Open source hardware traces its roots directly back to the open source software community. Despite these roots, hardware is very different from software.  As a result, while some of the norms of open source software port easily to the world of hardware, some are an imperfect fit.  One of the areas of imperfect analogy is in the world of licensing. Fundamentally, this is because open source hardware is not as completely wrapped up in copyright as is open source software.  As a result, open source hardware licenses generally lack one of the two major features of open source software licenses.

Software Licenses

Software is, as a category of work, eligible for automatic copyright protection the moment it is written.  As a result, software can be thought of as “born closed.”  By default, in most cases using (which requires copying) someone else’s software without permission violates their copyright.  In order to change this default state, creators of software use licenses to allow other to use their software without risk of a copyright infringement lawsuit.  Fundamentally, these licenses can be thought of as binding promises not to sue a user for copyright infringement as long as the user complies with the terms of the license.

These license serve at least two purposes.  For users, licenses clear the threat of a copyright infringement lawsuit by laying out clear rules of use. Users can be confident that as long as they follow the rules of the license, they cannot be sued for copyright infringement by the original author of the software.

For creators, licenses let the software out in the world while still allowing the creator to exercise some control over the software via license conditions.  The creator gives up some control over the software, but can be confident that future users are required to comply with whatever limitations incorporated into the license (be it sharing future work, buying the creator a beer, or whatever).  

The single license achieves both of these purposes: assuring users that they will be free of infringement liability, and assuring creators that future users will have to comply with restrictions that the creator cares about (this can also be thought of requiring future users to ‘follow the rules’).

Hardware Licenses

Unlike software, hardware is not completely protected by copyright. While some parts of hardware are eligible for copyright protection, many functional elements simply are not.  While they may be eligible for patent protection, since (unlike copyright protection) patent protection is neither free nor automatic, generally speaking many parts of hardware will be unprotected by any type of intellectual property.  This is especially true for open source hardware, where the creators are unlikely to elect to spend time and money obtaining patents on their goods.

In many ways this is a positive thing.  Unlike software, hardware is largely “born free” and does not require a license to make it available to the larger world.  This is the reason that you can legally hack hardware you own in a what that does not really have a parallel in the world of copyright.  However, this very freedom complicates open source hardware licenses because it makes them harder to enforce.

That does not make open source hardware licenses without value.  They can still accomplish the first purpose of open source software licenses, which is to relieve end users of anxiety related to IP violations that might occur with use.  To the extent that the hardware is protected by some sort of intellectual property rights (and many piece of hardware have at least some protected component that this would be relevant for)*, the license can give users confidence that using the hardware within the limits of the license will prevent them from being sued for infringement.

However, most open source hardware licenses are less good at achieving the second purpose.  As noted above, while many parts of any given piece of open source hardware may be protected by copyright, many parts will not. That is especially true for functional parts of the hardware.  Since these parts are not protected by IP, using them does not require permission from a rightsholder (because that rightsholder does not exist because there are no rights to hold).  As a result, there is no penalty for violating the terms of the license that purports to limit the use of these parts.

The outcome of this is that in many cases end users will be able to violate the restrictions that a creator places on a piece of open source hardware without fear of an infringement lawsuit.  In these instances, the open source hardware license has failed in that second purpose outlined above because they do not allow creators to control the behavior of downstream users.

Can This be Fixed?

To give a lawyerly answer, that depends on your definition of “fixed” is.  One way to fix this problem would be to make it easier to get some sort of IP protection on hardware.  That would make it more likely that licensees would be able to enforce the terms of their licenses. However, because the law works for everyone not just people doing open source hardware, any expansion of IP protection on hardware would also be used by people who don’t care about openness to make hardware more closed.  As I’ve written a number of times, it would be tragic if the legacy of open source hardware was to make hardware more closed.

The other way to fix this problem is with education.  The inability to impose conditions on end users is only a problem if creators have the expectation that they can impose conditions on end users.  That expectation creates a likelihood of frustration for creators who think that a bad actor is violating their license, just to find out that their license does not really apply.  However, if creators understand the purposes and limitations of open source hardware licenses, that expectation can be eliminated (or at least reduced) and the problem is essentially resolved.

That’s the direction I’m inclined towards.  Admittedly it requires altering norms and expectations that have been built up by open source software for decades.  However, it won’t be the the only time that open source hardware has to alter some of what it inherits from open source software.  

*This highlights a second major educational challenge around open source hardware. With open source software, teaching people about IP is fairly easy: they can assume that all software is protected by copyright. Hardware is much more complicated.  While any given  piece of hardware is likely at least partially protected by copyright, what that copyright actually covers will be somewhat idiosyncratic to the hardware itself.  As a result, it is going to be hard to develop everyday rules of thumb for what open source hardware licenses really do and do not control.  I’m hopefully that at some point a taxonomy of some sort will emerge, but that probably won’t happen anytime soon.

The version of this announcement that ran on the Shapeways blog is below.  I just want to preface it with a huge thanks to my wife Jessica for doing all the real editing of this paper (as she does for all of the papers I write), Sherwin Siy for looking over this for me, Sophie Khan and Geoffrey Mann for letting me use their images to illustrate “non-representational” scans, Henrik Rydberg for designing the layout, Parker Higgins for inspiring footnote 11, and Shapeways (especially Marty Meyer) for letting me keep doing these papers.  I also suggest quite strongly checking out Professor Margoni’s paper linked to below for an EU perspective and Paul and Laura’s forthcoming paper for a real law review article treatment of this stuff.  I’ll add a link to it here once I have one that is not behind a paywall (if such a link exists).  Also, Justin Hughes’ paper on photography and copyright is really great.

We are excited to announce a new whitepaper, 3D Scanning: A World Without Copyright*.  As the name suggests, the paper examines how 3D scanning intersects with copyright law.  We are big fans of 3D scanning here at Shapeways, and so we thought it was important to start a discussion around how copyright might impact all of the scans that are coming into the world.

It may come as a surprise, but in many cases 3D scans will not be protected by copyright.  That does not mean that scans are not important, but it does mean that people making and distributing scans should understand what rights they do – and do not – have in those scans.

Why aren’t the scans protected by copyright?  One of the key requirements for copyright in the United States is originality. Even if it takes a large amount of skill to create a scan, if making the scan does not involve originality it is simply not eligible for copyright protection.

The vast majority of scans fall squarely in that category.  By definition, most 3D scans attempt to create a perfect digital replica of the model being scanned.  Injecting “original” content that deviates from the object being scanned into that digital file would undermine the purpose of the scan.

Again, lacking originality does not mean lacking skill.  Making accurate 3D scans can be hard work, and there is a real difference between someone who knows what they are doing and an amateur.  But without room for creative interpretation, the resulting scan is not eligible for copyright protection.

Even without copyright, people making scans still have the ability to profit from and control their scans.  Today many professional scanners charge for scanning services, and someone in possession of a scan file can charge someone else for access.  This system seems to work; the ranks of professional scanners is swelling as 3D scanners become cheaper, better, and easier to use.  These types of professional arrangements are strong because they are built on contracts which do not require copyright in order to be legally enforceable.

A lack of copyright on scan files will also make it easier for designers to access and build upon digitized works.  It means that the person who scans a 2,000 year old Roman sculpture does not suddenly pull part of that sculpture out of the public domain.  Once the sculpture is digitized anyone is free to print their own copies to have at home or in classrooms, increasing access to our collective digital heritage.  Furthermore, those scans can be freely remixed into new interpretations of classic works.  These scans can form the building blocks of all sorts of new creativity – new creativity that might itself be protected by copyright.

It is also important to recognize that just because most 3D scans are beyond the scope of copyright does not mean that all 3D scans will be.  Scans that do intentionally inject original, creative elements such as Geoffrey Mann’s Shine and Sophie Kahn’s portraits are likely to be eligible for copyright protection.  And, of course, 3D scanning is relatively new and the law around it could evolve right along with the technology.

Obviously we are going to keep our eye on this area of law and will do our best to update you as developments occur.  If you are intrigued, I would encourage you to check out the new whitepaper here.  For a more EU-centered take on 3D scanning and copyright (especially in the context of access to cultural heritage), try this paper by Professor Thomas Margoni.  And, since our whitepaper is primarily written for a non-legal audience, if you are looking for a law review article that addresses many of these same issues keep your eyes peeled for an article by Paul Banwatt and Laura Robinson of Matter and Form in a forthcoming edition of the Intellectual Property Journal.

This post originally appeared on the Shapeways blog.

With the relaunch of the Shapeways Designer For Hire program, we are seeing more and more designers and clients coming together to create amazing 3D printed objects. While that is unquestionably a good thing, more people coming together also means more opportunities for misunderstandings. (Buzzkill sentences like that are a reason that lawyers aren’t always invited to parties.) Lauren covered some of big areas of misunderstanding with her 8 Questions Your Client Doesn’t Know to Ask You. This post is going to only address one area: who owns the files and the copyrights at the end of a design job?

Thinking about this in advance can help head off a number of disputes, and getting an agreement in writing can be even better. You may see “getting it in writing” and immediately think to yourself “but contracts are boring.” You are right. Contracts are boring. But like other boring things that manage to stick around like seat belts and automated data backup, they can also be really useful in a pinch.

Getting this sort of thing in writing serves at least two purposes. First, and probably most importantly, it forces the designer and the client to get on the same page before time and money are spent. If they don’t agree, it is much better to know that before a job starts than to wait until the end. Second, once both sides have agreed in writing, it makes it easier to resolve disputes that do come up at the end of a job.

Who Gets the Files?

The first question to address is who gets the files at the end of the job.  Many designers assume that they will keep the files for a model, while clients assume that they will get the files at the end of the job. This obviously creates the opportunity for misunderstanding.  Hashing this out at the beginning of a job can avoid lots of heartache at the end.

When you are discussing files, make sure that you are specific. There is a big difference between getting an .stl file for a model and getting something with a bit more data like an .obj file.

Also, there is a distinction between having possession of the files and being able to use the file going forward. Regardless of who has the files, how they are used is probably governed by copyright. Which, naturally, raises the question of…

Who Gets the Copyright?

Especially if the model is nonfunctional and decorative, it is probably protected by copyright. In most cases, the designer will own the copyright in that model when it is created (assuming the copyright exists).

The copyright gives the copyright holder the ability to control things like how many prints are made from the file, or if the file can be modified in the future. Talking about what – if anything – happens after the commissioned print is made can help shed light on how important doing these types of things are to the client.

If the client wants more than a set number of printed models at the end of the job, they will probably need both the 3D model file and some sort of license to the copyright that protects the model.  There is a lot of flexibility to what the terms of that license can be. It can restrict the client to making exact copies via a designated printing service (like, say, Shapeways), require the client to report to the designer every time a print is made, or allow the client to modify the file freely. If the client really wants full control of the model, they could even require that the designer transfer the copyright to the client.

What is the Answer?

Every designer-client relationship is different, so there is no single answer that will apply to every situation. If you have a specific question, it could be useful to consult a lawyer before moving forward with the agreement.  AIGA’s model contract can also serve as a great jumping off point for discussions between a designer and client. As a bonus for designers, once they decide which parts of that contract they want to use it can just become their default client agreement.

Ultimately, the most important thing is to discuss these questions at the start of the relationship. If the client and designer are on the same page, it will be a quick discussion. If they disagree, it gives them the opportunity to work it out at the start of the relationship. Sometimes that disagreement can be resolved by the designer charging an extra fee for additional rights or access to files. Usually the designer and client can come to agreement, although sometimes they cannot. In either case, it is always better to discover that at the start of a job than at the end.

This post originally appeared on the Shapeways blog.

Monday, the U.S. Supreme Court announced that it would be considering Star Althletica v. Varsity Brands, destined to be known as “the cheerleader uniform case.”   On its face, the case is focused on the somewhat metaphysical question of when a tennis skirt and tank top cross the line into being a cheerleader uniform.

However, as we’ve written about before, the real question in the case is how copyright should apply to works that mix creative and functional elements.  Copyright protects creative works but not functional works, so drawing that line can be incredibly important.  Unfortunately, currently there are at least 10 different (somewhat conflicting) tests that try and guide the analysis.

Earlier this year Sydney Lakin and Bill Koch at Stanford Law School’s Juelsgaard IP and Innovation Clinic helped us, along with Formlabs and Matter and Form, ask the Supreme Court to step in and pick one definitive test.

Why do we care so much?  Many 3D printed objects combine both functional and design elements.  Understanding if – and how – copyright applies to them is the first step in understanding licensing, use, and many other aspects of those objects.

We don’t know when the case will be heard yet (although we are sure it won’t be until after the summer).  We’ll be sure to keep you up to date on the developments as they come out.  In the meantime, if you have any questions feel free to leave them in the comments or tweet them to @MWeinberg2D.

Occasionally I find myself in the highly fortunate position to be asked to contribute to a scholarly journal without having any professional incentive to do so.  This is exciting because I’m as flattered as anyone when someone else is interested enough in my writing to want to republish it.  It also gives me a chance to come into contact with the kinds of contracts that academic publishers offer their contributors.  To put it mildly, these contracts are insane.  In exchange for an unpaid contribution, the contracts expect the authors to give the publishers all sorts of exclusive rights and to indemnify the authors against any sort of infringement lawsuit.

Fortunately for me, and unlike so many people who are confronted with these types of contracts, I have no professional incentive to publish in academic journals.  That makes me free to push back against the contract terms.  The worst thing that happens is that the publisher decides I’m more trouble than I’m worth - it isn’t going to knock me off tenure track or anything.

As what I hope is a service to others who are confronted with these contracts without the ability to walk away, I wanted to publish the version of the contract that the publisher (Kluwer in this case) agreed to pretty easily.  I obviously can’t guarantee that they would make the same concessions again (although it really didn’t take much to get to this point). At a minimum, it might give you the ability to push back when you hear that these terms “cannot be changed.”

All of the struck terms were in the original but are not in the signed contract.  I XXXX’d out the terms of the work because it isn’t really my place to announce the work in advance.  

The undersigned (hereafter called the Author) and Kluwer Law International, XXXXXXX, The Netherlands, (hereinafter called the Publisher)

whereas the Publisher wishes to publish the Work entitled “XXXX ” under the editorship of YYYYYYYYY (hereinafter called the Editor)

whereas the Author has declared his willingness to write the contribution provisionally entitled       (hereinafter called the Contribution) declare that they have agreed as follows: 

1.   The Author agrees to write the above mentioned contribution as agreed with the Editor and/or the Publisher.

2.   The Author hereby grants to the Publisher the exclusive right to publish, sell, give access to and license the use of the Contribution named above in all countries and all languages, in whole or in part, including any translation, abridgement, substantial part, modification or revision thereof, in book form, in a database on its own or with other works and in any form, including, without limitation, mechanical, aural, electronic and visual reproduction and publication, electronic storage and retrieval systems, including delivery of or giving access to the Work by electronic networks, and all other forms of electronic or electro-magnetic publication now known or hereinafter invented, throughout the world, for the full period of the respective intellectual property rights (including copyright) and all renewals and extensions thereof.  The Author hereby authorises and mandates the Publisher to register (at the Publisher’s cost) this licence in any applicable register for intellectual property rights and to take any action and instigate proceedings against infringement of copyright or other intellectual property rights in the Contribution and to use the Author’s name as a party after informing the Author. The Author is hereby licensed by the Publisher to the rights reserved as specified at the end of this agreement.

3.   The Author warrants and represents that to the best of his knowledge the Contribution does not infringe upon any copyright or other right(s), and that it does not contain infringing, libellous, obscene or other unlawful matter, that he is the sole and exclusive owner of the rights herein conveyed to the Publisher, and that he has obtained the necessary permission from the copyright owner or his legal representative whenever a passage from copyrighted material is quoted or a table or illustration from such material is used. The Author will indemnify the Publisher for, and hold the Publisher harmless from, any loss, expense or damage occasioned by any claim or suit by a third party for copyright infringement or arising out of any breach of the foregoing warranties as a result of publication of the Contribution. The Contribution shall be delivered to the Publisher free of copyright charges.

4.   The Author warrants and represents that the Contribution to the Work has not been previously published elsewhere, or that if it has been published in whole or in part, any permission necessary to publish it in the Work has been obtained and provided to the Publisher together with a statement of the original copyright notice.

5.   The Author agrees to be named as author of his Contribution. The Author declares and warrants that any person named as co-author of the Contribution is aware of that fact and has agreed to being so named. The Author signs this agreement also on behalf of and in the name of each co-author, who hereby agree with this agreement in full, in particular Clause 3 and 8. The Author warrants and represents that he is empowered by any co-author to represent this co-author in signing this agreement in their name.

6.   The Author shall receive for the rights granted in Art. 2 a free copy of the (updated) Work plus an electronic file of his (updated) contribution. The Author warrants and represents that any personal use of the contribution by the Author will be limited to the use permitted by the rights reserved to the Author as specified at the end of this agreement. The Publisher shall clearly state the name of the Author in the Work.

7.   The present agreement also applies to future updates to the Contribution by the Author. The Author agrees that the Publisher may request to have a third party take over the writing and updating of the Contribution.  The Author will comply with said request and will cooperate with the new contributor for transfer of his responsibilities with respect to the Contribution. The Author agrees that if the revision has not substantially been prepared by the Author, the Publisher is not required to mention the name of the Author in or in relation to the Work. With respect to such revision the Author waives his moral rights to the extent allowed by law. 

8.   The present agreement can be terminated by the Publisher without prior notice if the Author fails to deliver the Contribution according to the agreed deadline. Termination shall not affect the rights and obligations accrued prior to termination. Any provisions of this agreement which by their nature extend beyond termination shall survive such termination.

9.   This agreement is governed by Dutch law. Any dispute that may arise shall be brought before the applicable court in Amsterdam in The Netherlands.

/s/ 

RIGHTS RESERVED TO THE AUTHOR

 

The Publisher confirms that the following rights are reserved to the Author:

 

•    The right to make copies and distribute copies (including via e-mail) of the Contribution for own personal use, including for own classroom teaching use and to research colleagues, for personal use by such colleagues, and the right to present the Contribution at meetings or conferences and to distribute copies of the Contribution to the delegates attending the meeting.

•    The right to post the full Contribution on the Author’s personal or institutional web site or server, at any time, provided the site has protected/restricted access and acknowledgement is given to the original source of publication; the right to post the full Contribution on any web site provided 3 months have passed since the Contribution was originally published.

•    For the Author’s employer, if the Contribution is a ‘work for hire’, made within the scope of the Author’s employment, the right to use all or part of the Contribution for other intra-company use (e.g. training), including by posting the Contribution on secure, internal corporate intranets.

•    The right to use the Contribution for his/her further career by including the Contribution in other publications such as a personal dissertation and/ or a collection of own articles provided acknowledgement is given to the original source of publication.

 

 

The Author’s rights to reproduce and distribute the Contribution are subject to ensuring that the publication by the Publisher is properly credited^[1] and that no commercial use of the publication is involved^[2].

The rights reserved to the Author (as stated above) are automatically granted upon acceptance of the contribution for publication and upon signature of this agreement by the Author. Any other rights or personal use not expressly stated in this document are not excluded but may be subject to time limitations or payment of fees. In such cases, the Author has to contact Kluwer Law International to obtain formal permission^[3].

[1] “Reprinted from (name of publication), (volume no.), (issue number), (date of publication), (page range), with permission of Kluwer Law International.”

[2] Commercial Purposes includes the use or posting of articles for commercial gain including the posting by companies or their employee-authored works for use by customers; commercial exploitation such as directly associating advertising with such postings; the charging of fees for document delivery or access; or the systematic distribution to other people (other than known colleagues), whether for a fee or for free.

[3] For information on permission guidelines and requests please visit our website: www.kluwerlaw.com.