United States: Time For Fashion Designers To Buckle Up For 3-D Printing

Law360, New York (October 17, 2013, 11:48 AM ET) -- Today's high school students are learning the skills needed for 3-D modeling, and copying is already being encouraged online: In a video posted at 3dprinter.net, a man takes off the sunglasses he is wearing and shows how to make a 3-D copy in a few easy steps.¹

3-D printing is still far from mainstream, but prices of home copiers are falling rapidly, with home 3-D printers available at Staples for $1,299.99, and smaller companies already offering cheaper options, such as the Assembled Printrbot Simple, available for $399, and unassembled kits available for as low as $200. Online 3-D printing services are growing rapidly, with Startasys, based in Eden Prairie, Minn., estimating its profits will double this year, to $462.6 million — and reportedly agreeing to buy Brooklyn-based 3-D printer MakerBot for at least $403 million.²

What is a fashion designer to do? Innovative designers are using the expanded creativity allowed by 3-D printing to design effects complex enough to be potentially protectable under copyright and design patent law — and, as a practical matter, very difficult to copy. For example, Dutch fashion designer Iris van Herpen's highly futuristic designs feature sculptural ruffles and scales that fully exploit the new medium,³ as does Joshua DeMonte's architectural jewelry, such as his 3-D-printed bracelet shaped like a fanciful building, shown as part of the "40 Under 40 Craft Futures" display at the Renwick Gallery, in Washington, D.C.⁴

It can be notoriously difficult to protect fashion items under copyright, but designers are exploring the kinds of 3-D printed items that should be suitable for protection. For example, Bow & Drape is offering 3-D-printed belt buckles.⁵ For decades, belt buckles have been copyrightable, provided they survive the useful article test and have at least minimal originality.⁶

As to the useful article test, copyright law will protect pictorial, graphic or sculptural features that are conceptually separable from the useful functions of an article and are capable of existing independent of those useful functions.⁷ As to originality, the threshold for copyright protection is quite low. But to be protected against infringement, some genuine originality is required. A copyright on a pin that is made to look just like a bee in nature will not stop others from making similar bees.⁸ 3-D manufacturers are already making key pulls, sunglasses, jewelry and other items potentially capable of withstanding these tests.

As to enforcement, copyright rights allow the owner to send Digital Millennium Copyright Act takedown notices to Internet service providers to stop internet postings that infringe copyright rights — and no copyright registration is required.⁹ At least one DMCA takedown notice has already proven effective against online 3-D manufacturing.

Just this past February, HBO sent the 3-D printing service nuPROTO a letter warning it to "cease and desist from continuing to produce and offer for sale the 'Iron Throne Dock,'" a 3-D manufactured iPod dock inspired by HBO's "Game of Thrones" fantasy TV series.¹⁰ Referencing copyright rights, but also making a trade dress reference to likely consumer confusion, the letter claimed that the Iron Throne Dock "will infringe on HBO's copyright in the Iron Throne, and given the distinctive nature of the Iron Throne, mislead consumers into believing that it is connected with the Series and that it originates with or is sponsored by HBO."¹¹ The nuproto.com site indicates that the offending Iron Throne Dock is no longer for sale, although pictures of it still appear on the site, along with an explanation of the dispute with HBO.¹²

However, consumers are likely to be alienated if these tactics are used against individuals or small companies. After Games Workshop issued a DMCA takedown notice to a 3-D printing file-sharing website, the maker community protested on the Web.¹³ Designers need to consider this kind of potential reaction seriously, as shown by the unpopularity of the Recording Institute of America after sending DMCA takedown notices and suing individuals for "sharing music" over the Internet. When enforcement of this kind is necessary, it is advisable to word cease and desist and DMCA letters carefully, as there is every chance they will be posted on the Web. It can be helpful to explain the designer's investment of time, creativity and resources, their quality control concerns, and the need for fair cooperation with the designer's hard-earned rights — and to keep demands reasonable.

In addition, designers who take steps to stop illegal copying would be wise to make legal alternatives readily available. Fashion can learn from music: By the time iTunes was established to popularize legal music on the Internet, the music industry was losing billions of dollars due to illegal peer-to-peer file sharing. Certain designers are already positioning themselves to work with 3-D printers. Designer Asher Levine, known for his designs for Lady Gaga, Black Eyed Peas and Bruno Mars, teamed up with 3-D printer MakerBot to create fanciful print-at-home sunglasses, promoted by being printed for models during one of Levine's New York Fashion Week shows.¹⁴ Levine's sunglasses were then readily available from MakerBot at thingiverse.com.¹⁵

To further ward off fashion-design infringement by online 3-D printing services, designers also can pressure online 3-D printing services to offer the kinds of rights-owner protection devices eBay provides, or the kind of claim-your-content program provided by YouTube — or to take the approach of the designers at suuz.com, who have posted a gallery of their own 3-D-printing jewelry designs which consumers can then personalize, an approach that limits the potential for copyright, trade dress and design patent infringement.

As to enforcement, designers who create designs protectable under copyright (and where pertinent, trade dress and design patent), and take the steps necessary to best protect those rights, will have potentially powerful weapons against infringement.

Copyright rights have long lives: For newly created works for hire, terms extend 120 years from date of creation; for other newly created works, terms extend for life of the author plus 70.¹⁶ Even small designers with minimal legal budget can benefit, as copyright rights arise on creation of the work, even if that work is not registered. That said, it is optimal to document copyright ownership and dates of creation/publication, and to implement a plan of timely copyright registration. If works are timely registered, a cease and desist letter has much greater clout, as it is possible to claim statutory damages and attorneys' fees if claims are filed in court.¹⁷ Registration for U.S. works is, in any event, a statutory precondition to filing a copyright infringement claim in the U.S.¹⁸

In addition, if a potentially distinctive product configuration — say, a 3-D-printed belt buckle — is sold long enough so that everyone recognizes it as the product of a certain designer (secondary meaning), it may be protected under trademark law, which (in addition to protecting trademarks and logos) protects both registered and unregistered trade dress.¹⁹ While the focus of this article is protection of fashion designs, designers would also be wise to consider developing and popularizing distinctive logos difficult to copy with 3-D printing, and to protect them under trademark law.

Under trademark law, protection would exist against other designs (or logos or marks) that are likely to confuse customers. In addition, if the design (here, our belt buckle), logo or mark becomes truly famous, it can also be protected from designs likely to blur its distinctive nature, or tarnish its reputation. Similarly, specific nonfunctional use of color that has become distinctive can be protected — like Louboutin's red soles — but protection takes great vigilance.²⁰ Where trademark rights are infringed, among the potential remedies are treble damages, where infringement is willful, and attorney's fees in extraordinary cases.²¹

Designers have also turned to design patents to protect items like jewelry and sunglasses: The same article may potentially be protected by copyright, trade dress and design patent. Given cost considerations, designers tend to target patent protection for eligible items they anticipate offering for a number of seasons. Design patents cover only new, nonobvious, ornamental designs of items, registration is required, the application must be filed within a year of first publication — and protection is limited to that which is nonfunctional and nonstructural (e.g., the functional shape of a buckle will not be covered).²² These patents may relate to the ornamental configuration of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. Design patents are valid for 14 years from the date of issue.²³

An advantage over copyright rights is that a design patent will protect the owner from substantially similar designs whether or not there was any access to the plaintiff's design. An advantage over trademark rights is that consumer confusion is not required. If designs are to be made available in the EU, a designer is also well advised to get advice on the registered and unregistered design rights there.

Of course, when designers face damaging piracy by willful counterfeiters, they may have no choice but to go to court seeking swift injunctive relief. If they have created protectable designs and taken the necessary steps to protect them, they will have the best possible chance for success.

Footnotes

1 Mark Fleming, Replicating Robin Bäckman's Sunglasses, 3d Printer (Apr. 27, 2012), http://www.3dprinter.net/replicating-robin-backman-glasses.

2 See Olga Kharif & Susan Decker, 3-D Print Firms Face Growing Legal Fights, The Columbus Dispatch (Aug. 19, 2013, 1:09 AM), http://www.dispatch.com/content/stories/business/2013/08/19/3-d-print-firms-face-growing-legal-fights.html.

3 See Iris Van Herpen, http://www.irisvanherpen.com (last visited Oct. 2, 2013).

4 Sadie Whitelocks, Bracelets Shaped Like Cathedrals and Necklaces Modeled on Aqueducts: Artist Creates 3D Jewelry Inspired by Architecture, Daily Mail (Jan. 21, 2013, 2:01 PM), http://www.dailymail.co.uk/femail/article-2265944/Joshua-Demonte-Architectural-Jewelry-Bracelets-shaped-like-cathedrals-necklaces-modeled-aqueducts.html.

5 See Bow & Drape, http://www.bowanddrape.com/clothing/shop/c/3D%20PRINTED (last visited Oct. 3, 2013).

6 See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980).

7 See 17 U.S.C. §§ 101-102 (2010) (defining "useful article" and "subject matter of copyright").

8 See Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971).

9 17 U.S.C. § 512(c) (2010).

10 Nathan Hurst, HBO Blocks 3D Printed Game of Thrones iPhone Dock, Wired (Feb. 13, 2013, 1:57 PM), http://www.wired.com/design/2013/02/got-hbo-cease-and-desist.

11 Id.

12 Nuproto, http://nuproto.com/iThrone.html (last visited Oct. 3, 2013).

13 See Thomas Mahlum & Melissa Goodman, Technology: Will the Digital Millennium Copyright Act Takedown 3D Printing?, InsideCounsel (Aug. 30, 2013), http://www.insidecounsel.com/2013/08/30/technology-will-the-digital-millennium-copyright-a?t=technology.

14 Laurie Segall, 3D Printed Glasses are Fashion Week's Hottest Accessory, CNNMoney (Feb. 15, 2013, 11:14 AM), http://money.cnn.com/2012/02/15/technology/makerbot_fashion_week/index.htm.

15 Matt, Fashion Designer Asher Levine Launches Makerbotted Sunglasses at New York Fashion Week, Makerbot (Feb. 11, 2012), http://www.makerbot.com/blog/2012/02/11/fashion-designer-asher-levine-launches-makerbotted-sunglasses-at-new-york-fashion-week/.

16 17 U.S.C. § 302 (1998).

17 17 U.S.C. § 412 (2008).

18 17 U.S.C. § 411(a) (2008); Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237 (2010).

19 See 15 U.S.C. § 1052(f) (2006).

20 See Charlotte Cowles, Louboutin's Latest Shoe Lawsuit is Comparatively Boring, New York (July 16, 2013, 10:40 AM), http://nymag.com/thecut/2013/07/louboutin-shoe-lawsuit-red-sole.html.

21 15 U.S.C. § 1117 (2008).

22 35 U.S.C. § 102(b), 171 (2012).

23 35 U.S.C. § 173 (1994).

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