IP Considerations in a Makerspace

By: Collen Beard

It’s fun and rewarding to join a makerspace and make things. 3D printers, laser cutters, and screen printing equipment are all commonly found in makerspaces, and designs, images, and downloadable files can readily be found online. For example, a photograph found online can be easily saved and manipulated as an Adobe Illustrator® file and laser cut onto a piece of wood. But is this copyright  infringement? A company’s logo can be downloaded and screen printed onto a t-shirt. Is this trademark infringement? Is it patent infringement to 3D print and replace a broken part of a patented device?

The answers to these questions are, it depends. 

There is a concept in copyright law called “fair use”, which holds that a noncommercial, educational, nominative use of a design may not constitute an infringement. Section 107 of the Copyright Act (17 U.S.C. §107) provides that use of a copyrighted material for certain purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research—may qualify as fair use. The statute provides four factors that may be considered in determining whether a use qualifies as fair use:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

The use of a photograph as described above may meet at least two of the factors- it is arguably for educational purposes and it does not affect the value or potential market for the copyrighted image. However, the answer of infringement might be different if the image is applied to goods that are sold. 

Of course, infringement also requires that the image be covered by a valid copyright. Images that are in the public domain are not covered by copyright and can be freely copied. Usually the website from which an image is taken will note whether the image is public domain or you can search for the image on Google image (https://images.google.com/) or on the U.S. Copyright Office website (https://www.copyright.gov/rrc/). To more definitively limit the risk of copyright infringement, use an original design, one which you know with certainty is in the public domain, or one which you have legally licensed.

In terms of printing a trademark logo on a t-shirt, there is a similar concept in trademark law regarding nominative, non-commercial use. Trademark infringement is the unauthorized commercial use of a trademark (or a substantially similar mark) on competing or related goods (See, generally 15 U.S. C. §1114). So long as the maker is not selling the t-shirts to which the logo is applied, there is probably no infringement because there is no commercial use. But what if, for example, the maker is selling the shirts, or using them to promote an event?

Trademark law applies several factors in determining whether commercial use of a trademark is infringement, and the primary factors are the degree of similarity between the marks and the degree of similarity between the goods. The overriding test for trademark infringement is whether the use of the mark is likely to confuse average consumers – whether the typical consumer will think that the maker’s t-shirt actually is being sold by the company who owns the trademark (or that the event being promoted is sponsored by the trademark owner). The average consumer is more likely to think that the maker’s t-shirt is actually from the trademark owner if the term or logo is an exact copy or very similar to those of the trademark owner and if the trademark owner also sells t-shirts. 

Other factors that courts typically consider include how and where the parties' goods or services are advertised, marketed, and sold; the purchasing conditions; the range of prospective purchasers of the goods or services; whether there is any evidence of actual confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark; and the strength of the plaintiff's mark.

Note that determining whether a logo or slogan is someone’s trademark is sometimes not straightforward. Any term, slogan, or design having the symbol “TM” or “®” applied to it should be assumed to be a trademark. As above stated with respect to copyrights, to minimize the risk of infringement, we advise that you use an original term, slogan, or design.

Whether 3D printing a broken part of a patented device constitutes patent infringement is not a black and white issue and may come down to whether the part itself is patented or whether it is a piece of a patented device and is not patented on its own.  Is the maker making and replacing a patented part or making the part simply to repair the patented device?

A patent gives the patent holder the right to exclude others from making, using, importing, and selling a patented device (35 U. S. C. §154(a)) but once the device is sold, the patent is “exhausted” and the device owner has the right to use or resell the device. This is termed the “exhaustion doctrine” under common law. The US Supreme Court upheld the exhaustion doctrine in Impression Products, Inc. v. Lexmark International, Inc., 581 U.S. ___ (2017), a case that dealt with Impression Products’ refill and resale of Lexmark’s patented printer cartridges. The Court’s holding was summarized as such: “We conclude that a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.”  Under this reasoning, the maker’s repair of the patented device is acceptable.

But what about the scenario where the maker is remaking the entire patented device? For example, in a deviation from the above scenario, what if the maker 3D prints a brand new printer cartridge (which is the patented device)? This scenario would seem to fall under Bowman v. Monsanto Co.,569 U.S. 278 (2013), where the Court found that the patent exhaustion doctrine does not permit a farmer to plant and grow saved, patented seeds without the patent owner's permission. The Court found that when a farmer uses the saved seed, that action constitutes an unauthorized "making" of the patented product. It is a full reconstruction of the patented product, not a permissible reuse or repair.

Another issue regarding makerspaces arises through the natural sharing of ideas and designs that occurs in makerspaces. It is the intent of these places that makers share ideas and gain advice and useful input from the other members while working on implementation of their ideas. However, this may raise concerns in the event that an idea leads to a patentable invention since this public disclosure may negate patentability.  Also, this environment of openness and sharing might lead to members copying from each other without even realizing it, leading to questions of who the actual inventors are or who an invention belongs to. 

It is a good idea for makerspace members working on a potentially patentable idea to guard their activities from disclosure to others, or obtain a nondisclosure agreement. In the event a disclosure is made, it may be possible to salvage some patent rights by promptly filing  a patent application.

The above is just a broad discussion of issues that might arise in a makerspace and does not qualify as legal advice. In the event you have an actual issue, we recommend that you contact an intellectual property attorney. 

Rebecca Bortolotti