It didn’t take long for the email from Katy Perry’s lawyers to arrive.
Just days earlier, during the Super Bowl halftime show, a disoriented shark-clad dancer on the left side of Katy Perry had become an instant Twitter sensation. As he watched the Left Shark meme take off, Fernando Sosa, a 3-D designer based in Orlando, saw an opportunity to do what he tends to do with popular and not-so-popular figures: turn them into figurines. His catalog of of-the-moment 3-D-printed people already includes dozens of lively characters, including Chris Christie, Vladimir Putin, and Florida governor Rick Scott as a chestbuster alien from the movie Alien. Within days of Perry’s performance, he began to sell his Left Shark figurine on Shapeways, a central marketplace for 3-D-printed objects, where you can find everything from GoPro attachments for drones to 18-karat gold jewelry.
The following day, Shapeways heard from Perry’s lawyers. They demanded that the site swiftly remove Left Shark from the site, claiming that Perry owned the copyright on the shark suit. Within hours, the site complied.
This wasn’t the first time Sosa had struggled with intellectual property on the 3-D-printed frontier. In 2012, after he began selling a scaled-down replica of the iron throne from the HBO series Game of Thrones, which doubled as an iPhone dock, HBO sent him a cease-and-desist letter that asserted its rights to replicas inspired by the series. Sosa stopped selling the dock but quickly designed and started to sell a variation of it.
So far, the biggest lawsuits in 3-D printing have involved patent claims related to the design of the machines themselves. But the application of the technology could prove even more litigious. If the 3-D printers can allow hobbyists and small manufacturers to print anything–including an object that infringes upon a trademark or copyright, or a patented device–then they could be to the world of physical objects what the MP3 was to the record industry.
Now facing Perry’s lawyers, Sosa wasn’t deterred. “They sent a letter without any backing to pretty much scare small businesses out of the competition.”
Familiar with the terrain, Sosa moved his Left Shark to Etsy and his personal website, then took to Twitter to drum up awareness of Perry’s lawyers’ accusations. As Sosa’s tweets went viral, NYU law professor Christopher Sprigman, who specializes in intellectual property conflicts, offered to represent him.
Sprigman found two problems with the conduct of Katy Perry’s lawyers: First, they didn’t issue Shapeways a formal DMCA takedown notice. According to the Digital Millennium Copyright Act, it is the only tool that Shapeways is legally required to act on. Second, the copyright claim was erroneous to begin with. Perry didn’t own the copyright on the shark suit, because the suit wasn’t necessarily copyrightable to begin with. Costumes fall into the category of “functional goods,” legal jargon for something that serves a useful purpose, as opposed to just being ornamental, Springman explains. Within two weeks of Perry’s initial threat, Sosa’s Left Shark was back up on the site.
It isn’t clear yet if the rapidly growing technology of 3-D printing is straining other potentially competitive industries. At the moment, the NPD Group reports that action figures, accessories, and role-play toys accounted for $1.26 billion of $20 billion in U.S. toy sales in 2014. From now until 2018, the market analysis firm Gartner predicts the global $84.1 billion toy industry will grow by 4.2%. Over the same period, the global 3-D printing market is projected to reach $13.4 billion in sales, achieving a 103.1% compound annual growth rate.
Of course, a 3-D printer isn’t exactly like an MP3. Unlike a digital copy, a three-dimensional copy possesses a permanence that outstrips a digital file. Michael Weinberg, Shapeways’s general counsel and former vice president at Public Knowledge, a digital advocacy group, says that not every 3-D printer file is necessarily protected by copyright. “Some will be, but others will be protected by patent instead. Patent protection is different from copyright protection in a number of ways, and we won’t simply be able to assume that the rules of thumb that governed what can be done with an MP3 will apply cleanly to 3-D printed stuff.” This is uncharted territory.
The legal risks of 3-D printing have sent companies looking for solutions. Last summer, for instance, Shapeways introduced a revenue-sharing scheme with the toymaker Hasbro, to allow its makers to legally sell My Little Pony figurines. Printer companies, meanwhile, might opt for technological approaches, like the digital rights management, or DRM, that’s used to prevent unauthorized copying of software, music, and films. The law–specifically US Code 1201–makes it a crime to thwart so-called “technological protection measures,” or TPMs, that are embedded in certain devices like 3-D printers. In November, Weinberg and his colleagues at Public Knowledge filed a request for an exemption to the law, with the aim of decriminalizing the “jailbreaking” of certain 3-D printers, so that tinkerers can legally experiment with materials not typically approved by the manufacturer.
In March, 3-D printer maker Stratasys, which owns Makerbot, tried to block the request on the grounds that this could allow people to “print . . . work that infringes on copyright.” Public Knowledge claimed that prohibiting users from printing objects with certain materials and not others would disrupt innovation. In its opposition, Stratasys’s lawyers claimed that the petitioners hadn’t proved that innovation would be curtailed. After all, they argued, hobbyists can still build their own open-source 3-D printers capable of printing anything. Stratasys has taken similar steps before: in 2012, it revoked the lease on Cody Wilson’s printer after the gunsmith began printing parts for a pistol. The company did not respond to Fast Company‘s request for comment.
The Unlocking Technology Act of 2015, introduced by California Congresswoman Zoe Lofgren, aims to partly resolve this tension. The first version, passed and signed into law in 2013, let people unlock their phones when carriers wouldn’t. The new act would add a clause to U.S. Code 1201 that would only ban tampering that is being done “in order to infringe or facilitate infringement of a copyright in a work protected under this title.” The House Judiciary Committee is currently considering the act, after which it would make its way to the rest of Congress for a vote.
This argument–between ownership and innovation–is a familiar one in digital copyright battles. When Napster lost its case against the music industry in 2001, a consortium of law professors sided with Napster, writing: “The district court’s ruling would ban a new technology in order to protect existing business models, and would invoke copyright to stifle innovation, not to promote it.” In any case, the music industry only temporarily succeeded in quelling online music sharing around the world. Later, after Viacom asked Google for $1 billion in damages, it ended its copyright lawsuit with YouTube without a cash settlement. Meanwhile, new file sharing sites, the iTunes Store, and streaming technology would come to be the music industry’s best hope, and it capitulated to a format it had once tried to destroy.
Even 3-D printing objects at home, for personal use and not for sale, could be infringing on copyright law. As a general rule there isn’t a home or personal use exception to copyright or patent law, Weinberg explained. “In other words, just because you make a copy privately does not release you from liability if you are infringing. And in many cases making an unauthorized copy of an object will be infringing.”
This narrative may contain an example for 3-D designers as they continue to create their wares in spite of mounting legal anxiety. Rather than fight over ideas, they are increasingly partnering with the Katy Perrys of the world, who might otherwise complain about them. And they are also collaborating with much smaller artists who could benefit from the exposure and the profits.
Ryan Kittleson, a 3-D designer who sells printed versions of his work on Shapeways, found an unlikely hit in an Internet meme called Success Kid. It’s based on a photo in which a toddler stares directly at the photographer while crushing a fistful of sand in his clenched hand. Kittleson has sold several thousand Success Kids since he began selling them on Shapeways in the fall of 2012.
But as Success Kid took off in 2013, an agent contacted Kittleson to take it down. The agent, it turned out, represented the toddler’s mother, who took the original photo that kickstarted the meme. The mother owned the photo’s copyright, and Kittleson had infringed on it, the agent claimed.
“I didn’t stop to consider who took the picture of Success Kid,” says Kittleson. In the end, Kittleson struck up a deal to share the profits on his figurine with Success Kid’s mother. She agreed, and her agent stopped hassling him.
Yet Kittleson’s 3-D printed memes keep bringing up questions. Last year, Kittleson wanted to create a figurine of a twerking Miley Cyrus, but Shapeways refused to let him sell it. “I believe that it was due to Miley being the owner of her name and likeness, so I couldn’t just sell a figurine of her,” Kittleson says. Instead of doing away with the design completely, Kittleson replaced Cyrus’s head with Albert Einstein’s. He says he did it to show how ridiculous it was that he couldn’t just sell the original twerking Cyrus.
Now, Kittleson approaches his new designs with more caution. If he uses a small artist’s work for inspiration, he will approach the artist to strike up a revenue-sharing agreement first. If the artist doesn’t agree, then Kittleson won’t move forward with his 3-D rendering. But when it comes to dealing with creative sources that are backed by larger entities, he simply hedges his bets.
“For larger IP-owning companies, where there’s no chance of them talking to a little guy like me, I will sometimes make an item anyway and take the chance that they might send me a DMCA takedown notice, and just hope that I fly under their radar,” Kittleson says.
One could argue that Sosa’s Left Shark and Kittleson’s Success Kid were examples of fair use: fan art or parody. But proving fair use is not straightforward. As a case in point, the Associated Press sued Shepherd Fairey for using an AP photographer’s 2006 portrait of then Senator Barack Obama for his famous 2008 “Hope” poster. The street artist claimed fair use, but ended up privately settling with the AP photographer. It seems that the easiest path to take is settling with the content creator directly, rather than redefining fair use whenever an intellectual property conflict erupts.
Fernando Sosa says he tried to work out a profit-sharing agreement with Katy Perry’s camp, but to no avail. And in a bizarre twist, Perry’s lawyers filed a trademark application for the Left Shark design and name two days after sending Shapeways the cease-and-desist letter. (They also sought protection for “Right Shark,” “Drunk Shark,” and “Basking Shark.”) Their application even used an image of one of Sosa’s Left Shark 3-D renderings, in what Sosa calls a blatant infringement on his copyrights. In April, the U.S. Trademark Office issued an initial rejection of Perry’s application for protection of the Left Shark design, though it appeared to accept her attempt to register the word mark “Left Shark.”
Sosa is prepared to field more attacks from Perry’s legal machine, as its copyright claim is still up in the air: Perry’s lawyers haven’t yet responded to Sprigman’s most recent opinion letter. Sosa says Perry has failed to prove copyright after four months.
While Sosa doesn’t stand to make a lot of money on Left Shark–he has only sold around 200 of his figurines–he wants to defend his right to sell his design. He now has a Florida-based attorney on retainer, in case Perry’s attorneys decide to strike back. To help defend against any future litigation, Sosa is raising funds through a crowdfunding site. So far, he has raised over $1,000 of his $2,000 goal.
“I believe that our whole copyright system needs to be overhauled so small entrepreneurs can enforce their copyright claims,” Sosa says. “Not just wealthy singers with multimillion-dollar law firms.”
Like Stratasys, the printer maker, the marketplaces that host 3-D designs are playing a growing role in ensuring their users comply with the law, largely in order to protect themselves from giant liabilities and legal fees. YouTube famously relies on its terms of service to cite the Digital Millennium Copyright Act’s safe harbor clause when a company accuses it of knowingly contributing to piracy.
Etsy, whose marketplace is central to the overall maker community, spells out intellectual property guidelines in its terms of service, with which the company expects users to comply once they open up a shop on the site. “We take intellectual property and copyright concerns very seriously, and we comply with the DMCA and remove items when we have proper notice,” a spokesperson for Etsy wrote to Fast Company in an email.
Yet expecting every seller to truly understand the terms, and much less read them, is implausible, so community engagement is key. YouTube uses a video where hand puppets discover the world of copyright law.
Shapeways has taken community engagement in the 3-D design community a step further by creating a new business model. Where the rise of Internet communities once gave fan art a digital home, the maker community is spilling fan art into the physical world.
Last summer, Shapeways and Hasbro launched a revenue-sharing initiative at the site SuperFanArt.com, which redirects to a page on Shapeways’s main site aimed at the growing niche of adult fans of the 1980s children’s animated series My Little Pony.
Shapeways’s Weinberg says the Hasbro-Shapeways collaboration “takes what could be an adversarial relationship and turns it into a collaborative one.” It’s a model that rights holders and fan artists can use when dealing with intellectual property questions that arise with any emerging technology, not just with 3-D printing.
“We have all learned a lot from technological disruptions in the past decade or two, and the biggest lesson seems to be that the best response to your customers adopting a new technology is to meet them there,” he says. More legal battles over 3-D printing are coming, and uglier ones too. Weinberg underscores the upside to all the fighting for the future of the technology as a whole. “The good news is that all of this is a sign of a growing industry, and is really only happening because we are starting to see success.”