Today Shapeways is proud to join with our colleagues at Etsy, Foursquare, Kickstarter, and Meetup in urging the White House to begin exploring the possibility of an online safe harbor for trademarks. We believe that a statutory safe harbor for trademark use online would increase the free flow of information online and empower individuals to push back against abusive uses of trademark. If you read these last two sentences as “words words words” but are still curious what those words mean, let me take a moment to explain what we are talking about.
The United States has what is known as a safe harbor for websites that allow other people to post content to them (that includes all of the sites mentioned above, and a huge number of sites in the world). As a general rule, users – not websites – are liable when a user posts things that infringe on the copyright of others. Without this protection websites would have to individually screen every single post, model, photo, and comment for a copyright conflict before posting them. In practice, that would mean that there would be a lot fewer sites that allow others to post content online.
One of the conditions of this safe harbor protection is that when a website operator is informed by a rightsholder that something uploaded to the site is infringing, that website operator takes down the allegedly infringing content. Because this process is governed by a law called the Digital Millennium Copyright Act (shortened as the DMCA), these kinds of takedown requests are sometimes known as “DMCA takedowns.” (This epic tale of Eulice and Abbas explains how we handle these types of requests at Shapeways.)
One important feature of this safe harbor system is that, in addition to giving rightsholders the ability to request content be taken down from a website, it also gives the original uploader the ability to request that the content go back up. This ability to push back against takedown requests provides a critical check against abuse of the takedown process.
The safe harbors are critical to the ability of users to push back against abusive takedown requests. Since the website is protected from liability, a user does not need to convince the website that it is worth it for the website to go to court in order to challenge a takedown. Instead, the website can get out of a user’s way and let the user challenge the takedown request if the user decides that it is worth challenging.
Similar safe harbor systems exist for things like accusations of defamation. By pulling the website out of the equation, it is up to users to decide if a conflict is worth pursuing. Even if a website doesn’t want to risk its entire business on a dispute, the person who stands accused is empowered to fight for rights she feels are important. On balance, this makes the internet a richer place.
Currently, these types of formal statutory safe harbor protections do not exist for trademark disputes. The result is that there are many fewer checks on trademark owners who might want to exceed their rights and suppress a user. In practice, a user who wants to challenge an accusation of trademark infringement and have their content re-posted must convince the website that re-posting the content is worth going to court over. Not surprisingly, that can be a hard argument to make.
The filing today is designed to highlight this problem for policymakers. It is the first step in what will inevitably be a long process towards finding a solution that works for trademark holders and users. We’ll keep you updated as it evolves. In the meantime, if you have any questions or comments we’d love to see them below.
This is the fifth post in a series about different types of rights that could be involved with models and files here at Shapeways. Today we’re talking about what happens to rights in models after the model is sold.
Most of the posts in this series are about the rights of creators and about how those rights give creators control over their creations. This post is something of the inverse. It focuses on the rights of people who acquire those creations. Specifically, it focuses on what happens to a creation after it is sold.
At its most basic, the concept of copyright “first sale” is that when you sell something to someone else, that something is theirs. Your decision to sell the object means that you are giving up your ability to control that object. Without first sale there would be no such thing as used record stores or libraries, yard sales would be a lot smaller, and eBay may never have gotten off the ground.
The Object is Not the Copyright, the Copyright is Not the Object
In thinking about first sale it is important to keep in mind the difference between the copyright for the object and the object itself. This distinction is easy to understand once you have concrete examples. If you buy a copy of a book like Neal Stephenson’s The Diamond Age, you own that copy of the book. You can do whatever you want with that book – you can lend it to a friend, sell it at a yardsale, or cut it up and turn it into a collage.
You do not, however, own the copyright in Neal Stephenson’s The Diamond Age. Without owning the copyright to the underlying book, you cannot make a bunch of copies of The Diamond Age and start selling them, or turn The Diamond Age into a musical, or sell a the German translation of The Diamond Age you created.
Fundamentally, the difference between these two sets of rights is the difference between owning a copy of something protected by copyright and owning the copyright itself. Owning a copy of something gives you the ability to control that copy, but not over the work itself.
First Sale Applies to 3D Printed Objects Too
The same applies for copyrightable objects sold here on Shapeways. If you sell a model on Shapeways, the buyer of the model owns it. That buyer can paint it however she likes, give it to her cat, or resell it without getting permission. However, that buyer cannot create copies of the object without first getting your permission simply because she purchased a single copy from you.
There are some potential exceptions to this. If I buy something from you and then try and resell it as my own work I may be engaging in fraud. And in some cases happening in some places, mislabeling a model’s title or creator could run afoul of what are known as moral rights. These are rights related to copyright designed to allow creators to assert their association with a work.
All that being said, in most cases there is nothing illegal about someone purchasing 3D printed models and reselling them somewhere else.
What Should I Do if I Discover Someone Reselling My Stuff?
Assuming you were paid for the models, the reseller probably is not breaking the law. They are, however, giving you some potentially useful information about your models. If the reseller is successful, that means that there is a significant market for you work. That’s a good thing.
It also means that you may be under-pricing or under-marketing your models. If a reseller can make money by buying your models at retail and reselling them somewhere else, that may mean that you are leaving money on the table with your retail price. If a reseller has found a profitable market for your models that you didn’t realize existed, maybe it is time to explore that market yourself. Of course, it may be easier to let the reseller pay you for your model and then explore that market themselves. Remember that every customer that pays the reseller is also a customer that is paying you for the original model.
Two Caveats and One Place for Additional Reading
Caveat number one: none of this applies if the reseller (or anyone else for that matter) is making unauthorized reproductions of your copyright-protected model. First sale does not protect someone making such copies, even if they are basing them off a legitimate copy they purchased from you. You did not sell your copyright in the object when you sold the object itself, and first sale will not prevent you from asserting your rights. If you discover someone making unauthorized copies of your models, it may be time to reach out to them and/or talk to a lawyer.
Caveat number two: if you are worried about fraud (such as someone passing your models off as their own) you should reach out to the platform hosting the fraudulent models for sale. Their terms and conditions almost certainly prohibit fraud (ours here at Shapeways certainly do). If someone is committing fraud on their site they will want to know.
First, OSHWA appreciates that the community takes this proposal seriously enough to discuss and debate it in the first place. It is called version 1 for a reason, and we pushed it forward knowing that it would inevitably evolve over time. That being said, we feel that the current proposal addresses many of the concerns that led to the start of this process in the first place.
What the Certification is Not
The OSHWA certification is not designed to place restrictions on the use of the term “open source hardware” or to restrict how people use the open source hardware open gear logo. Nothing in the proposal requires anyone to use the certification, or gives OSHWA the power to sanction a project that decides – for whatever reason – that the certification is not for them.
The certification is not designed to force everyone doing open source hardware into a single box, or to exert exclusive control over the world of open source hardware. Such a task would be impossible, and counter to the purpose of OSHWA.
What the Certification Attempts to Do
Instead, the certification process is designed to be an addition to the open source hardware landscape. It is being created to address a concern that has been raised a number of times by the community – easily the #1 request we get from the community and OSHWA members. In Windell Oskay’s post about the certification on Evil Mad Scientist, he accurately sums up the problem:
“But there is something  rotten, deeply rotten, in the world of open source hardware. And that is that the label “open source hardware,” either in words or represented by the OSHW logo (the keyhole-gear thing above) has been misused so much that it can’t really be trusted.
If you put that label on a piece of hardware, we might expect that this hardware meets the open hardware definition. The definition specifies (amongst other things) that you should be able to obtain the original design files (the “source”), and use them without a “noncommercial use” restriction (the “open”). But it seems like every day I hear about some drone, robot, or development board that turns out to be OSHWINO —Open Source Hardware In Name Only.”
This problem has a number of causes, including some of the licensing challenges related to open source hardware. Regardless, the certification was the result of OSHWA trying to find a way to give both creators and users of a piece of hardware a degree of certainty that hardware that called itself open source hardware actually complied with a commonly understood definition of open source hardware. That is, while anyone can call themselves open source hardware, only hardware that actually complied with the rules set out by OSHWA could call itself OSHWA-certified open source hardware.
The Value of Certification
There is no intrinsic value in certification. For users, it only matters if they feel that a certification provides them with useful information about a piece of hardware they are considering spending time with. For producers, it only matters if they believe that people will look for the certification and care if they find it.
Neither of these results are inevitable. Fortunately, if it turns out that the certification is not useful to people, it dies a quiet death of neglect.
OSHWA believes that – properly executed – it will be useful. That is why we are spending the time to create it and present it to the community. But it may be that there really isn’t a demand for a way to know that open source hardware complies with a commonly held definition of openness. Or it may be that there is a demand for such a thing, but that this certification isn’t the right way to achieve it. In either case, OSHWA will go back to the drawing board to try again.
Some members of the community have raised concerns about the enforcement mechanism for noncompliance, specifically the fines. As was explained in the presentation at the Summit, the enforcement mechanism is an attempt to balance two competing concerns.
On one hand, there has to be a way to punish bad actors who use the certification without complying with it. That punishment must be significant enough to deter abuse. Escalating fines are a good way to do that.
On the other hand, we are in the early days of open source hardware and there are not well established ways to apply the definition and best practices to every situation. In light of that, it is critical that creators acting in good faith have plenty of opportunities to discuss their goals and work towards a resolution before penalties are applied. The earliest stages of enforcement are designed to create that space.
OSHWA believes that the enforcement process outlined in the certification balances those two concerns. When reading the certification, it is important to remember that no one has to use the certification and that OSHWA has neither the interest, power, nor authority to punish projects that simply describe themselves as open source hardware and/or use the open gear logo. The entire regime only applies to projects that decide to opt in to the certification process.
Where We Go Now
The first hard part was taking a proposal through a process of community feedback and discussion. The next hard part is developing the legal license that will make the system described in the certification document enforceable for projects that opt in.
The execution of this next part is important as the development of the specification itself. We are cognizant of that, and are doing our best to create licensing language that is clear, approachable, and accurate. Part of doing that means being as transparent as possible about the process, and open to community feedback. That is why we launched this idea with a call for community input, and why this blog post exists today.
If you have concerns about the proposal, let us know. You can use the comments below, contact us, or open a discussion in the forums. In the meantime, we’re going to focus on finalizing the certification process and not screwing it up.
This is version 1 of an official certification for open source hardware housed in the Open Source Hardware Association. It outlines the purpose and goals of such a certification, and establishes the mechanisms for the operation of the certification process itself.
Make it easier for the public to identify open source hardware.
Expand the reach of open hardware by making it easier for newer members to join the open source hardware community.
This is an open source hardware certifications administered by OSHWA. Users will self-certify compliance in order to use the certification logos. In doing so, they will submit to oversight and enforcement by OSHWA.
This certification is designed to benefit at least two parts of the open source hardware community. First, it benefits purchasers of open source hardware by making it easy to identify truly open source hardware in the marketplace. Projects and products obtaining certification and displaying the certification logo clearly communicate a commonly agreed upon definition of openness with customers and users. While certification is not a condition for openness, obtaining certification is a way to make it clear to others that a given project is open source hardware.
Second, the certification benefits creators of open source hardware. By giving creators specific guidelines, certification allows open source hardware creators to confidently declare their projects and products as open source hardware. Certification also allows creators to defend that declaration by pointing to compliance with specific criteria defined in the certification process.
The certification will operate as a self-certification. Creators will not apply to OSHWA for certification. Instead, creators will self-certify compliance with certification standards. Self-certification will give creators the right to use the OSHWA open source hardware certification logo. As part of the self-certification process, creators will agree to subject themselves to penalties for non-compliance. OSHWA will be responsible for enforcing those penalties.
While open source hardware is already well defined, one of the greatest challenges in creating an open source hardware certification is determining how to handle non-open components. Full openness is a worthy goal, and companies and projects that strive towards it should be identified and commended. However, many well-known open source hardware projects and products strive towards openness but, by necessity, incorporate non-open components. The open source hardware definition recognizes this reality, and provides guidance on how best to handle non-open components in the context of open source hardware.
In order to address this challenge, the OSHWA certification focuses on the creator’s contribution. For the purposes of the certification, openness will be determined by the openness of the contribution made by the creators of the project. A certified project will be required to share its entire contribution (including the contribution of affiliated corporate entities, if appropriate) in accordance with the open source hardware definition, but not expected to avoid third party closed components beyond its control. A certified project should use open parts over equivalent non-open parts when they are available. However, no project will be found in violation of the certification simply because it incorporates non-open parts beyond its control.
Finally, certifications are not available aspirationally. A project or product that intends to be open source but is not yet open source is not eligible for certification. This includes pre-production projects such as Kickstarter campaigns. If the certification is used in a Kickstarter-type campaign, the project must at that time be in compliance with certification requirements. To avoid confusion, projects should not advertise their intention to comply with certification standards until they have met certification standards.
The creator’s contribution is defined at everything within the creator’s control. While some elements of a project may come from third parties beyond the scope of the creator’s control (for example, hex-only source files versus the full stack), the creator is required to fully open and document all elements within their control in compliance with the open source hardware definition. If the creator is or is employed by a corporation, this obligation extends to any elements within the control of that corporation and associated entities. This requirement is specifically designed to prevent corporations from creating “open subsidiaries” that make use of corporate technology without having to open the technology itself. In some ways, this requirement can be thought of as a rule of “do the best you can,” while recognizing that the openness of some elements is beyond the control of any individual creator.
OSHWA open source hardware certification will operate on a fee-free, self-certifying basis. OSHWA will maintain a list of certification requirements at OSHWA.org, and creators are required to notify OSHWA that they intend to make use of the certification. This notification will take the form of an email to a dedicated email address and its contents will be publicly displayed on the OSHWA website. Notification will be intentionally lightweight, and OSHWA welcomes the creation and continued development of rich third party databases and listings of open source hardware projects and products.
By using OSHWA open source hardware certification logos and seals, a creator is attesting that she is in compliance with all relevant requirements and is agreeing to comply with any penalties imposed by OSHWA for misuse.
OSHWA will work to enforce the use of certification marks and invites third parties to bring violations of certification marks by way of informal complaints. Upon investigation of an alleged violation, OSHWA may impose escalating penalties for violations. Alleged violators may elect to remove the OSHWA certification logo instead of remedying the violation. In order to avoid penalties in such situations, alleged violators will be required to comply with a notification regime instigated by OSHWA designed to communicate the decision to impacted parties.
Complaints are not required for OSHWA to initiate an investigation of a project or product. Complaints can be brought by anyone if the complainant believes that an OSHWA open source hardware certification is being used without complying with requirements. Complainants are highly encouraged to reach out to the potential violators before contacting OSHWA – many good faith errors can easily be resolved once they are brought to the attention of responsible parties. If that direct contact fails to resolve the concern, complaints should be sent to a dedicated email address and should include as much information and context as possible in order to assist investigation. Complaints will be investigated at OSHWA’s discretion. As a general rule, complaints cannot be made anonymously to OSHWA. However, unless it is relevant to the investigation, OSHWA will avoid disclosing the identity of the complainant to the target of the complaint. Additionally, OSHWA reserves the right to allow anonymous complaints in extraordinary circumstances.
Penalties for the use of OSHWA open source hardware certifications are designed to make it easy for violators to return to compliance (or become compliant in the first place). As such, penalties are designed to escalate over time, giving violators multiple opportunities to comply before the imposition of significant penalties. For each level of penalty, OSHWA will make best efforts to communicate with the party responsible for the project or product in question. The responsible party will have a reasonable amount of time to respond to the complaint and to each layer of penalty before OSHWA imposes additional penalty. OSHWA alone will determine if a project or product is in compliance and when to impose penalties. As appropriate, OSHWA will lift penalties when projects become compliant. Enforcement will consist of:
Bringing the alleged failure to comply to the attention of the responsible party and giving the responsible party an opportunity to respond and/or correct
A second attempt to contact the responsible party to structure a path towards compliance
Public listing of the non-compliant project or product on the OSHWA website
Imagine walking into the dystopian store of your nightmares to buy ketchup. The store is selling ketchup in three different bottles that look like they come from different places, but none of the bottles have any labels. You look at the three bottles, unable to figure out which one will taste the way you expect (and also not make you sick). Finally, motivated by an eerie sense that you are running out of time, you grab a bottle at random and hope for the best.
A few hours later, all of your friends arrive at your BBQ. If your ketchup choice turns out to be wrong, you can blame the lack of trademarks in your nightmare store.
While both cards include the “Local 44” trademark, only one of them really comes from the bar. Can you spot the counterfeit? Image: Flickr user Travis Goodspeed.
Trademarks are words, names, and symbols that serve to identify the source of a product. Fundamentally, trademarks are about consumer protection: when you see ketchup with a trademark on it, you should be confident that the company who owns the trademark stands behind that ketchup. If someone else is passing off their own ketchup labeled with a brand name that you trust (a behavior known as counterfeiting), you might buy it expecting one thing only to discover later that it is quite another.
Because of this consumer protection role, spotting trademark infringement is a bit different than spotting, say, copyright infringement. In disputes about copyright infringement, the core question is “did the defendant make a copy?” In disputes about trademark infringement, the core question is “is the use of the mark likely to cause confusion?”
There are plenty of uses of a trademark that can constitute trademark infringement. But there are also many ways to use a trademark without permission that are perfectly legal. The “likelihood of confusion” test is at the core of classifying any given use. The more likely a use is to suggest that the good is associated with a trademark holder, the more likely it is to be infringement. Conversely, the less likely a use is to suggest that the good is associated with a trademark holder, the less likely it is to be infringement. While using (or “copying”) the trademark is part of that analysis, it is far from the final question.
Preliminary artist’s rendering of ShapeBoard.
In order to illustrate how this would work, imagine that Shapeways has just rolled out a hoverboard that we are calling the ShapeBoard. (Note that I’m not saying that we are working on a hoverboard. I’m also not not saying that we are working on a hoverboard.) Assuming you did not have permission from us, how could you use our ShapeBoard trademark?
Preliminary artist’s rendering of the ShapeBoard logo. Note that Shapeways could have a trademark on both the word “Shapeboard” and the specific appearance of the world Shapeboard in the logo.
In thinking through these examples of potential uses, it may be helpful to keep this three part test in mind. This test originally came from a case involving The New Kids on the Block because, well, why not? Although this is a United States-based test, many other countries treat trademarks similarly.
Do you need to use the trademark in order to identify what you are talking about?
Are you only using as much of the trademark as is reasonably necessary to identify what you are talking about?
Are you avoiding any suggestion that the trademark holder is sponsoring or endorsing what you are doing?
Talking about ShapeBoard. This might be obvious, so I’ll get it out of the way early. You don’t need Shapeways’ permission to talk about ShapeBoard. You can say or write “SO excited about ShapeBoard!” or “My ShapeBoard is coming tomorrow!” (or, I suppose, “Meh, ShapeBoard”) without getting the permission of Shapeways. This makes common sense and it also makes sense in the context of those three tests. It would be pretty hard to talk about the ShapeBoard without using the word “ShapeBoard” and you need to use the entire word “ShapeBoard” in order to do so. Finally, saying that you are excited about ShapeBoard does not imply that you are working with Shapeways or that Shapeways is endorsing you.
Comparing ShapeBoard to things. You also don’t need Shapeways’ permission to compare ShapeBoard to things. Let’s say you are coming out with your own hoverboard. You can say that “YouBoard is 20% cheaper than ShapeBoard” or that “YouBoard comes in 5 fewer colors than ShapeBoard” without infringing on the ShapeBoard trademark. Again, this makes sense in the context of the test – you are only using ShapeBoard to the extent necessary to make the comparison and nothing you say suggests an association between you and ShapeBoard.
Talking about ShapeBoard compatibility. Instead of launching a rival hoverboard, you decide to get into the ShapeBoard accessory business (no offense to the YouBoard, but if the ShapeBoard exists it is pretty awesome so it is probably better to hop on the bandwagon). You roll out a line of 3D printed ShapeBoard fins, ShapeBoard bumpers, and ShapeBoard hover-mechanism-tuners. What is the best way to talk about them? Obviously, you are going to need to use the term “ShapeBoard.” After all, it would be pretty hard to explain to people that you are offering fins for the ShapeBoard without using the term “ShapeBoard.”
But don’t forget about the third part of the test. You want to avoid suggesting that your fins, bumpers, and hover-mechanism-tuners come from Shapeways because Shapeways is not endorsing them. That’s where clear terms like “ShapeBoard compatible” or “works with ShapeBoard” can come in. They avoid creating confusion among customers while still making it clear that your stuff works with ShapeBoard.
Disclaimers. Disclaimers can also be useful for addressing the third part of the test. Adding language to the description of your ShapeBoard compatible fins that clearly states that they are not affiliated in any way with ShapeBoard or Shapeways, and that the term ShapeBoard is used for comparison purposes only, can help get you on the right side of that part of the test. Remember, if you really are using the term ShapeBoard in good faith (as opposed to trying to trick customers into thinking that your fins came from Shapeways), this type of disclaimer should be easy to write.
If you are conscientious, there are many legitimate ways to use trademarks even if you don’t have permission from the trademark owner. The important thing to remember is to avoid suggesting any sort of association or endorsement from that trademark owner. That being said, these types of rules tend to be highly fact and context specific. This blog post is not a substitute for legal advice, and if you have a specific question you should consider consulting an attorney. If you would like more information about using trademarks, the Digital Media Law Project has a good overview on using the trademarks of others (although it is no longer being updated it provides some great foundational information). The International Trademark Association also has good information with international examples.