Microsoft Word - 6_2018.2_Rana_Final.docx 2018.2_RANA_FINAL SCAN, COPY, PRINT: HOW TO MINIMIZE COPYRIGHT INFRINGEMENT DURING THE 3D TECHNOLOGY REVOLUTION Aliza Rana* Increased accessibility of 3D printing and scanning tech- nology is pushing the boundaries of existing copyright law. From affordable countertop 3D printers to iPhones with 3D scanning capabilities, even in its early stages 3D technology is reshaping manufacturing. To manage the friction between the 3D printing community and copyright owners while avoiding the missteps of the film and music industries, it is important to evaluate the options for copyright management under the existing legal framework and consider their business implica- tions. This Note contemplates the imposition of liability on dif- ferent actors within the 3D scanning and printing community, focusing on online distribution platforms that host 3D scans of copyrighted works. This Note ultimately proposes a solution designed to minimize widespread copyright infringement, pro- tect copyright owners’ rights to their works, and promote mon- itoring by these distribution platforms. I. Introduction ............................................................... 660 II. Overview of 3D Technology & the Relevant Copyright Law ............................................................................. 665 A. How Does 3D Printing Work? ............................. 665 B. An Introduction to Relevant Copyright Law ...... 667 1. How Could 3D Scanning and Printing Infringe Copyright Laws and Who Can Copyright Owners Hold Liable for Such Infringement? ................................................. 669 * J.D. Candidate 2019, Columbia Law School; B.A.&Sc. 2015, McGill University. Many thanks to Professor Bert Huang for his invaluable advice in writing this Note. Additional thanks to Luke Budiardjo for his guidance and support, and to the editorial staff of the Columbia Business Law Re- view for their assistance in preparing this Note for publication. 2018.2_RANA_FINAL 660 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 2. Do 3D Scanned Files of Copyrighted Works Infringe the Rights of Copyright Owners? ..... 671 III. The Challenges of Imposing Copyright Liability on Online Distribution Platforms ................................... 673 A. Can ODPs Be Held Directly Liable? ................... 673 1. ODPs Pass the “Server Test” ......................... 674 2. ODPs Likely Directly Infringe Copyright Owners’ Distribution Rights .......................... 675 3. ODPs May Directly Infringe Copyright Owners’ Display Rights .................................. 676 B. Can ODPs Be Held Secondarily Liability? ......... 677 1. ODPs Would Likely Not Be Held Liable Under Inducement Theory ............................. 677 2. ODPs May Be Held Vicariously Liable .......... 679 3. ODPs May Be Held Contributorily Liable ..... 682 C. The Digital Millennium Copyright Act ............... 684 1. ODPs’ Safety Net: § 512(c) of DMCA ............. 684 IV. Potential Solutions for Reducing Mass Infringement .............................................................. 686 A. Solutions That Have Been Attempted ................ 687 B. Proposed Solution ................................................ 691 1. How to Use the DMCA to Hold ODPs Liable: Notice and Takedown......................... 691 2. Create a Central Repository .......................... 692 V. Conclusion .................................................................. 694 I. INTRODUCTION Although 3D printing technology has existed since the 1980s, only recently has it developed to the point where at- home 3D printing and scanning have become feasible.1 In 2011, The Economist published an article describing the rise of 3D technology as an “industrial revolution” that would “transform manufacturing and allow more people to start 1 Jeff Desjardins, 3D Printing Is Finally Changing the Manufacturing Landscape, VISUAL CAPITALIST (Sept. 27, 2017, 1:14 PM), http://www.visu- alcapitalist.com/3d-printing-changing-manufacturing [perma.cc/9LZQ- VZXV]. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 661 making things.”2 Since then, a wave known as the “Maker Movement” has propelled individual creativity and creation to new heights through the use of 3D technology.3 Based on a do- it-yourself culture, the Maker Movement focuses on innova- tion and learning through 3D technology: “[W]hen you give makers the right tools and inspiration, they have the potential to change the world.”4 Estimates suggest that the 3D printing industry will grow to $26.5 billion by 2021.5 This prediction is, in part, a result of the increasing accessibility and interest in 3D technology.6 3D technology has enabled the creation of a plethora of innovative products, ranging from customized prosthetics for amputees to NASA’s printed pizza.7 Moreover, with recent advances in the quality and pricing of 3D technology, household goods, toys, games, and more can be created at home.8 Microsoft brought 3D scanning into the home in 2012 with its $250 Ki- nect device, and now Apple’s latest iPhones, as well as Sony’s newest flagship phone, offer similar capabilities.9 These 2 The Printed World, THE ECONOMIST (Feb. 10, 2011), http://www.econ- omist.com/node/18114221 [perma.cc/2WMV-PM6J]. 3 See Tim Bajarin, Why the Maker Movement Is Important to America’s Future, TIME (May 19, 2014), http://time.com/104210/maker-faire-maker- movement [perma.cc/9JWL-XQUJ]; Jeremiah Owyang, Maker Movement and 3D Printing: Industry Stats, JEREMIAH OWYANG (Feb. 13, 2014), http://www.web-strategist.com/blog/2014/02/13/maker-movement-and-3d- printing-industry-stats [perma.cc/3FUN-QXAL]. 4 Bajarin, supra note 3. 5 Value of the Additive Manufacturing (3D Printing) Market Worldwide from 2017 to 2021, STATISTA, https://www.statista.com/statistics/261693/3d- printing-market-value-forecast [perma.cc/HT2M-DM5H]. 6 See Sukamal Banerjee, 3D Printing: Are You Ready for the New De- centralized Industrial Revolution?, WIRED (Feb. 2015), https://www.wired.com/insights/2015/02/3d-printing-decentralized-indus- trial-revolution [perma.cc/7GXW-GABP]. 7 Sarah Craig, Protection for Printing: An Analysis of Copyright Protec- tion for 3D Printing, 2017 U. ILL. L. REV. 307, 312 (2017). 8 See, e.g., Emily E. Petersen et al., Impact of DIY Home Manufacturing with 3D Printing on the Toy and Game Market, TECHS., July 20, 2017, at 1, 17, http://www.mdpi.com/2227-7080/5/3/45/htm [perma.cc/JRX6-C674]. 9 Terrence O’Brien, Microsoft Kinect for Windows Version 1.0 Available Today, ENGADGET (Feb. 1, 2012), 2018.2_RANA_FINAL 662 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 devices allow users to scan a variety of objects, and even peo- ple, into computer-aided design (“CAD”) software, which cre- ates a 3D model by translating the original object into a digital file.10 3D printers are increasingly affordable and easy to use, allowing individuals to transform these CAD models into physical objects.11 As a consequence, with a few hundred dol- lars and minimal software knowledge, individuals now have the capacity to completely replicate existing copyrighted works, thereby eliminating the need to purchase certain mass- manufactured goods.12 As 3D technology continues to trans- form manufacturing and distribution from a system of large interconnected market participants to a decentralized net- work of individual “makers,”13 it may leave, in some cases, https://www.engadget.com/2012/02/01/microsoft-kinect-for-windows-ver- sion-1-0-available-today [perma.cc/9YXA-HZ2X]; Michael Molitch-Hou, New Kinect Adapter Gives 3D Builder Full-Color 3D Scanning Powers for 3D Printing, 3D PRINTING INDUSTRY (Oct. 24, 2014, 10:20 AM), https://3dprintingindustry.com/news/new-kinect-adapter-gives-3d-builder- full-color-3d-scanning-powers-3d-printing-35230; Beau Jackson, Eerie or Expressive? iPhone X and Xperia XZ1 Released with AR Features and 3D Scanning, 3D PRINTING INDUSTRY (Sept. 15, 2017, 12:02 PM), https://3dprintingindustry.com/news/3d-scanning-iphone-x-and-xperia-xz1- released-with-ar-features-121268 [perma.cc/PAE7-FK4L]. 10 See Craig, supra note 7, at 313–14. These files can be modified and/or shared with others through online hosting platforms that act as market- places for the distribution of 3D CAD files. See discussion infra Section II.A. The copyright violations associated with the dissemination of 3D CAD files of copyrighted works are discussed in detail infra Part III. 11 Cubibot, a 3D printing startup, is conducting a Kickstarter campaign with the goal of launching a $149 countertop 3D printer by February 2018. See Lulu Chang, Cubibot Brings Affordable 3D Printing to the Masses, DIG- ITAL TRENDS (Oct. 8, 2017, 8:08 PM), https://www.digitaltrends.com/cool- tech/cubibot-3d-printer [perma.cc/3MXK-Y5TR]. See also Drew Prindle, How Do 3D Printers Work? Here’s A Super Simple Breakdown, DIGITAL TRENDS (Mar. 10, 2018, 12:00 PM), https://www.digitaltrends.com/cool- tech/how-do-3d-printers-work [perma.cc/LJU6-D57B]. 12 See, e.g., Rick Brioda, New 3D Printer? Here’s How to Create Your Own Printables, CNET (Feb. 2, 2016, 2:31 PM), https://www.cnet.com/how- to/new-3d-printer-heres-how-to-create-your-own-printables [perma.cc/H4AR-NRGQ]. 13 See Banerjee, supra note 6. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 663 only a direct connection between the do-it-yourself individuals and the parties that originate ideas.14 This shift in manufacturing and distribution means that in cases of copyright infringement, there are no longer capital- rich distributors and manufacturers to sue.15 Instead, the acts of copyright infringement by individuals are widespread and difficult to detect.16 Some suggest that 3D printers could im- plicate “more copyright complications than all the previous advances in technology combined.”17 Analysts predict that “[b]y 2018, 3D printing will result in the loss of at least $100 billion per year in intellectual property globally.”18 Now that 3D technology is available for mass consumer use, corporate and individual copyright owners alike worry that both delib- erate and unintentional infringement will impact their bot- tom-line.19 Beyond the legal difficulties of holding individual infringers liable, the economics of legal action often prevent copyright owners from moving forward. Litigation costs them- selves act as a deterrent, and even in cases where copyright owners choose to incur such costs and pursue legal action, in- fringers may not have sufficient funds available to pay dam- ages.20 Therefore, seeking legal recourse for copyright in- fringement arising from 3D scanning and printing poses three critical problems: (1) identification of the infringer, (2) demon- strability of copyright infringement, and (3) recovery of suffi- cient damages to make litigation worthwhile.21 Copyright owners need an alternative framework within which they can 14 See, e.g., Ian Wright, Should Toy Manufacturers Be Worried About 3D Printing?, ENGINEERING.COM (July 20, 2017), https://www.engineer- ing.com/AdvancedManufacturing/ArticleID/15299/Should-Toy-Manufac- turers-Be-Worried-About-3D-Printing.aspx [perma.cc/UT8V-WGP3]. 15 See Craig, supra note 7, at 326–27. 16 Id. at 326. 17 Sarah Swanson, 3D Printing: A Lesson in History: How to Mold the World of Copyright, 43 SW. L. REV. 483, 483 (2014). 18 Gartner Reveals Top Predictions for IT Organizations and Users for 2014 and Beyond, GARTNER (Oct. 8, 2013), https://www.gartner.com/news- room/id/2603215 [perma.cc/PC6X-43DJ]. 19 See Craig, supra note 7, at 310. 20 Id. at 327. 21 Id. at 326. 2018.2_RANA_FINAL 664 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 enforce their intellectual property rights without assuming the entire burden of monitoring their intellectual property.22 To replace the unambiguous accountability and deep-pock- ets of large manufacturers and distributors, the “new” distri- bution and manufacturing process based on 3D technology must be evaluated to determine which intermediaries may be held liable for infringement. Under this “new” process, there are three steps where owners’ rights can be infringed: (1) scan- ning the original object, (2) distributing the 3D scanned file, and (3) printing a copy of the original work.23 Individuals that actually commit the infringing acts—namely, those who scan, upload, and print—and the intermediaries who facilitate or support their infringing activities—namely, 3D scanner man- ufacturers, distribution websites, and 3D printer manufactur- ers—participate in each of these steps. Part II of this Note describes the step-by-step process of creating 3D scanned and printed objects and explains the cur- rent state of copyright doctrine with respect to each of these steps. Part III of this Note analyzes the ability of copyright owners to impose liability on the parties involved in the “new” manufacturing and distribution process enumerated above. Part IV of this Note proposes a two-tiered solution for address- ing copyright infringement while incentivizing legal distribu- tion of 3D scanned CAD files. This Note does not address the creation of derivative works nor the “de novo” replication (from scratch) of works through CAD software. Rather, this Note focuses on the reproduction, or “copying,” of works through 3D scanning and printing, as well as the digital distribution of the scanned files through online sharing platforms. This Note will focus on situations where users create 3D scans of existing copyrighted works and upload these scans, with limited editing, to online distribution platforms. Although a variety of derivative scenarios exist, an- alyzing this simplistic case will provide readers with the 22 See id. 23 See Aaron Wright, Copyright and Trademark in 3D, CARDOZO LAW, https://cardozo.yu.edu/copyright-and-trademark-3d [perma.cc/7L64-S5V4]. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 665 necessary technical and legal understanding to evaluate spe- cific instances of potential copyright infringement.24 II. OVERVIEW OF 3D TECHNOLOGY & THE RELEVANT COPYRIGHT LAW A. How Does 3D Printing Work? 3D printing, or additive manufacturing, conceptually en- compasses the various technologies that create seamless 3D objects from digital blueprints, often by “adding layer upon layer of material.”25 These blueprints are created from scratch by CAD software (“de novo CAD files”) or, increasingly, re- verse engineered using a 3D scanner.26 3D scanning creates a digital file of an object that can be edited through CAD software.27 Using a 3D scanner is often an easier first step than generating a de novo CAD file, as it affords greater accuracy, speed, and reliability in reproduc- tion.28 Once the scan is complete, users can easily use CAD software to clean up or modify the 3D files to more precisely replicate the scanned object or to customize the blueprint to the user’s preferences.29 24 In many instances, 3D technology, especially with respect to online distribution platforms, will implicate international copyright concerns. However, this analysis falls outside the scope of this Note. Additionally, this Note is limited in scope to purely artistic designs. When copyrighted works have a functional purpose, the “Useful Articles” doctrine would likely apply, adding an additional layer of analysis beyond the scope of this Note. See, e.g., 1 NIMMER ON COPYRIGHT § 2.08 (2018). 25 See Charles W. Finocchiaro, Note, Personal Factory or Catalyst for Piracy? The Hype, Hysteria, and Hard Realities of Consumer 3-D Printing, 31 CARDOZO ARTS & ENT. L.J. 473, 473 (2013); What is 3D Printing, 3DPRINT- ING.COM, https://3dprinting.com/what-is-3d-printing [perma.cc/Y9S6- VLGS]. 26 See Swanson, supra note 17, at 484. 27 See generally CREAFORM EBOOK SERIES, AN INTRODUCTION TO 3D SCANNING (2015) (ebook), https://www.creaform3d.com/sites/default/files/as- sets/technological-fundamentals/ebook1_an_introduction_to_3d_scan- ning_en_26082014.pdf [perma.cc/8JRD-V35F]. 28 See id. 29 Craig, supra note 7, at 313. 2018.2_RANA_FINAL 666 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 An alternative to creating a de novo CAD file or 3D scan- ning an object is to acquire a blueprint online; many creators post 3D scanned CAD files on distribution platforms for others to use.30 Thingiverse,31 GrabCAD,32 MyMiniFactory,33 and Shapeways34 represent just a few of these online market- places. Some platforms also offer software for their users to edit and customize the uploaded files,35 or provide an option for users to order 3D printed objects directly from the website rather than downloading the file for at-home printing.36 These platforms require users to accept various terms and conditions, including terms relating to the ownership of the intellectual property housed on the website.37 To acknowledge the “authorship” of users that upload files and support the management of their “copyrights,” many platforms have adopted licensing options, the most common of which are Cre- ative Commons licenses.38 Generally, websites require the up- loader to grant a license to the website, as well as some form of a license to platform users.39 The platforms also require up- loaders to represent that they maintain intellectual property rights over the uploaded works, and are often to the effect of: 30 Id. at 313–14. 31 About Thingiverse, THINGIVERSE, https://www.thingiverse.com/about [perma.cc/89RM-8QSA]. 32 About GrabCAD, GRABCAD, https://resources.grabcad.com/com- pany/ [perma.cc/6EWT-EWJ3]. 33 About Us, MYMINIFACTORY, https://www.myminifac- tory.com/pages/about_us [perma.cc/Z2WD-4DBN]. 34 Shapeways 3D Printing Marketplace, SHAPEWAYS, https://www.shapeways.com/marketplace [perma.cc/DS4V-LJQK]. 35 See, e.g., GrabCAD Workbench, GRABCAD, https://grabcad.com/workbench [perma.cc/8NMG-GLUR]. 36 See, e.g., SHAPEWAYS, supra note 34. 37 Craig, supra note 7, at 313–14. 38 Id.; see generally About the Licenses, CREATIVE COMMONS, https://cre- ativecommons.org/licenses [perma.cc/Q33F-GV4B]. Creative Commons li- censes are discussed further in Subsection IV.A, infra. 39 See e.g., MakerBot Terms of Use, MAKERBOT, https://www.mak- erbot.com/legal/terms [perma.cc/4UNN-BMME] (last updated Oct. 17, 2017). 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 667 You hereby represent and warrant that: (a) your User Submissions will not infringe, misappropriate or vio- late any third party’s Intellectual Property Rights, moral rights, privacy or other personal right, or any Law; and (b) you have, and will maintain during and after any termination of this Agreement, all licenses, consents, permissions and approvals required to grant the [secondary licenses].40 Once a user accepts the terms and conditions, the website uploads their submitted files for distribution.41 One can then acquire the uploaded blueprint by download- ing the design from a distribution platform and can then send the file to the printer.42 The 3D printer will create the object by breaking down the CAD blueprint into 2D slices or layers.43 These layers are then printed, one on top of another, to create the 3D object.44 Users can start with a host of different sub- stances—so long as the material can be broken down to a liq- uid state, it can likely be used in 3D printing.45 The ease with which replicas of existing copyrighted objects can be created through 3D scanning and printing, as well as the prevalence of intellectual property rights throughout this process, neces- sitates an evaluation of the relevant legal implications. B. An Introduction to Relevant Copyright Law Since the origin of U.S. copyright law, its goal has been to foster the development and dissemination of creativity and in- novation.46 Drafters of the Constitution, under Art. I, Sec. 8, Cl. 8, considered the promotion of “the Progress of Science and 40 GrabCAD Website Terms of Use, GRABCAD (June 28, 2016), https://grabcad.com/terms [perma.cc/LNP3-723U]. 41 See Craig, supra note 7, at 313–14. 42 Id. at 313. 43 Id. 44 Id. 45 Id. 46 See INTERNET POLICY TASK FORCE, DEP’T OF COMMERCE, COPYRIGHT POLICY, CREATIVITY, AND INNOVATION IN THE DIGITAL ECONOMY 3 (2013), https://www.uspto.gov/sites/default/files/news/publications/copyright- greenpaper.pdf [perma.cc/UY35-WPVY]. 2018.2_RANA_FINAL 668 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 useful Arts” to be paramount, and conferred such power upon Congress.47 By offering protection to creators of “original works of authorship fixed in any tangible medium of expres- sion,” copyright law has spurred economic, social, and cultural growth.48 Although copyright protection exists immediately once an original work of authorship is fixed, in order to legally enforce such protection, the work must be registered.49 To qualify for registration under the Copyright Act, the work must be an (1) “original” (2) “work of authorship” (3) “fixed in a tangible me- dium of expression.”50 To meet the “originality” condition, the work must “possess . . . at least some minimal degree of crea- tivity.”51 To qualify as a “work of authorship,” the work must also fall within one of the eight enumerated statutory catego- ries, which include “literary works” as well as “pictorial, graphic, and sculptural works.”52 A work is considered “fixed” when it exists in a “sufficiently permanent medium such that the work can be perceived, reproduced, or communicated for more than a short time.”53 Once it is established that a creator qualifies for statutory copyright protection by meeting the above criteria, the law af- fords them “exclusive rights in [the] copyrighted works.”54 These include the right to “reproduce” and “distribute copies . . . of the copyrighted work.”55 47 U.S. CONST. art. I, § 8, cl. 8. 48 17 U.S.C. § 102 (2017); see INTERNET POLICY TASK FORCE , supra note 46, at 5. 49 See U.S. COPYRIGHT OFFICE, COPYRIGHT BASICS 4 (2017), https://www.copyright.gov/circs/circ01.pdf [perma.cc/PR5W-U7QV]. 50 Id. at 1. 51 Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). 52 17 U.S.C. § 102 (2017). 53 See U.S. COPYRIGHT OFFICE, supra note 49, at 1. 54 17 U.S.C. § 106 (2017). 55 Id. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 669 1. How Could 3D Scanning and Printing Infringe Copyright Laws and Who Can Copyright Owners Hold Liable for Such Infringement? As outlined above, owners’ copyrights can be infringed dur- ing three stages: (1) scanning the original object, (2) distrib- uting the 3D scanned file, and (3) printing a copy of the origi- nal work.56 The owners’ legal rights must be considered concurrently with the economic challenges of enforcement and litigation when considering which party to hold liable for such infringement. During the first and third steps, both parties involved—the individual scanner/printer and the manufacturer of the scan- ning/printing device—may incur liability for copyright in- fringement. The individual scanner may be held directly liable for reproducing a copy of the original copyrighted work57 in violation of § 106(1).58 The same goes for individuals who print replicas of copyrighted works.59 However, it is generally not economically practical to hold individual infringers liable.60 Instead, the economics suggest that copyright owners should attempt to hold the device manufacturers of the 3D scanner or printer liable for contributing to or inducing the infringement committed by the individual scanners or print- ers. The Supreme Court, however, addressed this rationale in the Betamax case, where a copyright holder argued that even though Sony had not directly committed any copyright in- fringement, its sale of a device which made copyright infringe- ment possible made Sony a secondary infringer under the 56 See Wright, supra note 23, at 4–5. 57 For further analysis on why scans of copyrighted works constitute copies of copyrighted works, see infra Subsection III.A. 58 17 U.S.C. § 106 (2017) (“[T]he owner of copyright under this title has the exclusive rights to do and to authorize any of the following: (1) to repro- duce the copyrighted work in copies or phonorecords. . . .”). 59 Id. 60 It is difficult to hold individual infringers liable because of two key economic issues: (1) the infringing activity is widely dispersed; and (2) indi- vidual infringers may not have sufficient funds to pay damages to the orig- inal owner. See Craig, supra note 7, at 325–27. 2018.2_RANA_FINAL 670 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 doctrine of contributory liability.61 In the 1980s, Sony and a handful of other device manufacturers began to produce what are now known as VCRs.62 VCRs allowed individuals to create copies of video content in their homes, which posed a unique problem at the time.63 It was common knowledge that VCR owners would use the devices to copy content from broadcast television for use at a later date, and in some cases, to amass collections of copyrighted content copies from broadcast tele- vision without permission.64 And it was, of course, infeasible for the owners of the copyrighted content to stop this wide- spread infringement by suing the individual owners of VCRs in separate litigation.65 Even though it was clear that Sony had provided the means for VCR owners to infringe copyright, the Court found that Sony was not a contributory infringer because Sony did not have knowledge of the particular acts of infringement it facilitated.66 Since the devices that Sony sold were “capable of substantial noninfringing uses,” the Court declined to assume that Sony sold its devices with constructive knowledge that they would be used to infringe copyright.67 Under the Betamax doctrine, it is unlikely that manufac- turers of 3D scanners and printers could be held secondarily liable for making copyright infringement possible. This is par- ticularly true because the instant case of 3D scanners and printers arguably offer users more “substantial noninfringing uses” than that of a VCR.68 Consequently, attempting to 61 See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 420 (1984) (referred to as the Betamax case, or Betamax). 62 Id. at 422–23. 63 Id. 64 Id. at 423–24. 65 Id. at 420. 66 Id. at 456. 67 Id. 68 For instance, non-infringing uses of 3D scanners and printers in- clude “medical advancement and enhancements in education and science.” See Swanson, supra note 17, at 505. These non-infringing uses would likely be considered of equal importance to those uses cited as sufficient by the Betamax court, which mainly allowed users to record sports, education, and 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 671 impose liability on the parties involved in the first and third stages of infringement is neither efficient, nor likely to suc- ceed. Instead, the focus should be on imposing liability during the second stage: distributing the 3D scanned file. 2. Do 3D Scanned Files of Copyrighted Works Infringe the Rights of Copyright Owners? Assuming that the work being scanned is a copyrighted work, which includes an object with a copyrightable design or component,69 one may be held liable for infringing the exclu- sive rights afforded to copyright owners.70 In particular, the online platforms that distribute scanned files of copyrighted works to the public may be in direct violation of a copyright owner’s exclusive right to distribute copies of their work under § 106(3).71 This assertion relies on how the courts have evaluated dig- ital 3D files replicating copyrighted works. In Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., the Tenth Circuit applied copyright principles to 3D digital models of Toyota cars cre- ated by Meshwerks and concluded that such models were mere copies rather than original expressions deserving copy- right protection in their own right.72 3D models had scarcely been discussed prior to Meshwerks, and, as such, the court re- lied heavily on the doctrinal treatment of photographs.73 With religious programming for later viewing. Sony Corp. of Am., 464 U.S. at 444–46. 69 See Mazer v. Stein, 347 U.S. 201, 218–19 (1954) (holding that the fact that the copyrighted object had a useful purpose—here, the statuettes were used as bases for lamps—did not preclude copyright registration). 70 See 17 U.S.C. § 106 (2017). 71 Id. It is important to note that simply hosting, or “making available,” a copy of the original work may not constitute distribution. See Jane C. Ginsburg & Luke Ali Budiardjo, Liability for Providing Hyperlinks to Cop- yright-Infringing Content: International and Comparative Law Perspec- tives, 41 COLUM. J.L. & ARTS 153, 219 (2018). Instead, the copy must be downloaded in order to constitute distribution for the purposes of § 106(3). See 17 U.S.C. § 106 (2017). 72 Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528 F.3d 1258, 1264 (10th Cir. 2008). 73 Id. at 1263. 2018.2_RANA_FINAL 672 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 photographs, it is not the subject nor the idea of the photo- graph that is copyrightable, but only the “original depiction of the subject” that can be protected.74 The Tenth Circuit cited to a Supreme Court case finding that some photographs lack sufficient minimum originality to qualify for any copyright protection.75 Relying on this asser- tion and referencing the discussion of the idea-expression di- chotomy in Feist, the court emphasized that “works are not copyrightable to the extent they do not involve any expression apart from the raw facts in the world.”76 Works are not copy- rightable if they depict an idea without incorporating the au- thor’s original expression of the idea.77 The Tenth Circuit found that this was the exact intention of Meshwerks.78 They agreed with the District Court’s assess- ment that “Meshwerks’ ‘intent was to replicate, as exactly as possible, the image of certain Toyota vehicles,’”79 and that “Meshwerks’ models depict nothing more than unadorned Toyota vehicles—the car as car.”80 Though Meshwerks made decisions during the creation of the models, they “reflect none of the decisions that can make depictions of things or facts in the world [deserving of] . . . copyright protection.”81 Instead, these digital models that intended to replicate, as closely as possibly, the physical Toyota vehicles were held to be “(very good) copies of Toyota’s vehicles.”82 Thus, under Meshwerks, when a user with intent to depict an original 3D object scans the object, capturing (i.e. copying) its copyrightable properties, the resulting 3D scanned file 74 Id. at 1264 (emphasis omitted). 75 Id. (citing Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 59 (1884)). 76 Id. at 1265; see also Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). 77 Meshwerks, 528 F.3d at 1265. 78 Id. at 1261. 79 Id. 80 Id. at 1265. 81 Id. 82 Id. at 1264. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 673 should constitute an infringing copy of the work.83 As a result, those who create and distribute certain 3D files can be held liable for infringing copyright owners’ rights. III. THE CHALLENGES OF IMPOSING COPYRIGHT LIABILITY ON ONLINE DISTRIBUTION PLATFORMS Copyright infringement by online distribution platforms (“ODPs”) that share 3D scanned CAD files can be remedied by finding the ODPs directly or secondarily liable for their in- fringing actions.84 However, such liability is subject to the Digital Millennium Copyright Act (the “DMCA”) and its enu- merated exceptions.85 As a result, finding ODPs directly and/or secondarily liable may not be sufficient to enforce any claims of infringement against these platforms. A. Can ODPs Be Held Directly Liable? Direct liability stems from a violation of the copyright owner’s exclusive rights under § 106.86 Specifically, ODPs may be violating copyright owners’ distribution rights under § 106(3)87 and copyright owners’ display rights under 83 Though outside of the scope of this Note, it is important to remember that if the user modifies the scan to differentiate it from the original copy- righted work, it may constitute a derivative work or be entitled to its own copyright protection within the statutory definition of term. See 17 U.S.C. § 101 (2017). This Note is limited to considering instances where users scan copyrighted objects with the intention of essentially replicating the original object. 84 A detailed evaluation of whether online distribution platforms (“ODPs”) can be held directly and/or secondarily liable follows. See infra Sections III.A and III.B. 85 See discussion infra Section III.C considering the impact of the Dig- ital Millennium Copyright Act (the “DMCA”) in finding ODPs liable for cop- yright infringement. 86 See 17 U.S.C. § 106 (2017). 87 Id. (“[T]he owner of copyright under this title has the exclusive rights to do and to authorize any of the following: . . . (3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending . . . .”). 2018.2_RANA_FINAL 674 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 § 106(5)88 to the extent that the ODPs host infringing files on their website after they are uploaded by users. 1. ODPs Pass the “Server Test” In Perfect 10, Inc. v. Amazon.com, Inc., the Ninth Circuit evaluated whether Google’s image search results of the plain- tiff’s nude photos constituted direct infringement of the owner’s display and distribution rights.89 Google’s searches displayed reduced size and quality thumbnail versions of the plaintiff’s images and, when clicked on, prompted the user to access the full-sized images from the third-party website that hosted the photos.90 In its analysis of whether direct liability was appropriate, the court developed and applied the “server test,” holding liable online platforms that stored electronic in- formation and served it directly to the user.91 The server test focuses on whether the provider actually hosts the infor- mation for users or merely links to it, suggesting that solely linking to infringing content would likely absolve the platform of any direct infringement claim.92 In its application of the server test to Perfect 10’s claims, the District Court found, and the Court of Appeals affirmed, that Google’s thumbnails likely constituted direct infringement, but that Google likely would not be found directly liable for linking to full-sized images.93 The majority of ODPs would likely not be barred from di- rect liability under the server test. A quick search on Thingi- verse, for example, shows that users can download CAD files 88 Id. (“[T]he owner of copyright under this title has the exclusive rights to do and to authorize any of the following: . . . (5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly . . . .”). 89 See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159 (9th Cir. 2007). 90 Id. at 1155–56. 91 Id. at 1159–60. 92 Id. at 1159. 93 Id. at 1176. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 675 directly from the websites to their computers.94 Thingiverse does not redirect users to another platform, nor does it link users to an alternative source to procure the CAD file.95 Many ODPs follow the same process as Thingiverse for transmitting CAD files from their platforms to individual users, and as such, under the server test, may be directly liable for violating copyright owners’ distribution and display rights.96 2. ODPs Likely Directly Infringe Copyright Owners’ Distribution Rights ODPs are inherently designed for the distribution and dis- semination of CAD files for 3D printing.97 These platforms act as communities for users to share and exchange various 3D printing blueprints, including those that infringe on copyright protection.98 As explained above, 3D CAD files that replicate copyrighted objects are considered copies of the original work under the existing doctrine.99 Copyright law defines “publication” as the distribution of, or offer to distribute, copies of a work to the public through 94 See, e.g., Search Results for “Star Wars”, THINGIVERSE, https://www.thingiverse.com/search?q=Star+Wars&sa=&dwh=185a57bbf 995bb0 (last visited Apr. 9, 2018); Mark Kotsamanes, Star Wars—Dark Hol- ocron, THINGIVERSE (Dec. 14, 2015), https://www.thingi- verse.com/thing:1194407 [perma.cc/K2E8-GC2S]. 95 Id. 96 Entering the search-term “Star Wars,” for example, on many ODPs offers numerous results that can be downloaded directly to the user’s com- puter. The ODP does not redirect the user to an alternative website nor does it require any information in exchange for the download. Though this may not be the case for all ODPs, the majority offer a similar process for down- loading hosted CAD files. See, e.g., Search Results for “Star Wars”, supra note 94; Search Results for “Star Wars”, GRABCAD, https://grabcad.com/li- brary?utf8=%E2%9C%93&query=Star%20Wars (last visited Apr. 9, 2018); 294 Objects Found Matching “Star Wars”, MYMINIFACTORY, https://www.myminifac- tory.com/search/?query=Star+wars&tech=&comp=&query=Star+Wars&so rtBy= (last visited Apr. 9, 2018). 97 See Craig, supra note 7, at 313–14. 98 Id. at 313. 99 See supra Subsection II.B.2. 2018.2_RANA_FINAL 676 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 sale or other transfer of ownership.100 To augment this broad definition, the Supreme Court has accepted that copies may be distributed electronically.101 Therefore, by hosting 3D CAD files electronically for users with, at minimum, an offer to dis- tribute these files to the public, it is likely that ODPs’ actions may be considered a violation of copyright owners’ distribu- tion rights. 3. ODPs May Directly Infringe Copyright Owners’ Display Rights The case for infringement of display rights is less linear. The Copyright Act has defined “display” as “to show a copy of [a work], either directly or by means of a film, slide, television image, or any other device or process . . . .”102 Although it has been demonstrated that a 3D CAD file de- picting an original copyrighted work constitutes a copy of that work, it may be a stretch to assume liability for displaying an image of the CAD file.103 In Perfect 10, Google image search results displayed Perfect 10’s copyrighted photos.104 Simi- larly, ODPs’ search results display images of 3D scanned CAD files—essentially displaying the functional equivalent of the copies of the original copyrighted works. Courts may find the instant case to be analogous to the “prima facie case that Google’s communication of its stored thumbnail images directly infringes Perfect 10’s display right.”105 Alternatively, courts may consider displaying a copy (the image displayed on the ODP) of a copy (the 3D scanned CAD file) of the original copyrighted work to be too far re- moved to constitute direct infringement of display rights. 100 See 17 U.S.C. § 101 (2017). 101 See N.Y. Times Co. v. Tasini, 533 U.S. 483, 498 (2001). 102 17 U.S.C. § 101 (2017). 103 See supra Subsection II.B.2. 104 See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1159 (9th Cir. 2007). 105 Id. at 1160. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 677 B. Can ODPs Be Held Secondarily Liability? Though there is a strong argument for finding ODPs di- rectly liable for copyright infringement, courts more com- monly rely upon secondary liability doctrines, including in- ducement theory, vicarious liability, and contributory liability, to hold online platforms liable.106 Secondary liability is based on a predicate alleged act of direct liability.107 The individual users who: (1) create 3D scans of copyrighted works, (2) upload them to the ODPs, and (3) download them to print (reproduce) the copyrighted works directly commit multiple acts of copyright infringement. Since 3D scanned replicas of copyrighted works constitute copies of the works,108 these acts, without permission from the copyright owner, in- fringe on the owner’s basic right to reproduce their work un- der § 106(1), and uploading the scans infringes on the owner’s right to distribute under § 106(3).109 After establishing a di- rect liability claim on individual infringers, copyright owners may rely on the common law concept of secondary liability to hold responsible those who encourage, facilitate, or profit from the infringing acts.110 1. ODPs Would Likely Not Be Held Liable Under Inducement Theory Inducement theory—a secondary liability theory based on finding evidence of “active steps . . . taken to encourage direct 106 See, e.g., A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1019– 24 (9th Cir. 2001), Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 916 (2005); see also Xavier Amadei, Note, Standards of Liability for Internet Service Providers: A Comparative Study of France and the United States with a Specific Focus on Copyright, Defamation, and Illicit Content, 35 CORNELL INT’L L.J. 189, 198 (2001). 107 See K. A. Taipale, Secondary Liability on the Internet: Towards a Performative Standard for Constitutive Responsibility 14 (CAS Working Pa- per Series, Paper No. 04-2003). 108 See supra Subsection II.B.2. 109 See 17 U.S.C. § 106 (2017). 110 JAMES BOYLE & JENNIFER JENKINS, Secondary Liability for Copy- right Infringement & Safe Harbors in the Digital Age, in INTELLECTUAL PROPERTY: LAW AND THE INFORMATION SOCIETY 517, 517 (2014). 2018.2_RANA_FINAL 678 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 infringement”—was applied to online platforms in Metro- Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.111 The Supreme Court found that Grokster, a Napster-like peer-to-peer shar- ing platform, displayed sufficient intent to be held liable un- der inducement theory, highlighting three key facts: Grokster (1) aimed to satisfy a known source of demand for copyright infringement, (2) did not attempt to develop filtering tools or other mechanisms to diminish the infringing activity, and (3) made money selling advertising space, directing ads to com- puters, etc.112 ODPs do not share these characteristics, nor do they meet the high burden set out in Grokster. Grokster emphasized that the improper objective of promoting use of the platform for in- fringement “must be plain and must be affirmatively commu- nicated through words or actions.”113 The standard for satis- fying inducement is intentionally difficult to meet.114 Unlike Grokster, which touted itself as a Napster alternative,115 ODPs have not to date advertised themselves as platforms for sharing infringing content. Rather than actively inducing in- fringement, ODPs, at least externally, appear to focus on in- novative, non-infringing uses for their platforms, such as the distribution of unique user-created CAD designs.116 Their compulsory terms and conditions require users to acknowledge and certify that they have intellectual property rights to the content they upload.117 Many ODPs offer 111 Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005) (citing Oak Industries, Inc. v. Zenith Electronics Corp., 697 F. Supp. 988, 992 (N.D. Ill. 1988)). 112 Id. at 916. 113 Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020, 1034 (9th Cir. 2013). 114 Id. 115 Id. at 1035. 116 See, e.g., How it Works, MYMINIFACTORY, https://www.myminifac- tory.com/pages/how-it-works [perma.cc/2LKN-SYJW]; Thingiverse Creative Commons Licenses Explained, MAKERBOT, https://www.makerbot.com/me- dia-center/2016/03/14/thingiverse-creative-commons-licenses-explained [perma.cc/G67Q-QQAY]. 117 See, e.g., Terms & Conditions, MYMINIFACTORY, https://www.myminifactory.com/pages/terms-and-conditions 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 679 licensing options to their users, which suggests that they in- tend for uploaded files to be sufficiently original for copyright protection.118 Notably, larger ODPs including Shapeways and Thingiverse run active blogs and chatrooms that discuss, amongst other topics, the intersection of intellectual property rights and 3D technology.119 As a result, it is unlikely that ODPs would be found secondarily liable under inducement theory. 2. ODPs May Be Held Vicariously Liable Conversely, vicarious liability exists when two elements are satisfied: (1) “the defendant must possess the right and ability to supervise the infringing conduct,” and (2) “that de- fendant must have ‘an obvious and direct financial interest in the exploitation of copyrighted materials.’”120 In contrast to other forms of secondary liability, a defendant cannot escape vicarious liability by simply claiming an actual lack of knowledge.121 In A&M Records, Inc. v. Napster, Inc., the Court of Ap- peals, affirmed a likelihood of success on the merits in finding Napster vicariously liable for its users’ infringing activity and stayed the preliminary injunction (with some modification of [perma.cc/7WSS-VCS7]; MakerBot Terms of Use, MAKERBOT, https://www.makerbot.com/legal/terms (last updated Oct. 17, 2017) [perma.cc/4UNN-BMME]; GrabCAD Website Terms of Use, GRABCAD, https://grabcad.com/terms (last updated June 28, 2016) [perma.cc/HQ4M- G6S5]; Shapeways Content Policy and Notice Takedown Procedure, SHAPE- WAYS, https://www.shapeways.com/legal/content_policy [perma.cc/H73B- W6ZQ] (last updated Feb. 22, 2017). 118 See Duann, Creative Commons and Digital Design Downloads, SHAPEWAYS MAGAZINE (Oct. 29, 2010), https://www.shapeways.com/blog/ar- chives/628-creative-commons-and-digital-design-downloads.html [perma.cc/E6SF-A94Y]; Thingiverse Creative Commons Licenses Explained, MAKERBOT (Mar. 14, 2016), https://www.makerbot.com/media-cen- ter/2016/03/14/thingiverse-creative-commons-licenses-explained [perma.cc/A79M-3QGB]. 119 See id. 120 3 NIMMER ON COPYRIGHT § 12.04(A)(2) (2018). 121 Id. 2018.2_RANA_FINAL 680 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 scope) for A&M Records.122 In its decision, the court evaluated whether Napster satisfied the two requirements of vicarious liability.123 Since “Napster’s future revenue [was] directly de- pendent upon ‘increases in userbase,’” and “[m]ore users reg- ister[ed] with the Napster system as the ‘quality and quantity of available music increase[d],’” the court found that Napster’s financial interest was sufficiently obvious and direct for vicar- ious liability.124 With respect to the supervision prong, the court found that Napster’s ability to police its users would likely constitute sufficient supervision.125 However, it high- lighted that there were boundaries as to how much control Napster could and actually did exert.126 Napster’s treatment of the supervision prong warranted additional clarification from the Ninth Circuit in Perfect 10 six years later.127 In Perfect 10, the court explained that both a legal right and a practical ability to control the infringing ac- tivity are required before one can be considered vicariously li- able.128 In contrast to Napster, the court found that Google was not vicariously liable as it did not possess the legal right nor the practical ability to control the infringing activity.129 The court relied in part on the fact that the infringing activity was taking place on third-party websites that Google could not control and stressed the impracticality of placing Google in a supervisory role.130 The Ninth Circuit highlighted that the right to remove something from an online platform does not necessarily constitute the right to stop infringement.131 122 See A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1029 (9th Cir. 2001). 123 Id. at 1022–23. 124 Id. at 1023. 125 Id. at 1023–24. 126 Id. 127 See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1157 (9th Cir. 2007). 128 Id. at 1173. 129 Id. at 1173–74. 130 Id. 131 Id. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 681 With this background in mind, it is likely that ODPs have an adequate financial interest to satisfy the first requirement of vicarious liability. Arguments for ODPs’ financial interest in the infringing activity would likely follow the same ra- tionale posited in Napster: ODPs depend on increases in their userbase to generate current and/or future revenue, with some ODPs even deriving direct profit from sales based on user-uploaded files.132 ODPs also have some ability to control access to their sys- tems. ODPs more closely resemble Napster than Google in that they are closed systems that theoretically and legally con- trol which files users upload, distribute, and, in some cases, sell, in contrast to Google’s open internet system that has no control over the files hosted on third-party websites. However, courts instead may rely on Perfect 10’s assertion that legal right does not equate to practical ability, and consider factors such as the ease of uploading and downloading files on ODPs and the volume of hosted files to indicate that these platforms do not practically have the ability to control the infringing ac- tivity. The DMCA includes an express prohibition on imposing an affirmative duty to monitor infringing activity for online plat- forms, including ODPs.133 Discussed in further detail below, the Act may signal to courts that imposing a “control” obliga- tion on ODPs directly conflicts with Congress’s intentions in enacting the DMCA, and may sway courts away from finding vicarious liability in these circumstances.134 Ultimately, whether courts would find ODPs vicariously liable is debata- ble, but would likely rest on whether a court is convinced that ODPs maintain sufficient practical and legal control over the files distributed across their platforms. 132 See, e.g., Shapeways 3D Printing Marketplace, SHAPEWAYS, https://www.shapeways.com/marketplace [perma.cc/93WD-FXNM] (offer- ing a 3D printing service that creates objects from a variety of CAD designs with different colors, finishes, sizes, and materials). 133 17 U.S.C. § 512(m) (2017). 134 See infra Subsection III.C.1. 2018.2_RANA_FINAL 682 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 3. ODPs May Be Held Contributorily Liable Alternatively, ODPs may be found contributorily liable for the actions of their users. “One who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another, may be held liable as a ‘contributory’ infringer.”135 The two requirements for liability under contributory infringement are as follows: (1) material contribution to the activity, and (2) actual or constructive knowledge of the infringing activity.136 Contributory infringement in the online context was eval- uated alongside vicarious liability in Napster, where the Ninth Circuit found that Napster would likely be liable for contributing to its users’ infringing actions.137 Napster easily satisfied the “material contribution” requirement.138 Consid- ering that its goal was to allow users to easily find and down- load music and that, without it, users would not have the same access to potentially infringing MP3 files, Napster’s ac- tions were found to constitute a material contribution to the infringing activity. The “knowledge” prong, however, proved more difficult to satisfy. Prior to Napster, Betamax held that “if the product is widely used for legitimate, unobjectionable purposes,” then constructive knowledge should not constitute contributory in- fringement.139 Acknowledging that Napster could not be held to satisfy the “knowledge” requirement simply by acting as a peer-to-peer sharing platform,140 the court instead applied the 135 Gershwin Pub. Corp. v. Columbia Artists Mgmt., 443 F.2d 1159, 1162 (2d Cir. 1971). 136 Intentional Inducement of Copyright Infringements Act of 2004: Hearing on S. 2560 Before the Comm. on the Judiciary, 108th Cong. 2 (2004) (Statement of Marybeth Peters, Register of Copyrights). 137 See A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1021–22 (9th Cir. 2001). 138 Id. 139 Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984). 140 As explained above, Betamax would limit this because peer-to-peer sharing platforms have substantial non-infringing uses. See Sony Corp. of Am., 464 U.S. at 417. In Napster, the District Court held that platform did 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 683 “knowledge” requirement from Religious Technology Center v. Netcom On-Line Communication Services, Inc.141 Netcom sug- gested that, with respect to online platforms, “evidence of ac- tual knowledge of specific acts of infringement is required” to be held liable for contributory infringement.142 The Napster court accordingly stated that if the system operator becomes aware of specific acts of infringement and fails to remove the infringing material, they have both sufficient knowledge and are contributing to the infringement, thus satisfying both re- quirements of contributory liability.143 Similar to Napster, ODPs exist to ease the distribution of 3D CAD files amongst users and without the platforms, users would not have the same access to infringing files. This ra- tionale should suffice to satisfy the “material contribution” re- quirement. Turning to the “knowledge” requirement, con- structive knowledge would likely be insufficient under Betamax as there are “legitimate, unobjectionable purposes” for using ODPs, including the distribution of novel 3D crea- tions. Rather, the heightened requirement of actual knowledge from Napster and Netcom would apply to ODPs. Again, § 512(m) of the DMCA shifts responsibility from the ODPs, who are absolved of any duty to monitor infringing ac- tivity, to the copyright owners and others, who must provide actual knowledge to ODPs of the specific acts of infringement. Since the enactment of the DMCA, the issuance of a notice and takedown can generate such proof of actual knowledge, dis- cussed in detail in Subsection IV.B.1, infra. ODPs would only be found contributorily liable if such actual notice was pro- vided. not have substantial non-infringing uses but the Court of Appeals reversed, explaining that the District Court failed to recognize the platform’s poten- tial uses by only considering what the technology was currently being used for. See Napster, 284 F.3d at 1020–21. 141 See Napster, 284 F.3d at 1021–22. 142 Id. (citing Religious Tech. Ctr. v. Netcom On-Line Commc’n Servs., Inc., 907 F. Supp. 1361, 1371 (N.D. Cal. 1995)). 143 Id. 2018.2_RANA_FINAL 684 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 C. The Digital Millennium Copyright Act As discussed above, ODPs may be held directly liable for copyright infringement, as well as secondarily liable under the doctrines of vicarious and contributory infringement. How- ever, these sources of liability are subject to the DMCA, legis- lation that introduced the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty into U.S. law in addition to addressing other significant copyright issues aris- ing from the online era.144 The DMCA was enacted to “facilitate the development of electronic commerce in the digital age.”145 Amongst other leg- islation, the DMCA added § 512 to the Copyright Act to limit copyright infringement liability for online service providers. ODPs, as platforms “offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the ma- terial as sent or received,” qualify as online service providers under the DMCA.146 Importantly, the DMCA contains a safe harbor provision for online service providers under § 512(c).147 1. ODPs’ Safety Net: § 512(c) of DMCA The safe harbor provision of the DMCA shields from liabil- ity internet service providers who store infringing material at the direction of their users so long as they satisfy the criteria outlined in § 512.148 To be eligible for the safe harbor provi- sion, ODPs must meet the general threshold conditions under § 512(i): they must (1) adopt, implement, and inform subscrib- ers of the policy requiring the termination of subscriptions or 144 U.S. COPYRIGHT OFFICE, THE DIGITAL MILLENNIUM COPYRIGHT ACT OF 1998: U.S. COPYRIGHT OFFICE SUMMARY (1988), https://www.copy- right.gov/legislation/dmca.pdf [perma.cc/V6RK-QH43]. 145 U.S. COPYRIGHT OFFICE, EXECUTIVE SUMMARY: DIGITAL MILLENNIUM COPYRIGHT ACT SECTION 104 REPORT https://www.copyright.gov/re- ports/studies/dmca/dmca_executive.html [perma.cc/D6YE-57UB]. 146 17 U.S.C. § 512(k)(1)(A) (2017). 147 17 U.S.C. § 512(c) (2017). 148 Id. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 685 account access to the ODP for repeat infringers, and (2) accept standard technical measures “used by copyright owners to identify or protect copyrighted works.”149 Furthermore, under § 512(c)(2), ODPs must designate an agent to receive notifica- tions of alleged infringement and make the agent’s contact in- formation available to the public as well as to the Copyright Office.150 Once these threshold requirements are met, the specific conditions for the safe harbor provision under § 512(c)(1) must be evaluated.151 First, ODPs must not have actual knowledge of nor be aware of the facts or circumstances giving rise to the infringing activity.152 Courts have imposed a heightened knowledge standard beyond the requirements under the plain reading of the statute. In Viacom Int’l, Inc. v. YouTube, Inc., the Second Circuit interpreted § 512(c)(1)(A) “to require actual knowledge or awareness of specific instances of infringement” rather than general “red flag knowledge.”153 The Ninth Cir- cuit confirmed this understanding in UMG Recordings, Inc. v. Shelter Capital Partners LLC, mirroring the knowledge re- quirement for contributory liability described in Napster.154 Even when an ODP has specific knowledge of infringing activ- ity, it is still covered by the safe harbor provision so long as it expeditiously removes or prevents access to the infringing content.155 Secondly, ODPs cannot receive “financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such ac- tivity.”156 The Second and Ninth Circuits have explicitly 149 17 U.S.C. § 512(i) (2017). 150 17 U.S.C. § 512(c)(2) (2017). 151 17 U.S.C. § 512(c)(1) (2017). 152 Id. 153 See Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19, 31 (2d Cir. 2012). 154 See UMG Recordings, Inc. v. Shelter Capital Partners LLC, 718 F.3d 1006, 1020–22 (9th Cir. 2013); see also supra Subsection II.B.2 and accompanying footnotes. 155 17 U.S.C. § 512(c)(1)(C) (2017). 156 17 U.S.C. § 512(c)(1)(B) (2017). 2018.2_RANA_FINAL 686 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 rejected applying Napster’s interpretation of the “direct finan- cial benefit prong” under vicarious liability to the statute, stating that this standard does not translate to the DMCA re- quirements.157 Instead, courts have focused on the second half of the requirement, emphasizing that the “DMCA requires more than the mere ability to delete and block access to in- fringing material after that material has been posted in order for the [ODP] to be said to have ‘the right and ability to control such activity.’”158 To satisfy this, courts have held that the ODP must “exert . . . substantial influence on the activities of users,” which could mean having “high levels of control over activities of users” or inducing infringing activity as seen in Grokster.159 Since qualification for the DMCA safe harbor has been interpreted such that “control of users” predicates the “direct financial benefit” that ODPs receive, most ODPs would fall under the safe harbor protection of the DMCA. Additionally, as previously discussed, § 512(m) expressly absolves ODPs of any affirmative duty to monitor their plat- forms for infringing content, placing the burden of detecting and rectifying infringement on copyright owners.160 Compli- ance with the requirements of § 512—namely, by reacting ex- peditiously when informed of infringing content and main- taining a relatively passive role as a peer-to-peer network rather than as an actively monitored website—should enable ODPs to escape liability for copyright infringement under the DMCA’s safe harbor provision.161 IV. POTENTIAL SOLUTIONS FOR REDUCING MASS INFRINGEMENT In order to effectively solve the problem of mass copyright infringement posed by 3D technology, a solution must be 157 See UMG Recordings, 718 F.3d at 1026–31; Viacom Int’l, 676 F.3d at 36. 158 See UMG Recordings, 718 F.3d at 1029 (citing Ellison v. Robertson, 189 F. Supp. 2d 1051, 1061 (C.D. Cal. 2002)). 159 Id. at 1030. 160 17 U.S.C. § 512(m) (2017). 161 17 U.S.C. § 512(c) (2017). 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 687 derived that incentivizes the various parties involved to act in a legal and mutually beneficial way. As evidenced by the struggles that the music industry faced when confronted with Napster and its successor technologies, in order to minimize illegal distribution of copyrighted works, widespread infringe- ment must be combated with a solution that offers consumers affordable, easy, and legal access to the works they seek.162 It is also vital to recognize the likelihood of dramatic adoption of and innovation in 3D technology over time. This evolution will inevitably impact ODPs and the electronic transfer of copy- righted works. New legal constraints, as well as solutions im- plemented in the near future, should account for possible ODP forms that have not yet been adopted and may have not yet been considered. For a solution to be durable, it must create the right incentives for the various parties involved, recogniz- ing that this technology is still in its infancy. To date, such a solution does not exist. A. Solutions That Have Been Attempted Some ODPs have implemented Creative Commons licenses to protect works posted to their websites.163 Creative Com- mons is a non-profit organization offering six types of global licenses that creators can apply to their works to simplify the distribution of digital content.164 These licenses afford crea- tors a “standardized way to grant copyright permissions to their creative work” such that “licensors get the credit for their work they deserve.”165 The licenses support the open- source culture promoted by the Maker Movement while allow- ing copyright owners to reserve some rights to their work, in- cluding whether to allow derivative creations or commercial use of their work.166 162 See Finocchiaro, supra note 25, at 474–75. 163 See Duann, supra note 118; Thingiverse Creative Commons Licenses Explained, supra note 118. 164 See About the Licenses, supra note 38. 165 See 7id. 166 See Craig, supra note , at 316. 2018.2_RANA_FINAL 688 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 However, Creative Commons licenses do not replace copy- right registration or statutory protection, and in some in- stances, may be invalid at the outset. When users upload files to most ODPs, they are offered the option to apply a Creative Commons license. As discussed throughout this Note, many of the files uploaded by users are not their own creations, but rather infringing works. ODPs have not yet implemented any tools to distinguish between infringing and non-infringing works, in part, because of the DMCA’s exemption from any obligation to monitor infringing activity on their platforms. As a result, Creative Commons licenses can be applied to infring- ing content such that instead of protecting the original au- thor’s copyright, the license affords the infringer perceived “protection” from subsequent infringement. And, as required by the Creative Commons licenses, the infringer who licenses the work will be credited for the creation rather than the orig- inal author. This directly applies to cases where 3D scanned CAD files of a copyrighted works are uploaded to ODPs.167 If an original creator discovers their work is being falsely at- tributed to someone else, there is no simplified path for seek- ing recourse. Instead, Creative Commons directs copyright owners to contact the individual websites and/or services that host the infringing content, citing that it “does not host the Content made available through CC Search.”168 Rather than deterring infringing activity, these Creative Commons li- censes afford infringers certain superficial protections with- out addressing whether these licenses are valid and appropri- ate, thereby arguably creating more harm than good in cases of infringing works.169 167 See About the Licenses, supra note 38; see generally Terms of Use, CREATIVE COMMONS, https://creativecommons.org/terms (last updated Nov. 7, 2017) [perma.cc/3VCG-YXGT]. 168 See Terms of Use, supra note 167. 169 See generally Michael Weinberg, Bringing Creative Commons and 3D Printing Closer Together, SHAPEWAYS MAGAZINE (July 20, 2016), https://www.shapeways.com/blog/archives/26337-bringing-creative-com- mons-and-3d-printing-closer-together.html [perma.cc/7XUD-FJA8]; Mi- chael Weinberg, BY-3D? Creative Commons Attribution and 3D Printing, SHAPEWAYS MAGAZINE (Oct. 28, 2015), 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 689 Alternatively, some have suggested that rather than ad- dressing the problem of copyright infringement through ODPs, it should be 3D printer manufacturers that must mon- itor this activity instead.170 One proposed solution is to re- quire that 3D printers have internet connectivity to allow for “3D printing imprinting or stamping” and to potentially con- nect to a database similar to the central repository described below.171 However, as previously explained, existing copyright law exempts 3D printer manufacturers from being held liable for copyright infringement under Betamax and it would be im- practical to hold the individuals who use 3D printers liable for infringing acts. Further, 3D printer manufacturers lack the appropriate incentives to take such action under existing cop- yright doctrine. Instead of attempting to reverse existing doctrine or lobby for additional legislation, the solution should work within the bounds of the existing laws to limit infringing activity. Disney is attempting one such solution: It recently patented an anti- scanning reflective material that would prevent 3D scanning of its popular characters and figurines.172 Stressing that “a person with a 3D printer may copy nearly any 3D object even without access to the digital file originally used by a manufac- turer,” Disney has expressed hope that its new technology will limit such copyright infringement.173 Ironically, Disney will https://www.shapeways.com/blog/archives/22679-by-3d-creative-commons- attribution-and-3d-printing.html [perma.cc/23VC-7PE6]. 170 See Shlomit Yanisky-Ravid & Kenneth S. Kwan, 3D Printing the Road Ahead: The Digitization of Products When Public Safety Meets Intel- lectual Property Rights—A New Model, 38 CARDOZO L. REV. 921, 951 (2017); see Swanson, supra note 17, at 511–14. 171 Yanisky-Ravid & Kwan, supra note 170, at 951–53. 172 See Corey Clarke, Disney Publishes Patent for Anti-Scanning Fila- ment 3D Printing Method, 3D PRINTING INDUSTRY (June 12, 2017, 2:48 PM), https://3dprintingindustry.com/news/disney-publishes-patent-anti-scan- ning-filament-3d-printing-method-115659 [perma.cc/SAH5-4E9Z]; Clare Scott, Disney Files Patent Application for “Anti-Scanning” Material that Would Make Figurines Harder to Scan and 3D Print, 3DPRINT.COM (June 9, 2017), https://3dprint.com/177483/disney-anti-scanning-patent [perma.cc/ 8D3A-26R3]. 173 Clarke, supra note 172. 2018.2_RANA_FINAL 690 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 use 3D printers to apply its anti-scanning reflective mate- rial.174 However, this patented technology is not yet available to the masses, and even if Disney’s technology becomes widely available, the technology imposes an additional burden on copyright owners. This burden, for some, may not be practical or economical to implement. Hasbro represents another solution. Hasbro has instead revised its licensing policy with respect to one of its most rec- ognizable brands, My Little Pony.175 Partnering with Shape- ways, a large ODP, Hasbro developed a profit-sharing agree- ment for the creation and sale of 3D printed My Little Pony figurines designed by select 3D artists.176 Hasbro has been commended for developing a way to retain its IP rights while embracing the 3D technology revolution.177 However, larger companies such as Disney and Hasbro have the resources and market power to remain competitive despite ODPs promulgating infringing scans of their works, whereas most copyright owners do not. The goal of copyright protection is to spur innovation and creativity, both on behalf of individuals and companies of all sizes.178 Rather than adopt solutions that are only practical for certain product lines or certain companies, this Note suggests a solution that would minimize copyright infringement through ODPs for the ma- jority of copyright owners and incentivize self-regulation by the intermediaries that support infringing activity. 174 Id. 175 See Duann, Hasbro & Shapeways Enable 3D Printing Fan Art with SuperFanArt, SHAPEWAYS MAGAZINE (July 21, 2014), https://www.shape- ways.com/blog/archives/16759-hasbro-shapeways-enable-3d-printing-fan- art-with-superfanart.html [perma.cc/ZYH7-HZLL]; Erin Carson, 3D Print- ing: Overcoming the Legal and Intellectual Property Issues, ZDNET (Aug. 1, 2014, 7:41 AM), http://www.zdnet.com/article/3d-printing-overcoming-the- legal-and-intellectual-property-issues [perma.cc/E8PH-T6EB]; Craig, supra note 7, at 342. 176 Id. 177 Id.; see Carson, supra note 175. 178 See INTERNET POLICY TASK FORCE, supra note 46, at 5–6. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 691 B. Proposed Solution For any solution to adequately address the existing and fu- ture concerns posed by 3D scanning and printing, it must em- brace 3D technology and open-source distribution while incen- tivizing the parties involved to monitor and address acts of copyright infringement. Acknowledging that a drastic change in copyright law is unrealistic, and likely not an immediately implementable solution, this Note instead proposes a solution rooted in the behavioral economics concept of nudging.179 Ra- ther than forcing ODPs to self-regulate or change their model, this solution offers a first step, while working within the DMCA, that should provide sufficient encouragement for ODPs to make such changes of their own accord. 1. How to Use the DMCA to Hold ODPs Liable: Notice and Takedown Considering the safety net that the DMCA provides ODPs, the best course of action for copyright owners to remedy in- fringement is to issue takedown notices pursuant to the DMCA requirements listed under § 512(c).180 If the ODPs fail to comply with the notice and takedown, they can then be held liable for either direct infringement of distribution or display rights, or secondarily liable through contributory or vicarious liability, as demonstrated above.181 Not all takedown notices must be complied with—the issuance of a notice does not nec- essarily mean that there is a viable copyright claim.182 How- ever, in the case of a 3D scanned CAD file of a copyrighted 179 Nudge theory is based on the premise that people choose the easiest option available and that paternalism while maintaining freedom of choice (i.e., “libertarian paternalism”) can be beneficial rather than coercive—es- pecially in the realm of policy creation. “A nudge steers the paternalized person, but always leaves open the option for the paternalized person to choose another course.” Thomas C. Leonard, Richard H. Thaler, Cass R. Sunstein, Nudge: Improving Decisions About Health, Wealth, and Happi- ness, CONST. POL. ECON., Aug. 22, 2008, at 356–60 (book review). 180 17 U.S.C. § 512(c) (2012). 181 See supra Subsections III.A–B. 182 Swanson, supra note 17, at 498. 2018.2_RANA_FINAL 692 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 work where the copyrighted aspect of the work was captured within the CAD file, this would almost always constitute a valid copyright claim and, as such, the ODPs would likely be held liable for non-compliance with the notice and takedown. That being said, issuing notice and takedowns imposes enormous costs on copyright owners who either have to locate, identify, and send notices themselves or pay others to do so.183 Rather than force each copyright owner to conduct this bur- densome process in isolation, owners should employ technol- ogy to combat the digital distribution of their works. 2. Create a Central Repository In order to address the distribution of infringing works through ODPs, the solution should involve the creation of a database of copyrighted CAD files that utilizes an algorithm to scour ODPs for infringing files. Copyright owners could thereby take advantage of the ease with which 3D scans can be created by submitting a CAD file of their work to a central repository designed to detect infringing activity online. With the data from the repository, the algorithm would search files distributed by ODPs, comparing the hosted CAD files with the files submitted by copyright owners. Since the content hosted on ODPs is public and easily searchable, there would be no need to seek permission from the platforms. If the algorithm detects sufficient similarity to a copyrighted work, an alert would be sent to the copyright owner, who could then evaluate the allegedly infringing file and determine whether to send a notice and takedown in accordance with the DMCA. Online notice and takedown services already exist for images, videos, text, and audio.184 This solution would extend protection to 3D technology. Though it would be ideal to house the central repository within the Copyright Office—where copyright owners could simply include a CAD file with their “required deposit” for 183 Craig, supra note 7, at 331. 184 See, e.g., Takedowns, DMCA, https://www.dmca.com/ Takedowns.aspx [perma.cc/926E-DLLF]. 2018.2_RANA_FINAL No. 2:659] 3D PRINTING AND COPYRIGHT INFRINGEMENT 693 copyright registration185—it is unlikely that a government en- tity would assume such responsibility. It is more likely that an independent third party or consortium would create this repository, charging copyright owners a nominal fee in ex- change for the “automated” notice and takedown service. Once the service is created, takedown notices would start to flood ODPs, providing platforms with the requisite “actual knowledge” to be held liable for the infringing content. Conse- quently, ODPs would have no choice but to adopt some solu- tion to address the infringing content distributed through their websites. This first step would relieve copyright owners from the burden of independently scanning and searching for infringing uses of their work online and, more importantly, would signal to infringers that this activity is illegal and un- der surveillance. The above process closely mirrors YouTube’s Content ID system, which allows copyright owners to submit audio and video recordings to its database.186 YouTube then compares every uploaded video to the files in its database to determine whether the video includes copyrighted material.187 If infring- ing material is found, YouTube will take direction from the copyright owner as to how to proceed, offering options includ- ing blocking the video, tracking viewership statistics, or gen- erating ad revenue to be shared with the uploader.188 The goal of the first step of this solution is to incentivize ODPs to take action to monitor and address infringing activ- ity. Step two of this solution would be driven by the ODPs themselves: They could adopt YouTube’s model of self-moni- toring, or, more realistically, implement a third-party solution to manage their distributed content. YouTube has been suc- cessful with its Content ID system largely because Google 185 See generally U.S. COPYRIGHT OFFICE, DEPOSIT REQUIREMENTS FOR REGISTRATION OF CLAIMS TO COPYRIGHT IN VISUAL ARTS MATERIAL (2015) https://www.copyright.gov/circs/circ40a.pdf [perma.cc/AN52-DEJT]. 186 See How To Manage Your Copyrights on YouTube: How Content ID Works, YOUTUBE (Sept. 28, 2010), https://support.google.com/youtube/an- swer/2797370?hl=en [perma.cc/Q7Z4-9KQZ]. 187 Id. 188 Id. 2018.2_RANA_FINAL 694 COLUMBIA BUSINESS LAW REVIEW [Vol. 2018 (YouTube’s parent company) is ideally positioned to self-mon- itor, especially considering its search functionality and sheer size. ODPs are not in the same position. Since the central re- pository would already have a database of copyrighted 3D scanned files, it can easily offer its scouring services to ODPs so that they can compare user-submitted files with copy- righted material before the files are posted to the ODP for dis- tribution. Serving as an intermediary between copyright own- ers and ODPs, the central repository would efficiently minimize infringing activity without overly burdening either party. V. CONCLUSION As the use and development of 3D technology continues to expand, minimizing copyright infringement becomes increas- ingly important. Under current law, individual copyright own- ers do not have a meaningful way to monitor infringing activ- ity and enforce their rights to their work. Rather than relying on the courts and Congress to craft a solution, the 3D printing community and the impacted copyright owners should work together to minimize infringing activity. These stakeholders should implement a flexible, fair, and feasible solution that benefits all parties involved. This Note proposes one such so- lution: incentivizing the private sector to implement a solution designed to minimize copyright infringement and fulfill the DMCA’s objective of facilitating e-commerce, while putting the responsibility on the stakeholders to self-regulate and fund the solution.