In the wake of the Thingiverse “Sad Face” controversy, ALL3DP spoke to Michael Weinberg, a leading authority on 3D printing and copyright law.

The dust seems to have settled on the hullabaloo over Sad Face. Makers have prevailed in their struggle against unscrupulous entrepreneurs who attempted to profit on their work without their permission or their consent. Sad Face is now Happy Face (and several variations thereof).

But the whole episode has raised some vital questions about the legalities surrounding 3D printing. Where much of the discussion about intellectual property and the use of 3D models has often been theoretical or hypothetical, this has been a valuable opportunity to play out these questions in the real world.

ALL3DP spoke to Shapeways legal counsel Michael Weinberg, who is something of an expert on this rapidly changing field. We sought his perspective on the exact legal status of Creative Commons, the legal position of 3D printing communities like Thingiverse, and more besides.

Important to note: the answers that follow are entirely the personal opinions of Mr. Weinberg, and are not necessarily shared or endorsed by Shapeways.

Q: Can you provide some clarification on the legal status of Creative Commons?

Creative Commons are copyright licenses. And so if a work is protected by copyright, the rights owner has the ability to choose a whole host of different licenses they can make the work available under. And Creative Commons is one of those licenses and they are legally valid, like many other copyright licenses.

There’s an initial question for any specific 3D printed item as to whether or not that item itself, or the file that contains the item, is protected by copyright. But if the item is protected by copyright, there’s no reason that you can’t use a Creative Commons license to license that copyright and that file.

Q: One grey area that arose over the Sad Face controversy was whether a model should be considered a work of art or a functional object, which then impacted whether a Creative Commons license could be applied. Is that correct?

That was one of the questions that was being raised. I think there was a lot of ambiguity and not a lot of precision around the arguments about what was happening. But absolutely, the initial question of whether or not an item is protectable by copyright largely turns on if it is a functional object or a decorative object. And if it’s a functional object, generally speaking it will not be eligible for copyright protection. If it’s a decorative object, then it generally speaking will be protectable by copyright, and so you can use a copyright license for it.

Now, in addition to those clean, binary categories of designing non-functional and functional objects, there is obviously a host of objects that combine functional, useful elements and design elements. Working through the copyright protection schemes of that is actually moderately complicated. I hope my paper on it is helpful for people. But in the United States right now, there are actually ten different tests to try and figure out what’s protected and what’s not protected. And there’s a case that’s trying to get before the U.S. Supreme Court that would consolidate those into a single test.

But that may be more detail than you need. It’s really helpful as a starting point to begin by saying there are two categories of items. There are the functional items and the decorative items. And if you’re in the decorative category or have a connection to the decorative category, you’re probably talking about copyright, in which case you certainly could use a Creative Commons license.

Q: What happened with Just 3D Print is not an isolated case, and there are many instances of unauthorized uploading and selling of models on platforms like eBay. Aside from Creative Commons, what other steps can a designer take to better protect themselves?

In most copyright regimes, including the U.S. regime and the EU regime, the obligation to enforce copyrights really falls on the rights holder. So websites like eBay have systems set up where a rights holder can easily come to them and say “my work is being infringed upon”. But it is the job of the rights holder to identify those infringements. And there are lots of good reasons for that, not the least of which is a website like eBay really has no way to determine who is the real rights holder or if a user is licensed or not licensed until they hear from the creator and the person who owns the copyright.

And so one of the things that you can do, which is sort of what happened in this case, is if you’re a rights holder and you become aware of someone infringing on your work, you can send a notice to the website that’s hosting that work and say; “I’m the rights holder; take that content down from your site”.

Q: Another development is that a lot of other 3D modeling communities have come forward to offer their own measures to counteract these instances. Are these efforts going to be particularly effective, do you think?

I think it depends. I think they can be. I actually gave a talk at the Creative Commons World Summit about this last fall. One of the challenges in the world of 3D printing and Creative Commons license is what does it mean to give attribution to a creator when you’re using the Creative Commons license. It’s a little bit complicated in the world of 3D printing. And to finding a way to integrate attribution and your name into a design can work for some designs. Obviously, integrating your name into every design may not be appropriate for the design; there may not be an elegant way to do that.

So I think it’s certainly worth considering, but it’s worth considering within the context of what you’re trying to do. I have seen some proposals from sites talking about their use of terms and conditions or requiring people to sign in to download things. And honestly, I don’t understand why those steps make any legal difference to the analysis. Because if you’re someone who is making your 3D design available online, conditioned on a Creative Commons license, for example, and if someone downloads that file, it’s pretty clear that they’re agreeing to the terms of that license.

And I don’t know that if the downloader has agreed to an additional set of terms and conditions, that really changes the legal analysis very much. I could be wrong. I may not be understanding the argument completely. But I haven’t seen an argument that suggests that forcing a downloader to sign into an additional terms of service changes their obligations to stay within the scope of the copyright license.

Q: That’s interesting. Because basically, these sites are adding more hoops for users to jump through, but in effect really doesn’t provide that much more protection.

One way to think of it is if you are downloading a design that’s protected by copyright, and you’re reproducing it and you don’t have a license, and you’re not operating within a fair use, then you’re probably infringing on the copyright. And the thing that prevents you from infringing on the copyright is the fact that the designer made the file available under a Creative Commons license. And so that license is sort of made available on a Thingiverse, for example, as a general offer to the world.

And so by downloading and reproducing the object, either you’re bound by the license, in which case if you’re complying with it you’re not infringing; or you’re not bound by the license, in which case you are infringing because you have no other copyright license to fall back on. So forcing people to sign on to a terms and conditions before downloading the object doesn’t really change that part of the analysis, as far as I can tell.

Q: Is it true to say that Thingiverse doesn’t actually have that much legal recourse in the particular matter of Just 3D Print, or similar offenders? Makerbot stated they were consulting their lawyers, but actually there’s very little they can do?

Thingiverse doesn’t own the copyright in the things that are uploaded to Thingiverse. And in the long term, in general, I think that’s a really good thing. I think most designers don’t want to transfer their rights to where they’re uploading to Thingiverse, to Thingiverse. I think you obviously give Thingiverse permission to use the objects because Thingiverse is making copies of them in order to put them on the website and to distribute them. But Thingiverse is not the rights holder. And so when you think about who is legally positioned to go to someone like eBay and say this person is infringing on my work, that’s not Thingiverse. That’s the person who designed it.

And so Thingiverse is not in a position legally, and I think it’s proper that it is not in that position, to be able to enforce the copyrights of everyone who uploads models to Thingiverse. And I think that you would see outcry in the design community if Thingiverse started claiming copyright ownership in everything that was uploaded to Thingiverse. I think in the medium long term, it is much better for Thingiverse to not own the rights to these things.

Q: What about the fact that, in this instance, Thingiverse renderings were also appropriated by Just 3D Print. Could they intervene on those grounds?

I’m not sure. You can make an argument as to who owns the renderings and what the status of them is. So that’s certainly a little bit more complicated. Photographs that people do are pretty straightforward if they made the photograph. The copyright status of the rendering is a little bit more complicated. But even then, the designer is just much better positioned to know what is infringement and what isn’t infringement.

Because as far as Thingiverse knows – that may not be the case in this case, but in many cases Thingiverse has no idea if a designer has entered into a licensing agreement with somebody to sell things on eBay or anything like that. And so Thingiverse is just very poorly positioned to be patrolling the copyright interests of its users off of Thingiverse. It just doesn’t have the information.

Q: Let’s imagine that a designer uploads, for example, a Star Wars themed cookie cutter to Thingiverse. Are they infringing Disney’s intellectual property?

They may very well be. It depends a little bit on the details. But Star Wars is protected by copyright and so making Star Wars things can potentially infringe on various rights that Disney owns.

Q: But why is that tolerated on Thingiverse? Because we’ve all seen hundreds and thousands of popular culture items, whether they’re homage or they’re outright copies.

Again, the way the system is set up, both in the United States and the EU is that websites – this is the Digital Millennium Copyright Act (DMCA) process in the United States. But websites are allowed to essentially assume that their users are telling the truth when their users say I own the rights to this model that I’m uploading. And so what the websites do is if a rights holder comes to them and says, this work is infringing and I am the rights holder and take it down, and they have a system in place to take it down immediately. And so when the rights holders come to a website like Thingiverse, then Thingiverse will respond to said notice and take the model down.

But in the absence of a rights holder coming to them and saying take this down, they aren’t really in a position to patrol any individual model. Because they don’t know. One of the things – this came up in a case where Viacom was suing YouTube a couple of years ago. And even in that case, where Viacom said all of this stuff is up on YouTube and it’s clearly infringing on our copyright, during the course of the case it came out that Viacom itself had uploaded a lot of that stuff to YouTube. And so it just becomes legally problematic when you ask websites to be patrolling copyright infringement on their own because they don’t have the information required to do that in a responsible way.

Q: Is it the case now that Disney and other rights holders are regarding this activity with benign neglect? At some point if they choose to demand this stuff gets taken down, they’re in a position to make that happen, right?

Yes, presumably. You’d have to ask Disney what they have in mind. There certainly is a mechanism that if they felt things were infringing, they could use to request things be taken down. To be clear, when you use that mechanism, one of the things you have to do is swear under penalty of perjury that you’re the owner and the rights holder. And one of the other things that happens is that the user that uploaded the model has the option to essentially push back and to contest the take down notice. So it’s a little bit of a dynamic process. But absolutely, Disney is like any other rights holder. Which is if there’s a website that hosts third party content – this legal framework is not just for 3D printing, like I said before.

This is the same thing that allows YouTube to work; it’s the same thing that allows Facebook and Twitter to work. If Disney wants to – is concerned about infringement on a website — they certainly have a mechanism that allows them to contact the website and identify the works that are of concern to them and request they be taken down.

Q: There’s an interesting parallel to be drawn between a maker objecting about their designs being taken without their consent, and by corporations like Disney not objecting when a maker has utilized their intellectual property without consent.

The world of copyright is a complicated place.

Q:What would be important to have more clarity for both the makers and for the companies involved? What should happen, now?

It’s a good question and it’s a hard question. And the reason it’s a hard question is that, as a society for the last 15 years, we’ve all had a little bit of a collective education in how copyright law works. And sometimes that education is right, and sometimes it’s wrong. But there’s a much higher level of awareness about copyright than there was 15 or 20 years ago. But most of that education has happened in the context of things like music and movies and blog posts, and the like, that are clearly protected by copyright. And so the entire discussion operates in a framework of copyright and copyright law.

I think one of the really complicated things about 3D printing – and it’s one of the things that makes it legally interesting, but certainly complicates it for everyone – is that many 3D printable objects and 3D objects don’t cleanly fit in the scope of copyright. You kind of have to do an analysis on every object before you start talking about copyright licenses and things like that to determine if it’s even protected by copyright in the first place. And so everyone is moving through this learning process together.

And so I think licenses are important, but being realistic about what those licenses cover is also important. Because as I said, Creative Commons licenses are great if the thing you’re releasing is protectable by copyright. But if you don’t have a copyright to protect what you’re doing, the license you use doesn’t matter. And so I think a big part of what has to happen – and it’s going to happen in fits and starts – are incidents like this that force people to talk about where the lines are and what the rules are, and to understand how the legal system works with it. And then also how to develop some industry and community norms that layer on top of the legal system.

Because when you think about how judges and how policy makers will try and adapt to a world of 3D design and 3D printing, when they’re trying to get answers the first thing they’re going to ask is what are the norms; what is the community doing, what are people doing? And so the way the Thingiverse community responds to these sorts of challenges is really important not just for the incident that you’re discussing, but for the future precedent; for establishing those norms and for working through how the community wants these things to work. Because that’s going to be where law starts from in the future.

Q: The particular episode of Just 3D Print has a “happy” ending now that the offending items have been taken down. But, generally speaking, it’s also been a positive experience from a legal perspective, too?

Yeah, none of this happens in a vacuum. Legal things don’t happen in a vacuum. Community norms don’t happen in a vacuum. Expectations don’t happen in a vacuum. It all kind of comes together. And so we’re all going to work through this together, and hopefully, in fits and starts, find our way to a set of expectations that are reasonable and that are useable in the real world.