Call it a comeback

So, my last post was nearly a year ago… I’m not proud of that. But we’re officially back in business and there’s a lot to talk about.

I am currently General Counsel and COO of Matter and Form Inc., makers of the world’s most affordable, high quality and easy to use 3D scanner. Last month at CES we announced Cashew, our forthcoming online 3D presentation platform. In the course of developing Cashew, we’re contemplating a lot of really interesting IP issues – secondary liability, notice and notice/notice and takedown methods, and even some ‘disruptive’ IP ideas that I can’t wait to share with you. As a company that respects IP rights, we’re going to make sure that we help everyone play by the rules. But we also think we can make it easier than ever for people to share and exploit their 3D IP.

But for now, I’d like to take a moment to discuss Fernando Sosa’s recent legal run-in with Katy Perry. I wrote about Fernando a while back, when he had a run-in with HBO over 3D printed Game of Thrones-style iron throne phone docks that he was selling on his website.

Last weekend, the unanticipated star of the Super Bowl was the Left Shark that danced poorly/awesomely behind Katy Perry during the halftime show. Fernando, a talented 3D designer, made a 3D model of the shark and put it up for sale on Shapeways (it’s now gone, but he’s rebelled against the DMCA take-down by putting the 3D model up for free on Thingiverse). Much like the Iron Throne incident, Fernando was hit with a cease-and-desist letter telling him to remove the model and threatening legal action.

After the Throne incident, I corresponded with Fernando a little bit. I wanted to use his story as an example in my lectures. In that brief exchange, and through his behaviour at the time (asking HBO if he could license the design and pay them), I geniunely came to believe he’s not maliciously trying to profit off others’ IP. He seems flummoxed by lawyers and IP laws.

But unfortunately, this kind of thing is going to happen more and more as awareness of 3D models increases. And it will invariably happen to people who don’t realize they’re doing anything wrong. For example, the copyright owners of TinTin (Hergé’s estate) have been targeting models on Thingiverse that resemble the rocket from the book Destination Moon. I’m sure many of these people are just TinTin fans who want to share their fandom with others. 

And for every DMCA complaint, there are so many examples of possible trouble. I have to wonder how sports apparel maker Bauer feels about a model like this, or how Disney/Lucasfilm feels about this “public domain” Imperial Star Destroyer on Thingiverse. (lawyer disclaimer – please note I am making no comment about whether there is or is not any IP infringement occurring in these two examples.)

I’m not arguing against the enforcement of IP rights – I’m saying that there’s education that needs to happen. But more than that, IP rightsholders need to find creative ways (like Hasbro and Shapeways have with SuperFanArt) to make it possible for people to engage with brands and characters in 3D without risking receiving a threatening lawyer letter. With Cashew, we’re going to try to do our part to make that happen.

More on that later…

6 comments for “Call it a comeback

  1. February 6, 2015 at 2:09 pm

    Hi Paul,

    My name is Bruna and I am a brazilian Lawyer. Like you, I’m focused on studying IP and 3D Printing. About Sosa’s second case, I saw a NYU teacher saying that the #LeftShark is a useful article because it is a costume, so there is no reason to Shapeways remove Sosa’s shark, since the cease and desist letter is for a copyright infringement. I understand that in the US law, costumes are useful articles. But Sosa’s shark was a costume or a toy? Do you have that information? Because I don’t know why the NYU teacher would say something like that for a toy… I wonder if the reason is because Sosa’s shark is derived from a costume’s desing, even though the derivate form isn’t a costume…

    Best,
    Bruna

    • February 6, 2015 at 2:47 pm

      Hi Bruna, Thanks for writing!

      Yes I saw that too (https://twitter.com/CJSprigman/status/563453766557794306). It seems like, based on what we know, “Left Shark” started out as a costume. The ‘usefulness’ limitation of copyright is at the center of some recent interesting cases, including DC Comics v. Mark Towle (currently in oral arguments before the 9th Circuit Court of Appeals) and Inhale v. Starbuzz Tobacco (which I wrote about here: http://lawitm.com/3d-printing-and-the-limits-of-copyright/).

      While I agree there may need to be a finding of conceptual or physical separability between utilitarian and design features, maybe separability exists in this case. For example, in Animal Fair, Inc. v. Amfesco Industries, Inc (aff’d on appeal), copyright protection was found to exist for a bear paw slipper (featuring furry bear toes and claws) because “plaintiff’s design features are conceptually separate from the utilitarian aspects of its slipper.” The court wrote, “Plaintiff correctly notes that one could draw a line drawing of the whole shape and design which would be recognizable as a fanciful artistic rendition of a bear’s paw, regardless of what type of functional or utilitarian object it was used to adorn.” (http://law.justia.com/cases/federal/district-courts/FSupp/620/175/1456393/)

      But again, that’s just one case – I’d love to see some examples that distinguish it or cut the other way.

  2. February 6, 2015 at 3:18 pm

    Since I’m not very familiarized with US copyright system, isn’t “separability” the same of “severability”?

    Thanks for your thoughts. But if Sosa’s shark is a TOY (and not a costume, like Katy Perry’s shark), why are we talking about “separability”? Is Sosa’s shark understood as derivate of Perry’s shark? In other words, is a STL file derived from a physical object? And if so, the “legal” qualities of the physical object are transferred to the STL file of this object? I know that still there isn’t a right answer for that (at least I think so), but I’d like to hear your thoughts about it.

    Thank you 🙂

  3. February 6, 2015 at 4:30 pm

    Separability is a concept that comes up in the US with respect to utilitarian features and copyright (see the cases I cited above). With respect to the second point, if a derivative work (i.e. the toy) was based on a non-copyrightable work (i.e. potentially the costume shark in this case), then the toy might not be considered original and if so the toy might not be copyrightable.

  4. February 6, 2015 at 4:51 pm

    Got it! 🙂

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