For example, according to the

McKinsey Report, 3D printing technology could be

benecial for small companies by providing them

with technological tools so that they can rapidly

enter into the market and compete on a more

signicant scale.32 On the other hand, as the use of

3D printing technology becomes more common,

ethical

and legal concerns

are increasingly raised.

From the legal perspective, 3D printing raises

many questions in different areas of law, including

contract law (e.g. it challenges the role of prosumers

and the denition of a “producer”) and tort law

(e.g. who, and to what extent, is liable for damages

caused by the 3D printed object, if defects can arise

from the initial design, the code, the printer, the

material, or in the improper use of the printer and/

or materials). 3D printing also has an impact on

Intellectual Property Law: patent law,

28 Lipson & Kurman, supra note 14 at 84.

29 Ian Paul, “Amazon quietly launches complete 3D printing

store”, (14 June 2013), online: PCWorld

pcworld.com/article/2042076/amazon-quietly-launches-

complete-3d-printing-store.html>.

30 Michael Endler, “Microsoft Touts Windows 8.1 3-D Printing”,

(8 August 2013), online: InformationWeek

informationweek.com/hardware/peripherals/microsoft-

touts-windows-81-3-d-printing/240159700>.

31 Lucas S Osborn, “Regulating three-dimensional printing:

the converging worlds of bits and atoms” (2014) 51:2 San

Diego Law Rev 553 at 560.

32 McKinsey Global Institute, supra note 6 at 19.

33 Compare: Jasper L Tran, “To bioprint or not to bioprint”

(2016) 17:1 N C J Law Technol 123.; Andy Greenberg,

“This Is The World’s First Entirely 3D-Printed Gun”,

(3 May 2013), online: Forbes

sites/andygreenberg/2013/05/03/this-is-the-worlds-

rst-entirely-3d-printed-gun-photos/>; Janessa Rivera

& Rob van der Meulen, “Gartner Says Uses of 3D Printing

Will Ignite Major Debate on Ethics and Regulation”, (29

January 2014), online: Gartner

newsroom/id/2658315>.

34 See for example: Nora Freeman Engstronm, “3-D Printing

and Product Liability: Identifying the Obstacles” (2013) 162

Univ Pa Law Rev Online 35.

35 See for example: Daniel Harris Brean, “Asserting patents to

combat infringement via 3D printing: it’s no ‘use’” (2013)

law,36 and trademark law which will be discussed

in this paper.

C. The Traditional Role of

Trademark Law

The trademark law system was created in order

to ensure that products or services that are

identiable through particular qualities, would

have a recognizable sign or expression attributed

to it to protect this identication.37 According

to the World Intellectual Property Organization,

trademark is “a sign capable of distinguishing the

goods or services of one enterprise from those of

other enterprises”.38 This denition is however

somewhat a shortcut. It should be noted that the

sign itself is not yet a trademark, but only the

element of the trademark concept. The sign has

to be associated with the product in a way that

creates a complex relation in the public perception

between the sign and the product. The core of the

trademark is thus the relation between the sign and

the product, recognized by consumers. This relation

can be created by the constant usage of the sign in

relation to certain products or by indicating the list

of products to which the sign will be related in a

registration form. In practice, though, the notion

“trademark” is used just to determine the sign.39

Nowadays, trademarks can take different forms such

as pictures, logos, designs, colors, melodies, scents,

store layout, menu, etc.40

It means that the primary role of the trademark

is to determine the origin (source) of the product.

The particular trademark leads to the certain

public perception of the product, which allows to

individualize the product based on its “commercial”

source. What is more, this “commercial” source

most frequently creates a consumer perception of

the quality of the product or its certain features.

23:3 Fordham Intellect Prop Media Entertain Law J 771.

36 See among others: S Craig, “Protection for printing: An

analysis of copyright protection for 3D printing” (2017)

2017:1 Univ Ill Law Rev 307; Julie Ahrens, “3D Printing and

37 See 15 U.S. Code § 1127 (2012)

38 “Trademarks”, online: World Intellect Prop Organ

www.wipo.int/trademarks/en>.

39 See for example Article 15 of the Agreement on Trade-

Related Aspects of Intellectual Property Rights (TRIPS).

40 See for example: Vanessa Mackie, “Scent marks: the future

of Canadian trade-mark law” (2005) 18:3 Intellect Prop J 417;

José Tizón Mirza, “CJEU expands trade mark law to include

the design of a store layout: Apple Inc v Deutsches Patent-

und Markenamt (German Patent and Trade Mark Ofce)”

(2014) 36:12 Eur Intellect Prop Rev 813; Richard J Berman,

“Color me bad: a new solution to the debate over color

trademark registration” (1994) 63:1 George Wash Law Rev

111.

2018

Nina Natalia Baranowska

256

Sometimes the trademark itself can be identied

as a symbol of certain characteristics; for example,

wealth, social position, tness and healthy lifestyle.

In this sense, trademark plays a quality and

advertisement role.

Generally speaking, trademark law has two

purposes. The rst is consumer protection, with

the goal to prevent consumers from the confusion

of the producer of the good, which usually leads to

the certain perception of its quality.41 For example

if the consumer buys a pair of Nike shoes, he/she

connects in mind the logo and the shoes with the

specic producer and then with the certain quality

or, more generally, with the symbol of an active

lifestyle. However, some commentators claim that

this concept is currently declining in importance.42

The second purpose concerns company incentives.

Protection guaranteed by trademark law, which

allows companies to control the use of the mark,

encourages them to invest in a brand and thus in

the higher quality and probably higher prestige.43

D. The Impact of 3d Printing

Technology on the

Trademark Law System

There are two major areas where the relation between

3D printing and trademark law collides. The rst

one concerns registering three-dimensional objects

as trademarks. Secondly, certain elements of 3D

printing such as democratization of manufacturing

process may pose some threats on the trademark

law system.

I. Shape as a Trademark

According to the Agreement on Trade-Related

Aspects of Intellectual Property Rights (TRIPS),44

41 Dan L Burk, “Trademark doctrines for global electronic

commerce” (1998) 49:4 S C Law Rev 695. At 699-700.

42 Felix S Cohen, “Transcendental Nonsense and the Functional

Approach” (1935) 35:6 Columbia Law Rev 809 at 815–818.

43 Osborn, supra note 31 at 582. See also: Qualitex Co. v.

Jacobson Prods. Co., 514 U.S. 159, 164 (1995) and Park ‘N Fly,

Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985).

44 1869 UNTS 299, 33 ILM 1197 (1994). The TRIPS Agreement

is Annex 1C of the Marrakesh Agreement, signed in

Marrakesh, Morocco on 15 April 1994 and came into effect

on 1 January 1995. Currently TRIPS Agreement was adopted

by 162 parties (see more:

en/other_treaties/parties.jsp?treaty_id=231&group_

id=22>). The TRIPS Agreement establishes a minimum

standard, which means that the signatories countries can

adopt more protective rules, but they cannot fall below

set requirements. See WTO website: “WTO | intellectual

shapes are a registrable subject matter. Under

Article 15(1) TRIPS, a trademark can be constituted

by any sign, or any combination of signs, capable

of distinguishing the goods or services of one

undertaking from those of other undertakings.

Such signs, in particular words including personal

names, letters, numerals, gurative elements and

combinations of colors as well as any combination

of such signs, shall be eligible for registration as

trademarks. Although, shape marks are not listed,

they could be generally accepted as registrable marks,

taking into account that the list of signs is of non-

exhaustive character. However, many jurisdictions

impose some limitations on registering shape marks.

According to Article 4 (1)(e) of the Directive (EU)

2015/2436 of the European Parliament and of the

Council of 16 December 2015 to approximate the

laws of the Member States relating to trade marks,45

signs which consist exclusively of: (i) the shape, or

another characteristic, which results from the nature

of the goods themselves; (ii) the shape, or another

characteristic, of goods which is necessary to obtain

a technical result; and (iii) the shape, or another

characteristic, which gives substantial value to the

goods, should not be registered. It means that the

functional shape cannot be registered as a trademark

under EU law, which signicantly limits the scope of

application of trademark protection over 3D prints.

The essence of majority of the 3D prints (including

toys, clothing, footwear, decorative elements) is,

in fact, to serve functional purposes – for those 3D

prints the shape is crucial for use. Recently, Nestle lost

a battle before the Court of Justice of the European

Union (CJEU) for registering its Kit Kat’s four nger

shape because the shape was functional and not

distinctive.46 Similarly, Lego’s three-dimensional

red eight-stud brick shape could not be registered

as a trademark, because the shape of the brick is

necessary to obtain a technical result.47 Restrictions

property - overview of TRIPS Agreement”, online:

www.wto.org/english/tratop_e/trips_e/intel2_e.htm>.

45 OJ L 336, 23.12.2015.

46 Case C215/14, Société des Produits Nestlé SA v Cadbury

UK Ltd (16 September 2015) ECLI:EU:C:2015:604. See more:

John Murray Brown, “KitKat can be copied as Nestlé loses

trademark protection”, (15 December 2016), online: Ir

Times

and-food/kitkat-can-be-copied-as-nestl%C3%A9-loses-

trademark-protection-1.2907537>.

47 Case C48/09 P, , Lego Juris A/S v Ofce for Harmonisation in

the Internal Market (Trade Marks and Designs) (OHIM),(14

September 2010) ECLI:EU:C:2010:516. See more: CNN Wire

Staff, “LEGO brick not a trademark, court rules - CNN.

com”, (15 September 2010), online:

com/2010/BUSINESS/09/15/eu.lego.trademark/index.

html>. On the other hand, CJEU ruled that Lego’s mini three-

dimensional gures can be classed as a protected trademark

shapes. Case T396/14 Best-Lock (Europe) Ltd v Ofce for

Harmonisation in the Internal Market (Trade Marks and

Designs) (OHIM) 16 June 2015, ECLI:EU:T:2015:379.

See more: Sarah Butler, “Lego blocks legal bid to remove

The Intersection of 3D Printing and Trademark Law

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257

surrounding the registration of shape trademarks

exist also under the U.S. law system.48 According

to the functionality doctrine, the shape eligible to

of the product and cannot affect the cost or quality

of the product.49 If the shape does not have utility

it can be registered, if it is distinctive. However, the

lack of utility will be applied in the minority of the

cases, while many of the 3D prints will be functional

shapes – excluded from the trademark registration.

Among that minority of the cases where a 3D print

is distinctive but does not serve a functional purpose

it may be registerable.

Furthermore, taking into account the essence of

trademark protection, it should be pointed out that

granting trademark protection does not mean that

the trademark owner has an exclusive and unlimited

right to the sign. Trademark owners have a right to

use the sign as their trademark, which means with

the connection to the origin of the product. In this

minority of cases when a shape can be registered

as a trademark, using a shape by a consumer for

his/her personal, descriptive or aesthetic reason,

infringement of the shape trademark will not take

place.50

22 Nonetheless, the greater possibilities of 3D printing

poses, several questions concerning the registration

of a trademark consisting of three-dimensional

objects (shapes), including the role of the trademark

law system, the growing scope of registerable subject

matter, the reasons for the registration of shapes,

and the enforcement of trademark protection

given to shapes if the 3D printing would become

the norm.51

II. The Impact of Certain Elements

of 3D Printing Technology on

the Trademark Law System

This section examines the potential impact of

certain features of 3D printing on trademark law,

and the way it can inuence the protection of

both companies and consumers. As a consequence,

companies will have to rethink their business models

trademark protection for its mini-gures”, (16 June 2015),

online: The Guardian

lifeandstyle/2015/jun/16/lego-trademark-protection-

mini-gures-european-court-justice-best-lock>.

48 Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164-

165 (1995).

49 Scardamaglia, supra note 25 at 39.

50 Ibid at 41.

51 Scardamaglia, supra note 25 at 44–45; See more: Mark A

Lemley, “IP in a World Without Scarcity” (2015) 90 N Y Univ

Law Rev 460.

to protect their brands.

1. Democratization of Production Process

The main feature of 3D printing is liberalization

of the production process. Almost anyone can

become a manufacturer, carrying out their own

projects or producing items on the basis of designs

supplied by others and made accessible via the

Internet. The manufacturing process itself is made

easier, and it is possible to skip over some stages

of production, which means that manufacturing is

greatly facilitated. Creation of a product requires

only the proper code, materials, and the printer.

Allowing private entities to “print” objects blurs the

line between the producer and the consumer. This,

in turn, leads to considerable threats of printing (in

practice – manufacturing) fake trademarked goods

by private entities in their homes.

2. Dissemination of Production Process:

Participation of Hobbyists

Along with liberalization, the production process

is disseminated. The process may involve many

independent entities: the designer of the code;

the designer of the printer; the operator of the

printer; the supplier of materials; and the seller,

who can produce the object him/herself, or can

create the product in a printing shop and then sell

it. It means that the design, production, and the

distribution of products can be “democratized”.52

What is more, many of the 3D printer owners use

previously generated computer projects and designs

which are available on the Internet. The possibility

of sharing models and projects creates the new

online ecosystem,

which makes it more difcult

for companies to control the use of their products

and trademarks. Moreover, taking into account

that 3D printing can be a home process without a

professional third party, the possibility of producing

fake goods is moved from well-organized criminal

groups to the domesticity of regular users.54

3D printing is also a very precise technology that

enables the production of objects in great resolutions.

By using a layer-by-layer method, it is now possible

to create objects whose production would be

impossible with the use of traditional methods.

52 McKinsey Global Institute, supra note 6 at 16.

53 Ibid at 14.

54 Compare: Richard Nieva, “Ashes to ashes, peer to peer: An

oral history of Napster”, (5 September 2013), online: Fortune

peer-an-oral-history-of-napster/>.

2018

Nina Natalia Baranowska

258

Home-made 3D printed goods can be of excellent

quality, so that it would be difcult to distinguish

fake trademarked goods from the originals. One

can conclude that this technology might generally

improve the quality of faked goods.

3. The Role of CAD File

It is also common practice to freely share a CAD

le over the Internet through online platforms,

e-mails, cloud technology, etc. Many of the platforms

are used by hobbyists who upload, download and

exchange les for free.

4. Modifications

28 Another hugely important feature of 3D printing is

the possibility of modifying a CAD le, which is the

source of a 3D printout. The point of 3D printing is

not only “printing” (adding) layer-by-layer to create

three-dimensional objects. What is important is that

this technology enables the users to download the

le, copy it and make modications. Both a 3D printer

and a CAD (digital) le play the essential roles in the

printing process. As in the case of 2D printing, in

which it is important to have a le (text or drawing

le) that is sent to the printer and printed on a

piece of paper, in 3D printing it is necessary to have

a project that is then “printed” in a spatial form.

The difference lies in the higher technological level

of the project (more details, higher precision in the

case of multiple-element objects, greater knowledge

about the software).

Having a digital le and a suitable computer program

enables, in turn, to modify the project. The user

basically has two paths leading to the nal result in

the form of a printed object. Firstly, having a CAD

le and program at disposal, the user can create his/

her own project. However, this requires some design

skills. Nevertheless, the project can be created by

a special software through scanning a physically

existing object that will be then transformed into

a digital le.

Secondly, the user can nd already

prepared projects on the Internet.56 In both cases, a

signicant issue from the perspective of trademark

law is the ability to modify the project. Ready-to-go

projects can be personalized by adding, changing or

deleting individual items.

55 See online tutorials:

id/3d-Scan-Anything-Using-Just-a-Camera/>,

www.3dhubs.com/talk/t/3d-scanning-what-technologies-

to-use-for-3d-printing/1743>.

56 For example: .

5. Worldwide Scope

30 “Zipping” a physical object into a digital le opens

new possibilities for creating objects. By providing

the possibility of producing objects from a digital

le, 3D printing seems to create a bridge between

the digital and the physical world. A digital le also

allows one to send, receive, and exchange les freely.

The worldwide access to the Internet enables people

to share any number of CAD les between users in

different parts of the world.57

How can these characteristics inuence

trademark law? Firstly, it has to be emphasized that

at least under EU law, the private reproduction of a

trademark is not an infringement. This means that

the essence of 3D printing, embodied in a homemade

production, will not directly and radically affect

the core of trademark protection. Nonetheless,

3D printing possibilities may have an impact on

companies’ interests. At this point, it is necessary

to distinguish between three different scenarios:

the individual prints the fake trademarked goods

for his/her personal use, he/she distributes it to

public, or sells it. In the rst case, as mentioned

above, an infringement will generally not take place.

Printing trademarked goods for personal use (e.g.

printing fake trademarked kitchen equipment) will

not infringe the rights of the brand because it is

not related to selling, distributing or advertising.58

However, even if individuals produce goods for

personal use, they can distribute (e.g. wear or use)

them in public, which may lead to some confusion.

Osborn, the American author, observes the problem

of post-sale confusion related to 3D printing. Post-

sale confusion occurs not at the moment of purchase,

but later when the others see someone wearing or

using the goods and then get confused about the

origin of the products.59 He stresses that without

the post-sale confusion, “the purchase or use of

pirated goods by a knowing buyer would not infringe

because they were not confused as to the source”.60

While printing the object, individuals have complete

knowledge of the origin of the object and that the

object does not come from the brand owner source61

57 Ibid at 560.

58 Compare 15 U.S. Code § 11 14(l)(a) (2012). See Art. 20 (1)

Trade-marks Act R.S.C., 1985, c. T-13 (Canada).

59 Osborn, supra note 31 at 583; See more: Michael J Allen, “The

scope of confusion actionable under federal trademark

law: who must be confused and when?” (1991) 26:2 Wake

For Law Rev 321 at 325–326; Anne M McCarthy, “The post-

sale confusion doctrine: why the general public should be

included in the likelihood of confusion inquiry” (1999) 67:6

Fordham Law Rev 3337 at 3348–3351.

60 Osborn, supra note 31 at 583. See more: Anne M McCarthy,

“The post-sale confusion doctrine: why the general public

should be included in the likelihood of confusion inquiry”

(1999) 67:6 Fordham Law Rev 3337 at 3348–3351.

61 Weinberg, supra note 8 at 8.

The Intersection of 3D Printing and Trademark Law

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259

in cases of fake trademarked goods. However, taking

into account the general public protection, in the

American doctrine, McCarthy argues that “the use

of a trademark likely to cause confusion among

the general public in a post-sale context should

be actionable under federal trademark law”.62 This

statement may apply to the case of fake trademarked

printed goods which are distributed among the

general public. Under EU law it is, however,

debatable whether the risk of confusion occurs when

the trademark has not been commercially exploited.

It would mean that only when the printed good has

been sold and distributed by the individual, there

might be infringement of the trademark. Even in

this case, trademark owners would probably have

to prove that the particular individual printed the

trademarked good and that it was used in public.63

This, in turn, can be extremely difcult to achieve

and in turn renders the trademark protection

impossible to enforce.

32 Narrowing down the trademark protection only to

the cases when the trademark has been commercially

exploited is a signicant limitation of the role of

trademark system, especially in the light of new

technological developments. As explained above,

the potential of 3D printing is fullled by individuals

printing objects by themselves. This, however, may

bring piracy into private homes. While one or two

printed fake trademarked goods are probably not

enough to jeopardize the interests of the company,

the growing interest in 3D printing may adversely

affect the brand’s power. Some authors use the

example of the impact of Napster on a music scene.

33 3D printing not only changes the role of the brand

as an “intermediary” between a producer and its

consumers, but also raises questions about the line

between a producer and a consumer. At what point

does the individual, who reprints objects using his/

her 3D printer, become a professional? Does he/

she have to sell 3D printed objects? How should we

classify the individual who sells these objects only

occasionally? How should we classify the individual

who distributes these objects for free or only for

a symbolic payment? What if he/she does it on a

massive scale? These and similar questions lead to a

problem that in the case of 3D printing, the current

form of trademark protection scope excludes

many potential threats to the company’s brand

form trademark protection due to a commercially-

oriented exploitation and the blurred lines of

62 McCarthy, “The post-sale confusion doctrine: why the

general public should be included in the likelihood of

confusion inquiry” (1999) 67:6 Fordham Law Rev 3337

at 3338, 3340.

63 Osborn, supra note 31 at 583.

64 Richard Nieva, “Ashes to Ashes, Peer to Peer: An Oral History

of Napster”, CNN MONEY (Sept. 5, 2013, 5:00 AM),

tech.fortune.cnn.com/2013/09/05/napsteroral-history>.

commercial uses. The problem will probably grow

in the future along with further developments of

3D printing.

Even if the trademark protection may only apply

when commercial uses take place, 3D printing might

create and exacerbate problems of trademark’s

infringement. 3D printing opens up further

possibilities of counterfeiting goods and enables

anyone to become a counterfeiter at his/her own

home and take commercial advantages of 3D

prints. One may say that this is basically the same

problem that already exists today. What 3D printing

changes is that counterfeiting is becoming easier,

faster, more accessible and relatively cheaper (if

the price of 3D printers and materials continues to

drop). Moreover, the use of CAD les in the online

environment and empowering regular users with

sophisticated tools of creating objects change the

context of counterfeiting. 3D printing may increase

the incentive for regular users to create copies of

trademarked goods and to start making prot off

them.

The current stage of 3D printing development

addresses a practical question concerning how

realistic it is for 3D printing to become a serious

risk for companies from the product sectors and to

threaten the brand’s interests. There are two issues

that have to be taken into account. First of all, the

main practical obstacle for 3D printing becoming the

major way of producing marked goods is the cost.

A series production of marked goods (elements,

components, etc.) is still a cheaper way for companies

to produce goods than using 3D printing technology.

As long as the costs of 3D printing remain higher

than series production, companies will probably

not switch to 3D printing on a regular basis. It may

very well be that the series production will remain

the mainstream, whereas 3D printing will occupy

only margin and niche markets limited to hobbyists’

activities or, on the other hand, highly specialized

sectors such as the medical market (e.g. hearing aid

and prosthetic production). In that case, the brand

infringements through 3D printing will remain at

a margin. Nonetheless, it may only be a matter of

time before this technology will reach the price

level that will turn it into cost-effective method of

producing goods. Well-known examples from the

past include copy machines and 2D printers. If that

happens, the new scheme for the functioning of the

production process will have to be adapted to further

development. It is also possible that in the future, a

consumer would buy a design(model) rather than

a complete object. Those predictions may seem

visionary, but history has many lessons to teach us

about the impact of innovations.

2018

Nina Natalia Baranowska

260

The second practical consideration regarding 3D

printing and trademark law is that 3D printing will

not play an important role in many categories of

counterfeited goods. One can mention for example,

food, cosmetics, and cleaning articles, which consist

of ingredients that home printers are not capable of

using. Even if it was theoretically possible to print

such products, realistically none of the consumers

would do this if he/she could buy the same products

for a few Euros in the store next door. Again, the

price and costs are of key importance in the

practical usage of 3D printing. Moreover, the current

development of this technology concentrates

mainly on printing in certain type of materials,

such as plastic or some textiles. It means that 3D

printing is currently available only for producing

the limited types of goods. This, in turn, means that

for trademark considerations reprinting only limited

goods could create potential for brand infringement.

Therefore, the possibility of counterfeit trademarked

goods through 3D printing will concern mainly

luxury goods such as watches, handbags, decorative

elements, which are relatively accessible through 3D

printing and protable for counterfeiters.

It is also important to distinguish between three

types of printing: printing only the trademark;

printing the whole item, to which the trademark

is attached; and printing the whole item without

the trademark. 3D printing enables all of these

possibilities. As mentioned above, trademarks do

not protect products as such, but the reference to

a certain commercial source, which is connected

with a company’s good image and quality. Therefore,

reprinting products does not infringe the trademark,

unless the trademark is afxed to them. From the

practical point of view, if a user decided to print

the object for personal use, he/she would probably

not bother to attach the trademark to it, as they

would be more interested in the functional (or

decorative) side of the object. Again, the luxury

goods will be an exception here. Of course, when

the shape was registered as the trademark or

when the object consisted of engraved signs which

already appeared during the printing process, this

could lead to infringement. However, registering

functional shapes is hardly possible under existing

law and only commercial use would constitute

infringement. Furthermore, 3D printing not only

enables one to simply copy goods, but also provides

the unlimited possibilities of editing les and makes

possible the uncontrollable and easy modication of

trademarked goods and a trademark itself. Users can

for example personalize and customize a le, as well

as create fusion or parodies of trademarked goods.65

Thus, the user now has the practical possibility to

easily remove the trademarked name or logo from

products before printing (which, however, does

65 Osborn, supra note 31 at 585–586.

not infringe the trademark as such) or, what is

probably more detrimental from the perspective of

the company, the trademark (e.g. logo, sign) can be

added to the product, which does not come from

the trademark owner company. For example, the

sign “LV” (standing for the Louis Vuitton brand) can

be attached to a no name handbag, which in turn

might be sold as an original. As 3D printing can

precisely recreate existing products or trademarks,

it can easily transform into a new method for

counterfeiting goods. Counterfeiting is not a new

problem, but now it can be done by anyone at home

with a 3D printer and software.

38 One of the features of 3D printing which facilitates

counterfeiting is that 3D printing is based on

a dataset of an object – a CAD le. The online

environment enables users to share and exchange

les, and to nd complete projects of different items

on online platforms – many of them are available to

download for free. A CAD le can be produced by

an individual and then released online. Producing

a dataset requires some design skills (if it is created

from the beginning by the individual) or a more or

less sophisticated scanner technology (scanning

options can be offered by 3D printers). The easiness

of nding many complete projects online supports

the argument that the les will be offered online by

professional counterfeiters rather than produced

by each individual. Professional counterfeiters

are to be understood as persons who counterfeit

goods for dishonest or illegal purposes and for

commercial reasons. They can offer a dataset free

of charge or on payment which will still be cheaper

than purchasing an original product. However,

further developments of reprinting and scanning

technology (more effective and cheaper solutions)

may result in more individuals being able to create

a dataset. This also shows the more basic problem

of 3D printing – this technology empowers regular

users with greater tools that, if applied dishonestly,

can transform them into counterfeiters and facilitate

the brand’s infringement. The fact that the sender

does not lose his/her possession over the object

while sending a le causes additional loss of a

company’s control over its trademark.66 Moreover,

3D printing blurs the line between a producer and

a user, as well as the line between commercial and

non-commercial activities. As mentioned above, in

order to constitute the infringement, the trademark

protection requires “use” of the trademark in the

commercial sense. In the case of 3D printing it might

be difcult to determine when a CAD le or a 3D

printed trademarked good is used in commerce. The

judicial interpretation based on the factual situation

of the specic case will probably play a key role.67

66 Scardamaglia, supra note 25 at 33.

67 Case US, Wickard v. Filbum, 317 U.S. 111, 128-29 (1942).

The Intersection of 3D Printing and Trademark Law

2018

261

39 Taking into account only a CAD le, which includes

a project of a trademarked good, the question also

arises whether the le can be perceived as a product.

It refers to a lively discussion, mainly in the area of

product liability law, on the denition of product

and the possibility of considering a digital le as a

product. Currently many legal scholars, contrary

to hard law rules, agree to that interpretation.68

However, a trademark will not be used every time

with the same digital le. Lucas Osborne highlights

that it might happen that a le with a trademark

and a design of the object will be separated, but a

user will be able to combine those two les and the

embedded trademark on the product.69

Even if the problem of counterfeited reprinted

goods may still seem marginal (limited to certain

types of 3D printed items commercially exploited),

it might be a growing trend along with the further

development of 3D printing. It is probably a matter

of time, when companies might start losing their

control over the use of their trademarks. In that

scenario, companies will also face practical problems

with enforcing their rights and for most of them

enforcement of trademark protection may not

be protable. The costs of a court procedure are

generally high, especially when the infringement

of the trademark was committed by a single entity

acting commercially. Even if the company decides to

le a case, in practice there will be many obstacles

with proving the infringement of trademark and

even nding the infringer on the Internet. In the

case of a single infringement of trademark, it may

not be lucrative for companies to protect their rights

in a court, whereas easiness, speed, and low costs

of creating objects in 3D printing technology will

probably increase the problem of infringement.

Moreover, the scope of trademark protection

in the case of a registered trademark is, in

principle, territorially limited. When we take

into account that Internet connectivity enables

us to share the les freely, territorial limitation

of trademark might not be a sufcient solution.

The international harmonization in terms of a

uniform standard of trademark protection and the

facilitation of registering trademarks denitely

bring benets to international companies. The

Madrid Arrangement Concerning the International

Registration of Marks and the Madrid Protocol

for the International Registration of Marks (the

two treaties forming the so-called Madrid System

administered by the International Bureau of the

68 See for example on the ground of product liability: Max

Loubser & Elspeth Reid, Product liability in South Africa

(Claremont: Juta, 2012) at 81; Contrary M A (Michael A )

Jones et al, Clerk & Lindsell on torts, twenty-rst edition.

ed, Common law library (London: Sweet & Maxwell, 2014)

at 847.

69 Osborn, supra note 31 at 585.

World Intellectual Property Organization (WIPO)

in Geneva) enable the “extension” of a trademark

application made in one country to other countries,

selected in the application which are the members

of the Madrid Union.70 The Madrid Union now has

98 members, which cover 114 countries and 80% of

world trade.71 This system improves the scope of

trademark protection, but practical problems may

arise with the enforcement of trademark owner

rights.

E. Optimal Solutions

42 The above considerations show that the issue of the

relationship between 3D printing and trademark law

is multi-threaded. Even though it is limited only to

certain problems (and goods), the growing pace of

technological development will probably deepen

this interaction. In the literature, a comparison of

the current technological state of 3D printing and

its impact on IP law can be found within the music

market and the emergence of mp3 les and platforms

such as Napster.72 The signicant difference between

those examples lies in the possibility of modifying

a CAD le, which was not the case with mp3 les.

Simply put, even if users exchanged mp3 les or

illegally copied them, Beyoncé’s songs would remain

Beyoncé’s songs (even when copyright is infringed).

3D printing allows for a lot of interference in both

the trademark itself and the trademarked good

by manipulating the CAD le (removing or adding

trademarks, reprinting whole items).

In search of solutions in connection with the

development of new technologies, including 3D

technology, it is worth referring to the proposed

concept by Lessig. According to Lessig, there are

four modalities that have an impact on regulating

technology: legal norms, social norms, markets, and

“architecture”.73 It means that hard law regulations

are not the only factor that can provide adequate

responses to the threats posed by 3D printing.

Lessig claims that social norms can be enforced by a

community; the market regulates people’s behavior

through prices; the “architecture” of the physical

and digital world has an impact on how technology

is used – the “architecture” of technology can have

70 “Protocol Relating to the Madrid Agreement Concerning the

International Registration of Marks”, online: World Intellect

Prop Organ

index.html>.

71 “Members of the Madrid Union”, online: World Intellect Prop

Organ . See

the list of members:

www/treaties/en/documents/pdf/madrid_marks.pdf>.

72 Ibid at 603, 612; Scardamaglia, supra note 25 at 37.

73 Lawrence Lessig, “The Law of the Horse: What cyberlaw

might teach” (1999) 113:2 Harv Law Rev 501 at 507 ff.

2018

Nina Natalia Baranowska

262

an impact on people’s behavior, for example if the

technology is well-designed and user-friendly it can

build people’s trust and encourage them to use it

more often.74

How can these modalities refer to the case of

3D printing and trademark law? In the case of

trademark protection, a lot depends on a company’s

policy. Strategic management and decision making

directly inuence the regulatory possibilities of

“architecture” and market – for example, how

much the company is motivated to protect their

trademarks, what precautions it takes to protect

them, how it regulates products’ prices, etc.

Probably, in the case of trademark and 3D printing

possibilities, hard law regulations will not be an

effective solution. Even if the regulations were

stricter, companies would have to use a lot of power

to enforce them, for example by “chasing” hobbyists

and single private entities who infringe trademark

use. Introducing stricter regulations, for example

through tougher criminal penalties, would probably

not lead to satisfactory results, if again there will

be no tools to enforce them. Moreover, it might

be against the principle of justice if a hobbyist was

treated at the same way as well-organized criminal

groups.

Therefore, the following parts will focus on different

solutions; specically, selling certicated 3D printable

les by companies, and hard law regulations focused

on liability of online intermediaries that facilitate

the sending of les that can infringe trademark

rights.

I. Certificated 3D Printable Files

The rst solution is that trademark owners

should create their own certicated 3D-printable

les.

Offering certicated les for sale would be

a way to adjust their business model to the new

technological and “3D-prinatable” reality. The

examples from the music and lm industry show

that their stubborn resistance to necessary changes,

as well as looking for solutions only among existing

legal rules (for example suing traders and users),

and lack of alternative to peer-to-peer platforms

do not guarantee an effective level of protection

(both for companies and consumers).76 To meet

the expectations of consumers and to follow the

74 Lawrence Lessig, “The Law of the Horse: What cyberlaw

might teach” (1999) 113:2 Harv Law Rev 501 at 509.

75 Scardamaglia, supra note 25 at 52–53; Osborn, supra note 31

at 585–586.

76 Bob Lefsetz, “Lefsetz Letter » Blog Archive » Losing The

Press War”, (28 November 2005), online:

com/wordpress/2005/11/28/238/>,

wordpress/2005/11/28/238/>.

technological trends, companies may also decide to

provide users with the possibility to make changes,

personalize and customize a le. This approach may

help to keep the pace of technological trends and

provide companies with the income, taking into

account that some consumers would rather buy

certicated les, if their price is reasonable or if

consumers obtain additional services and benets

(e.g. access to special platforms). Selling certicated

les is also protable for companies because a

company does not have to produce the whole

product and in turn pay the full production costs

and overheads (materials, labor force, storage costs,

etc.). This proposal will be explained below in detail,

considering all the advantages and disadvantages

and taking into Lessig’s concept of “architecture” as

regulatory means. The starting point in assessing this

solution would be a question: why would companies

be interested in authorizing users to print and use

their trademarks, if they did not have control over

the quality of the product?

47 Selling authorized CAD les with a product design

and trademark can potentially lead to a loss of control

over a production process, the materials used, and

the quality of workmanship. 3D printing technology

allows users to apply different materials, which may

not be the material used by the trademark owner in

its production line. As a consequence, 3D printed and

trademarked goods could not maintain the required

level of quality and the trademarked good could

convey a poor reputation for the line of products

or the company itself. Therefore, the efforts of the

company which has invested in the brand could fail.

48 What is more, computer software enables users to

make changes in the digital design: color scheme,

shape, size, etc. It is also easy to copy the content

of the le, including the protected logo or design

and use it in another le. Distributing les could

also potentially increase the number of counterfeit

products.

The next considerable disadvantage to this proposal

concerns consumer protection. The buyer of the

certicated le can print the object and use it for

personal use only or can start selling the 3D printed

goods. Both scenarios can have harmful effect not

only for the companies, but also for the public. As

mentioned above, the role of the trademark is to

prevent consumers from the confusion of the origin

of the good. If the trademarked good no longer

gives the consumer clear information regarding

the source of the product, the trademark law system

starts losing its gist. Confusion can occur when the

buyer uses the 3D-printed object for personal use

(regardless of the fact, whether he/she uses it in

public, e.g. shoes, or not, e.g. kitchen gear), as well

as when he/she sells 3D-printed and trademarked

goods, which can infringe trademark. Buyers

The Intersection of 3D Printing and Trademark Law

2018

263

purchasing 3D-printed but trademarked goods may

wrongly believe that they are buying a product

from the trademark owner. Even if 3D-printed and

trademarked goods are intended for personal use, in

the event of its damage, the public may associate the

trademark with low quality, which will have adverse

consequences for the trademark owner.

The problem of increasing the risk of liability for

injuries caused by defective products (product

liability) is not directly connected with the

trademark law system, but can have impact on

the company’s functioning, business strategies

and the general image of the brand. According to

a general rule of product liability law, liable entity

is a producer. Although it might be problematic

to indicate a producer (a company which sells 3D

les or a person who prints them), the company

distributing certicated les can be involved in a

causal link and thus be jointly and severally liable

(under contribution or recourse rights).

Despite the indicated doubts regarding the

possibility of selling certicated CAD les, attention

should be given to the advantages. The wider

possibilities of printing trademarked products at

home can completely change the business models.

These possibilities are based on the assumption that

3D printing will be more accessible for ordinary

people. First of all, if 3D printers are becoming more

widespread and companies will allow individuals to

use certicated les, the counterfeit market might

lose its signicance. It would not make sense to buy

counterfeit goods, if there is the possibility to print

a trademarked good from a certicated le for a

good price. Together with the le, a company may

sell additional services and provide their users with

benets (e.g. access to an online platform, software,

updates). The price of the certicated le and

business decisions of companies are thus a crucial

element of this proposal.

52 Secondly, thanks to 3D technology and certicated

le sales opportunities, companies would not have

to use international outsourcing.77 Currently, a large

part of production costs include the labor force.

In order to decrease those costs, big companies

are moving their business to China or Indonesia.

3D printing technology switches to distributed

manufacturing and allows more local actors to play

a role in the production process. Selling certicated

les for regular users could thus cut additional costs

of producing goods, if the buyers are going to print

(manufacture) objects by themselves. Thirdly, selling

certicated les may encourage more people to

wear trademarked goods, which can be perceived

as a good advertisement of a product. And last but

77 Federico-O’Murchu, supra note 1.

78 Maney, supra note 24.

not least, selling certicated les could be the way

for companies to increase their income. Taking

into account the current rapid development of new

technologies, especially those which are Internet-

based, it is nearly impossible to control all users

who can print out the fake trademarked goods

anyway. By selling certicated les, companies can

generate an additional income – not selling les will

remain the status quo in which users get les for free

(through hobbyist platforms, scanning software,

modifying existing les, sharing les, etc.). In the

future, companies and trademark owners may also

decide to completely replace their production of pre-

made goods and sell only printable les.

The above-mentioned scenario might sound too

visionary; in practice, it might occur that by selling

certicated 3D les, companies would lose control

over their trademarks and the quality over products

and 3D printing technology would be used to produce

more counterfeit goods. To avoid further problems,

if companies decide to sell their trademarks and

designs to individuals, certain “architectural”

elements of the les should be considered as a way

to prevent the detrimental effects of releasing a

trademark. The idea behind the sale of CAD les is

that the le can be customized. However, to protect

a company’s interests, the number and the scope of

changes or modications might be limited. Similarly,

in order to maintain the adequate level of quality of

the products, the le can be restricted only to use

certain types of materials to print certain products.

Currently, home printers usually use only basic

materials such as plastic; however, it is likely that in

a few years individuals will gain more technological

possibilities to print in more sophisticated materials.

Moreover, 3D printed trademarked goods could have

some special characteristics so that the public can

recognize that the particular product was 3D printed

and not manufactured by a trademark owner. In an

attempt to maintain control of the quality of the

products, les can be programmed to send data to

companies, so that they could analyze how many

products have been printed, as well as the location

of the print. However, this possibility raises sensitive

problems related to privacy protection.

II. Market Rules: Price Policy

Along with architectural changes, market rules

might be also an important factor. The market can

regulate people’s behaviors through the price of

the product.79 Trademarked goods are usually more

expensive than no-name brands. It can be part of the

marketing strategy (paying more can be perceived

as something more luxurious or of a higher quality)

79 Lessig, supra note 73.

2018

Nina Natalia Baranowska

264

or it can be justied by the costs invested by a

company to create a well-known brand (higher

quality, advertising, etc.). Lowering the price of

certicated les may prompt more people to start

buying original trademarked les.

III. Social Norms: Education

55 Social norms in this case basically refer to the users’

perception regarding whether or not it is wrong to

use counterfeit goods (goods produced by the third

party with embedded trademark) in general.80 A

report of the Organisation for Economic Co-operation

and Development (OECD) and the European Union’s

Intellectual Property Ofce published on 18 April

2016, “Trade in Counterfeit and Pirated Goods:

Mapping the Economic Impact” estimates the

value of imported fake goods worldwide at USD 461

billion in 2013.81 As noted in the report, the trade in

counterfeit and pirated goods hit the hardest the US,

Italian and French brands and is often proceeded

by organized criminal groups.82 3D printing can

contribute to further growth of fake goods, although

not all of them. The counterfeit market is now

expanding its scope from items like shoes or bags, to

more sophisticated goods such as pharmaceuticals.

3D technology can facilitate the production of

certain fake trademarked goods both by private

entities and criminal groups. However, regardless

of the entity that produces fake goods, the important

factor is the reaction of the public and the personal

will for buying counterfeit goods. Often the reason

for buying or producing counterfeit goods is the

lack of knowledge. A society which is well-informed

about the detrimental effects of using counterfeit

goods can make more conscious decisions and even

generate social norms concerning whether it wants

to contribute to the counterfeiting industry.

80 “Dan Ariely Explains the Problem With Fake Fashion: Part

One”, (3 July 2012), online: High Low

com/2012/07/dan-ariely-explains-the-particular-problem-

with-fake-fashion-part-one/>.

81 “Trade in Counterfeit and Pirated Goods: Mapping

the Economic Impact”, online: OECD ILibrary

www.keepeek.com/Digital-Asset-Management/

oecd/governance/trade-in-counterfeit-and-pirated-

goods_9789264252653-en>; “Global trade in fake goods

worth nearly half a trillion dollars a year - OECD & EUIPO

- OECD”, online:

trade-in-fake-goods-worth-nearly-half-a-trillion-dollars-a-

year.htm>.

82 note 80.

83 Steve Hargreaves, “Counterfeit goods market is booming

and becoming more dangerous”, (27 September 2012),

online: CNNMoney

news/economy/counterfeit-goods/index.html>.

IV. The Liability for Intermediary

Online Platforms

56 The last proposed solution is regulating the liability

of intermediary online platforms, where CAD les

are uploaded and downloaded. First of all, it is worth

mentioning a recent case, Stichting Brein v Ziggo

BV, XS4ALL Internet BV (Case C610/15)84, which was

resolved before the Court of Justice of the European

Union. The referring court raises “the matter of the

liability of operators of indexing sites of peer-to-peer

networks for copyright infringements committed

in the context of the use of those networks. Can

those operators themselves be regarded as being

the originators of those infringements, which would

mean they are directly liable (rst question)? Or, even

if they are not directly liable, can an order be made

blocking access to their websites, which, as I shall

explain below, requires a form of indirect liability

(second question)?”85 The Court of Justice stated that

“the concept of ‘communication to the public’, within

the meaning of Article 3(1) of Directive 2001/29,

must be interpreted as covering, in circumstances

such as those at issue in the main proceedings, the

making available and management, on the internet,

of a sharing platform which, by means of indexation

of metadata referring to protected works and the

provision of a search engine, allows users of that

platform to locate those works and to share them

in the context of a peer-to-peer network” (para 48).

Although, the case is based on copyright and

Directive 2001/29/EC,86 not on trademark law, the

concept of online operators’ liability from this case

could be transferred to online platforms where it

is possible to upload and download unauthorized

designs of a trademarked good or trademark itself.

58 The liability of online platforms (in general) is now

widely discussed in the EU,87 which is the expected

direction of further legislation. The new liability

regime for online providers is also discussed under

the proposal for a Directive on copyright in the

Digital Single Market.88 In June 2018, the European

Parliament voted in favor of new liability regimes

under Article 13 of the proposal, which makes online

84 Stichting Brein v Ziggo BV, XS4ALL Internet BV (Case

C610/15), ECLI:EU:C:2017:99.

85 Ibid.

86 Directive 2001/29/EC of the European Parliament and of

the Council of 22 May 2001 on the harmonisation of certain

aspects of copyright and related rights in the information

society, OJ L 167, 22.6.2001, p. 10–19.

87 “Online Platforms”, online: Eur Comm

eu/digital-single-market/en/online-platforms-digital-

single-market>.

88 Proposal for a directive on copyright in the Digital Single

Market, COM/2016/0593 nal - 2016/0280 (COD).

The Intersection of 3D Printing and Trademark Law

2018

265

platforms liable for copyrighted material.89 In 2019

the nal wording of the Directive will be put to the

vote.

F. Conclusions

The aim of this paper was to answer the question

how, and to what extent, 3D printing can interfere

with the trademark law system. To answer it, as a

starting point, 3D printing was presented as a new

disruptive technology. According to research, this

technology with its freedom, easiness, and low

costs of designing and printing objects can have a

signicant impact on society, economy and also law.

Trademark law is one of the areas of law which might

be inuenced by 3D printing. First of all, there is a

matter of registering three-dimensional objects as

trademarks, which is generally not possible under

existing law regulations. Secondly, although one

may claim there is no signicant potential impact

of 3D printing on trademark law, the paper stated

that democratization and dissemination of the

manufacturing process, participation of hobbyists,

the signicant importance of CAD le, and the

possibility of its modication, and worldwide scope

of 3D printing based on the Internet may have an

impact on the trademark law system. 3D printing

was presented as a technology which empowers

regular users with greater tools that, if applied

dishonestly, can transform them into counterfeiters

and facilitate infringement of a brand. Even though

the problem of counterfeited reprinted goods may

still seem marginal (limited to a certain types of 3D

printed items commercially exploited), it might be a

growing trend along with the further development

of 3D printing.

Next, the paper analyzed possible solutions to

prepared companies and consumers for this trend,

which are based on Lessig’s idea of four modalities:

law, market, social norms and architecture. In the

area of trademark law, stricter hard law regulation

might not be an adequate response, thus we have to

look for solutions in selling 3D printed certicated

les by trademark owners, price regulation, and

better educational programs on counterfeit goods.

From the hard law perspective, establishing clear

rules of liability for intermediary online platforms

seems to be of key importance.

89 See the comments: Matt Reynolds, “What is Article 13? The

EU’s divisive new copyright plan explained”, (7 December

2018), online: Wired

what-is-article-13-article-11-european-directive-on-

Sims, “Article 13 approved: What are the EU copyright

law amendments?” (10 December 2018), online at: Alphr

what-is-it-copyright>.

Hopefully, the solutions described above will enable

the adjustment of the trademark law system to a new

3D printing reality. Then we can start thinking big,

get excited about the great potential of 3D printing,

and nally buy our rst 3D printer.

To continue reading

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