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Doug Johnson and I recently hired the brilliant Autumn Witt Boyd to ask some questions about trademark law in preparation for our upcoming VBS course.
We wanted to know things like:
- What’s legal when it comes to using quotes from movies or TV shows?
- Can you legally profit off of public domain graphics?
- Can you use names of characters in shows/games/other works when you’re selling products?
- …and a bit more.
You can either listen to the call or check out the transcript below:
Rachel: Okay, so we can just dig in. What I’d love to know is what’s the difference between copyrighted and trademarked works?
Autumn: Yeah, so copyright, and this is all just a giant precursor, this is all under US copyright and trademark law, I’m not an expert on international law. In the US, copyright protects what you would think of as creative work, so a book or a poem or a [inaudible 00:00:22] it can be music, anything you think of as [inaudible 00:00:27]. It also can protect things like blog posts, so it’s not just … It can’t protect some kind of things that might be more commercial or things that are involved in business.
What a trademark protects is things that identify the source product or service. Think about a company name or a logo, tagline or slogan. Then it can also protect things that are kind of strange like the [inaudible 00:00:52] the color red, on a lot of the [inaudible 00:00:54], like that particular thing, is trademarked and so is the color Tiffany blue, because when you see that color you associate that with the Tiffany company brand. Yeah, if you just think of kind of anything that identifies the source of the product, that can fall under trademark.
There are some things that are going to … They’re both copyrighted and trademarked, so if you think of like Mickey Mouse, when you think of that, you instantly think of the Disney company, so that could be a trademark, but it’s also kind of a creative drawn work, so it could be protected by copyright, also. There is a little bit of overlap.
Doug: Got you.
Rachel: Yeah, that makes sense. So quotes, are they usually trademarked?
Autumn: It depends. In the US, there’s what’s called common law trademark, and the distinction between copyright and trademark with the law is a little different here. Copyrights are automatically protecting from the moment you create them. You draw something interesting, it’s automatically created, it’s automatically protected the moment you draw it or put it in a computer file or record a song, as soon as it’s [inaudible 00:02:04] it’s protected. That is under the federal copyright law, you don’t have to do anything else to take advantage of that.
The way trademarks work, you do have some automatic protection, those are called common law trademark rights, just by using a trademark in association with your business. As soon as you start using your business name and you’re selling products under that name, you’re automatically going to have that common law protection, but it’s limited. It’s only going to protect you in association with the things you’re actually using it with. Let’s say you have been using the brand Serenity, and you’re selling spa products. You automatically have common law protection for the name Serenity, but somebody else could open up a Serenity donut shop, and you can’t stop them from doing it.
Doug: Got you.
Autumn: It’s also limited geographically, so if you’re only selling your Serenity products in the state of [inaudible 00:02:57] where I am, can’t stop someone somebody [inaudible 00:02:59] selling Serenity spa products, but if you’re selling them in an online shop nationwide, then you would have that nationwide protection.
Okay, so to answer your question then, with that as a little background, movie quotes or TV shows or anything else, you can have that common law trademark protection, but then they also are often registered with US patent and trademark office. What that does is that gives you … It takes your common law protection up a notch, so you get … That’s automatically going to be a nationwide protection, even if you’re only using it in one or two states, it’s going to be nation … It’s going to protect the owner nationwide from somebody else using it. It’s a good idea to check and see if [inaudible 00:03:41] a patent trade or a quote with the US patent and trademark office, and they have a really easy, free search engine on their website, it’s just …
Doug: What’s that website, if you don’t mind me asking.
Autumn: I don’t, it’s USPTO.gov\ … Or /trademark, and then yeah, and then you can click on search trademark database. The way it’s set up, you can’t get directly into the database without going through a couple clicks, it’s kind of annoying. The search engine is called the trademark electronic search system, it’s TESS, and there’s a link right there.
Doug: Okay, excellent.
Autumn: Yeah, so [inaudible 00:04:18] right to it. The bottom line is to search that, but you should also know that somebody could have common law trademark rights on that quote or that phrase that they’re just not registered. Searching that database is a good start, it’s not going to be 100%, it’s not going to capture everything. It’s a little difficult to search. Another good idea is just do a Google search and if you see that somebody who owns the rights to a TV show is already selling T-shirts that have that quote on it, that means you can’t then … They are exercising their common law right for that quote or phrase, does that make …
Doug: Okay, so that’s … No, that’s very good, got you.
Autumn: The bottom line is always going to be the creator of the show or a game or whatever the source is of the quote is going to be the owner, just kind of assume that. I always advise that the best idea is to ask for permission and a lot of times you will get it, and a lot of times they don’t even charge for it. If it’s a big commercial enterprise like a movie, they’re probably going to be a little more protective about it, but you never know. It’s always worth asking.
If you don’t have permission, just understand that you are technically probably infringing their trademark right. Then you’ve got to just kind of make a decision at that point, are you willing to take that risk, are you just selling it on … At a garage sale in your neighborhood? Probably no chance anybody’s ever going to find out about it, if you’re selling it on the internet, there’s a much higher chance that the owner is going to come after you and try to make you stop.
Rachel: Even if they don’t have the … Even if they haven’t registered for that trademark first?
Autumn: Even if they haven’t registered it, because they’re going to have a common law right. The other convention is in the US, the trademark system is what’s called a race system, so like you’re running a race. The first person to use a trademark is the winner, they get all the rights, but only in connection with whatever business services they’re actually using. Like our Serenity spa example. The first person to use Serenity in connection with spa products is the one who gets the rights, even if another brand comes up later, and even if somebody registers it later.
Doug: What are the caveats of that, quick question, let’s say since we’re using the term Serenity, there’s a TV show called Firefly and a movie called Serenity, and one of their quotes is, on the movie is, You can’t take the sky from me. That’s their slogan, essentially. Now, hypothetically, I already make shirts with that. I don’t sell those, but let’s say they had never come out with the shirt thing You can’t take the sky from me, they’ve never sold any merchandise saying You can’t take the sky from me, and that’s not even … Let’s say that’s not even a quote that’s on any box art or anything like that, it’s just a quote that’s very well known throughout the series.
Autumn: [inaudible 00:07:12], yeah.
Doug: Let’s say you create a shirt, You can’t take the sky from me. You have nothing that essentially infringes on the show, you don’t have the ship or the name of the crew or anything like that, and then you sell the shirt, you sell thousands of them and all of a sudden, the people at Serenity and Firefly go, Oh, we’re going to make a shirt, and then they go, Oh, we made a shirt, now you can’t do that. Does that … Do they get the common law, or do we, since we technically made the merchandise first?
Autumn: Yeah, you would actually own the rights to that if you did it first.
Doug: Oh, neat, okay.
Autumn: That’s what’s a little bit crazy about our system in the United States.
Doug: In some ways, that could be really beneficial. When they come after you, you can be like, Oh, wait a minute, no, that’s not how it works, guys.
Autumn: Yeah, and the other caveat I’ll add with that is if it’s not registered with the US [inaudible 00:08:04] trademark office, you’re limited to where you can sue someone. Let’s say in your example, the creators of that show were coming after you and you decide you’re actually going to sue them for infringing your rights, if all you’ve got are the common law rights, you’re limited to state court, so you can’t sue them in federal court. The difference there is usually in federal court, if you’ve got a federally registered trademark, you can sue in the federal court where you live, you don’t have to actually go to [inaudible 00:08:33].
Doug: The reason I ask is because for example, if I had a shirt and I was selling it, let’s say that whole situation happened, and then they came after me with a cease and desist, but I have proof that they’ve never had that type of product before, I wouldn’t want … I personally, I’m not the guy that would want to sue somebody for that, I wouldn’t want to sue them.
Autumn: You probably wouldn’t want to sue, but you would want to at least be able to respond to the cease and desist and say you have rights, and that’s exactly right.
Doug: Okay, no that’s great, that’s actually really good in our favor, personally.
Autumn: Yeah, exactly.
Doug: We’re a little … A smaller person, a small enterprise, that’s very leaned in our favor.
Autumn: Yeah, and what I will caution you about is that when you’re selling that T-shirt, you need to be really careful about how you’re promoting it, that you’re not infringing the trademark that the other company’s going to have in the [inaudible 00:09:25] name or the [inaudible 00:09:26].
Doug: Yeah, and actually, that … I have several Facebook pages that I promote products on. Now, the products that I promote on those pages are [inaudible 00:09:37] quotes, TV shows, I don’t mention the TV shows, I don’t mention the actors, I don’t mention anything along those lines. I have no trademark infringing graphics or logos on my shirts, but my pages are named after the shows, but they’re not actual … For example, the TV show Supernatural, called Supernatural [Memes 00:09:55], and the page is for memes for Supernatural. When I promote those products, I put them on my Supernatural Memes page, everybody that’s on the page understands that I’m not actually Supernatural, they know I’m a fan-made page.
When it comes to that, and I have a very large Facebook [inaudible 00:10:14] and that has like 250,000 fans, which is not [inaudible 00:10:19] but all of my products are not … I always make sure all … Some of my products are … They’re geared to people, if you’re a fan of the show or a fan of the game, you see this product, you’re going to go Oh, I get that reference. I just want to make sure … Especially for my sake now, I just want to make sure that I’m not on any … I never had any issues, I mean, I’ve sold a lot of products and I’ve never had anybody contact me, knock on wood.
Autumn: Yeah, and you had a question on [inaudible 00:10:48] about disclaimers, and that can be a great way … You want to be careful about how you use the show name and a disclaimer can also help there. If you ever were worried that you were kind of getting close to the line, it’s not a bad … Or you can even call it Supernatural Fan Memes, or something, so there’s just really clear you’re not associated with the show.
Doug: Yeah, no, that’s actually a good point. Rachel [inaudible 00:11:13] off the bat in the course said When you create it, you’re creating a page, just the page description needs to mention you’re not affiliated with Supernatural, blah, blah, blah. It’s good to know.
Rachel: Yeah, that’d be great. I’m curious just to find out from what we were talking about right before that with the You can’t take the sky from me, example, if someone wanted, could they actually then go trademark that phrase on shirts? Even if they weren’t affiliated with the show, like [inaudible 00:11:40]?
Autumn: Definitely. You could register a trademark on it, yeah.
Doug: Rachel , [inaudible 00:11:46].
Rachel: Yeah, right?
Doug: Take it to the big dog.
Rachel: That’s crazy, I mean, and people could just listen to TV shows and write down the funniest quotes and go to town. That’s crazy.
Autumn: Yeah. Now, [inaudible 00:11:59] you have to be careful to make sure that they’re not already using it with whatever products you’re trying to register.
Autumn: If you … [inaudible 00:12:07] recently like, Taylor Swift has trademarked a lot of the catchy phrases from her songs, and I think that’s why she did it, so that she could sell merch with it and keep anybody else from doing it. Some of them are really … They’re phrases that you know, same thing. If you’re a fan, you would immediately recognize them, but if you’re not, it just sounds like a normal kind of sentence.
Rachel: Yeah, that totally makes sense. Okay, and then so same thing with the names of characters? Would that be trademarked common law?
Autumn: Same thing. You’re always going to want to search that US [inaudible 00:12:41] database and do a Google search, just see if anybody’s using it that way. If they’re not using it that way, then you’re free to use that. Something like Tinkerbell, and as I say that, I don’t actually know if that’s a registered trademark, but …
Rachel: Something of that caliber, I get that. Ronald McDonald, Tinkerbell, Peter Pan, Mickey Mouse, you know those are all … I just imagine anything named by Disney I don’t ever touch.
Autumn: Right, but like the name Elsa, which is in Frozen. That’s a pretty common name, so you would just want to check and see, have they trademarked it in connection with certain goods and services, or using it in that way? If it’s just the name of a character then that’s generally free to use.
Rachel: Now, here’s a quick question, other than that USPTO that you just shared with us, do you have any kind of references … I’ve got to like Trademarkia.com, kinda checked that out to see, but are there any other sites you’d recommend or any other areas you’d recommend for us to be able to find that kind of information?
Autumn: No, I mean, the big one I use is that USPTO website. It just … I don’t know Trademarkia [inaudible 00:13:49] trademark registration, it’s just … It’s [inaudible 00:13:53] register a trademark [inaudible 00:13:54] for that. I don’t usually worry about those [inaudible 00:13:57] I’ve worked with a really big band that sell internationally [inaudible 00:14:01]. I just usually do a Google search and I’ll go to the second or third or fourth page of a Google search to see if anybody’s selling things. Like I said, that’s not always 100% surefire approach, because there still could be somebody selling it in a hobby shop that they’re not online, and they would have priority over you. I feel like in today’s market, the chance that that guy in the hobby shop is going to come after you is very, very [inaudible 00:14:25].
Doug: Yeah, because I’ve got, thankfully, and the nice thing, and I don’t like to put anything on Don’s plate or Tom’s plate or [inaudible 00:14:35] but there’s been a few shirts that I’ve launched that I got dinged for, but it came out of left field, because I personally didn’t even realize that was infringing anything. There was this one World of Warcraft shirt that I made and I was using the icons, the icons were just very subtle references to the game’s interface and they didn’t have anything on that, but Blizzard shut it down within a day of, like Yeah, that’s our property. There’s a few things that are just really interesting when it comes to, when you get these, Oh, hey, don’t do that. You’re like, Why?
Autumn: The visual that you [inaudible 00:15:12] they were actually using?
Doug: It was visual from their game, like if you were in the game, it was like an icon from the game, but it wasn’t like a logo or a brand or anything like that, it was just a … It was just a … It was [inaudible 00:15:22], it was essentially the equivalent of the paperclip button.
Autumn: Right, and so the trick with visual things is that it’s really hard to search for those.
Doug: Yeah, that’s …
Autumn: You can’t just type words into a search box, that’s a lot more cut and dry. I would definitely, with anything visual, just recommend that you don’t use it if it’s a … Like the Mickey Mouse example, if it’s in a movie or in a game that either get permission or just know that people can come after you.
Doug: Got you.
Rachel: Yeah, and then for copyrighting, there’s … You have to be like transformative work, is that’s what it called? To make sure that you don’t have any problems.
Autumn: I’ll go into just kind of how that works. Fair use is a … It’s only for copyright, it’s not for trademark, I just want to say that. The trademark law works a little bit differently. We’re talking about using visual things like the icons that you’re talking about or a longer chunk of text would be a [inaudible 00:16:18] copyright. Short phrases and anything visual like a cartoon character and things like that, [inaudible 00:16:25] copyright.
The fair use is you use something that you don’t own and you get sued, you can use it as a defense in your lawsuit. It doesn’t really give you permission, it’s just a way that you defend yourself if and when that … Know that you will be sued, and you will still have to hire a lawyer and pay money and go through the court process, and it’s a really gray area. What happens if you raise this defense in a lawsuit is the court will look at four different factors about your use compared to the original artwork. Let’s just say it’s like an icon, like you were talking about.
They’ll look at how you used it, whether you are making a profit, that’s the first element that they’ll weigh. Then they’ll look at what kind of work did you copy, so like the icon is a very creative work, that usually is a bad factor for you as the defendant. If it’s something more factual, like let’s say printed a phone directory or something, they will hold back. Those don’t get as much copyright protection. Creative is going to have more protection. The third factor is how much of it did you take, the whole thing? Did you just take a little piece of it?
Doug: Did you take Mickey Mouse’s ears or his entire body?
Autumn: Yeah, or like where if you copied a part of it, like how much of the book did you take?
Doug: Okay, got you.
Autumn: Was it a paragraph or was it a whole draft? The fourth element is did your copy have any impact on the market for the original work? Are you selling a T-shirt with Mickey Mouse and Disney is also selling a T-shirt with Mickey Mouse? That’s obviously going to have an effect on the market. If you’re doing something totally different that’s in a market they’re not in, then that’s going to have a different effect.
Autumn: The court kind of puts all of this stuff into a pot and mixes it around to kind of decide if they think it’s fair or not. What you are asking about, the transformative, Rachel , there is a recent supreme court decision that basically said if use is transformative and new and different from the original artwork, then they’re more likely to find it fair use. If you take a page from a book and [inaudible 00:18:28] artwork that’s a sculpture, that’s totally different. If you’re just taking a photograph and using it as a photograph, that’s not transformative, even if you were to change it [inaudible 00:18:39].
Doug: Okay, well if you could touch a little bit on … I’m not a lawyer at all, that’s why we’re talking to you. Parody law, something like that?
Autumn: Yeah, so there are … In the copyright act, there are a couple things that are listed as examples of fair use, and parody is one of them. It isn’t really … Not always. Usually going to be found as fair use, but it really has to be making a commentary on whatever the original thing was. A great example is the book Gone with the Wind, there is an author who created a book called The Wind Done Gone, which is basically the same story told from a slave’s perspective, so [inaudible 00:19:15].
Doug: That’s funny.
Autumn: Yeah, and she got sued, the author got sued. This is a famous copyright case, and I think they did find that that was a parody or a commentary because it was commenting on the original work and it wasn’t just taking that story and basically recycling it different.
Doug: Got you.
Autumn: You know Weird Al Yankovic, all his songs.
Doug: Oh, I love him. Somebody made a comment about Weird Al, You know you’ve made it big if Weird Al makes a parody out of your song. Really quick, this is a shirt example, this isn’t one I’ve done, but this is actually a Supernatural shirt floating around that’s gotten a lot of sales. I just shared it in Skype, if it comes up for you guys. It’s Supernatural Bros, obviously on Supernatural as well as Super Mario Brothers. That look there, that artwork is very similar to the Super Mario Brothers 3 video game cover, and I’m sharing that right here. In something like that, how would that be interpreted? That’s like Nintendo and Supernatural, that’s like two big dogs that you don’t want to mess with, but at the same time, I see this shirt all the time, it’s never gotten shut down, it’s never gotten taken down, and I’m sure they’ve sold thousands of these shirts.
Autumn: Is this your original design?
Doug: I wish it was mine.
Autumn: There’s a couple of layers here. The first would be the copyright issue. Looking at the Super Mario Brothers 3 cover that you just sent, I think this is different enough that it’s probably not going to be considered copyright infringement, because it’s original artwork, if you look at the elements side by side, they’re holding their hands the same way, but it’s not like they copied the Mario character or any of the elements of his costume. The trademark question would be … This is always the question with Trademark infringement, so just always keep this in mind, is would a potential consumer be confused about whether this T-shirt is associated with either Supernatural or Super Mario Brothers? Looking at it, I think it’s pretty clear that it’s [inaudible 00:21:17], even though the font is similar, it’s different words, the two little [inaudible 00:21:23] are pretty different. The question would be does Supernatural use a font like this?
Doug: No, not at all. This isn’t something I’d be doing personally, it’s just something that I’ve seen that shirt enough where I’m like, I wonder how they’re getting away with that.
Autumn: It’s a good [inaudible 00:21:37]. Anybody can sue anybody for anything, and so that’s what I always say, Just because you’re on the right side of the law doesn’t mean you’re not going to get sued. You still could be sued any time you’re kind of piggybacking a popular phenomenon. It’s a risk you take, you just kind of have to figure out for your business. If the shirt’s a huge seller, maybe it’s worth taking that risk.
Doug: Okay, no, that’s good to know, because there’s many ideas that I’ve thought of, never implemented because I was like, Ah, no, that’s too close to … I don’t want to take the risk. The platforms that [inaudible 00:22:10] viral-style on Gearbubble, they have a legal department taking care of all that stuff. Somebody does something wrong, the bigwigs contact them and they don’t even hesitate, they’re like, I don’t want to get sued, so they just shut down the campaign. The issue with that is that if you do something on accident, there’s been a couple shirts where they were selling really, really well, and I spent 400, 500 dollars on advertising, and then they get shut down and now I’m out 400, 500 dollars. It’s nice to know that that kind of stuff is happening.
Autumn: Yeah, and let me tell you something, just FYI for that. The shutdown procedure is actually part of copyright law, and it’s the law called the Digital Millennium Copyright Act. You may hear about people talking about DMCA takedowns.
Doug: I see that on Google all the time.
Autumn: Yeah. That’s a procedure that’s in the law basically so that a platform like you were talking about or like Facebook or places where people post stuff that Facebook doesn’t own it, but you, the user, is posting it. It basically gives them protection from being sued for copyright infringement. If somebody reports it, they take it down.
Doug: Got you.
Autumn: But, the caveat to that is, and this is good for you to know if this happens to you again, you have the chance, as the user, to file what’s called a counter notice. If Warner Bros or whoever files a takedown notice for one of your T-shirt platform sellers, and they take it down, if you file a counter notice, basically saying, Hey, I don’t think I’m infringing, or Hey, this is fair use. Then they will put it back up unless the company actually sues. They have either five or ten days to actually file the lawsuit in federal court against you.
Doug: Got you.
Autumn: If they decide you’re a big enough threat, maybe they would sue you. A lot of times, you’re not going to sue somebody over $500, it’s just not worth your time and attorney fees. I would suggest if you think you’re on the right side of the law, file that counter notice. If you really did something wrong, you wouldn’t want to do that.
Doug: No, no, well, it’s just little things like this that you really need to know, because …
Autumn: I think it would help you [inaudible 00:24:16] if you have concrete examples.
Rachel: Yeah, exactly.
Doug: Here’s a perfect concrete example. I’m getting the shirt right now, give me a … It was a Star Trek related shirt, I didn’t have any Star Trek related items on it, the only thing that I did have was the emblem of Star Trek, which is just a shape.
Rachel: One thing I’m actually … Now that you’re bringing this up, I’m curious, because I saw people were doing like Minions football teams, and I remember [inaudible 00:24:44] and I looking at it and we were thinking This is so not legal, it was basically things that look like minions and then they were wearing football colors. I had read somewhere … Is this even true that if you make X number of changes to something, then it’s no longer trademarked? Like, seven changes or something and you can use it?
Autumn: That’s popular, but totally incorrect.
Autumn: That [inaudible 00:25:10] talking about, that they think if they change it enough that it’s not going to be infringing, but actually the way copyright law works, if you create something that you also have the right to make changes to it, so … No matter how many changes somebody makes to it, if they’re offering your original work then they are still violating your right.
Rachel: Fair enough.
Autumn: [inaudible 00:25:31] what are called derivative works, which are works based on the original work.
Autumn: If it is transformative, it could be fair use. If you’re changing it into something new, but it’s not like you take a picture and you change a couple things about it and you’re still using it as a picture.
Doug: Okay. Here’s the shirt, the whole thing, shotgun and [inaudible 00:25:54]. It’s a quote from an episode of Star Trek: The Next Generation. That quote has literally never been used. I like Star Trek and I ended up going through the whole seven seasons all over again and then I saw that episode and I’m like Oh man, I bet people that watch this show will totally get this reference. I put the shirt up on Viral Style.
I ended up selling I want to say like 300 to 500 of these things before it got shut down. I thankfully got paid, but I ended up getting it taken down and the email that I received from Viral Style would just say, Writing on behalf of CBS studios, fictional productions including logos, designs, characters, names, uniforms, fictional races, props and other elements appear therein, family of Star Trek marks includes, among others, Star Trek, live long and prosper, Spock, [inaudible 00:26:44] star fleet insignia or [inaudible 00:26:47]. That thing in the very center, the A, that’s the shape, it’s just the shape, it doesn’t have the details inside of it that actually made the Star Trek emblem. If I made this shirt, instead of that shape, made an A in that shape, without it actually being that shape, would that still be … Would that be within my realm of fair rights?
Autumn: That’s probably still going to be infringing if somebody would look at that shape and associate it with Star Trek.
Doug: Got you. If I just …
Autumn: Yeah, they registered that shape, so even if you’re kind of changing that shape a little bit, if it’s still recognizable as that shape, you’re basically creating on their trademark.
Doug: No, that makes perfect sense. If I just remove that shape and add the A the same as the other A on the end …
Autumn: Yeah. Then …
Doug: That’s okay?
Autumn: Yeah, I think if they’ve not trademarked that phrase, then you’re … We’re good. I guess the other thing would be are they using that style font, are those fonts that they typically use?
Doug: It’s a similar font, it’s just kind of a … I don’t really know exactly how to explain it, but it’s … It looks similar, but it’s not their font. That A is not their A, but it’s just like a font that people would recognize it.
Autumn: Yeah. You always just kind of want to look at, [inaudible 00:28:06] worst case scenario, if you got sued, a judge is not going to look at each element individually, but kind of overall, if people think that that shirt was from Star Trek. Star Trek or Star Wars? Star Trek.
Doug: Star Trek.
Autumn: I think you’re probably not going to get a takedown notice if you take out that shape. The thing is if they are not really interested in doing these intricate analyses, they just want to look and see, okay, do they have trademark rights to that thing in your product? All right, we’re going to take it down.
Doug: Got you, okay. That makes sense.
Rachel: That brings up an interesting point about fonts. They would be more copyrighted than trademarked, right?
Autumn: Yeah, fonts is copyrighted. You can have a trademark issue if you’re using a font that’s really associated with a brand, and that’s what’s called … It’s actually called trade [inaudible 00:28:51] it’s kind of like a subcategory of trademark, and it can go to packaging or kind of the overall feel of a brand, and that’s like where Star Trek and the second you think of it you think Oh, that’s Star Trek, that’s their font. It can be, if you’re using the same font in the same way that they use it and confuse a customer, it could still be trademark infringement. It’s a really tricky area, sorry to say there are not a lot of [inaudible 00:29:15] to follow. When you’re in this kind of [inaudible 00:29:19] merchandise area.
Rachel: Understandable. Then, what about I know that you only can really give guidelines for people who live in the United States. I’m curious if you have any information about if people move outside, what happens if they violate trademark. Maybe you can’t answer for every country, but let’s say like, UK, what would happen for them?
Doug: They violated a trademark of somebody in the US? Okay, good.
Autumn: A UK seller and a US trademark? Yeah, if they’re selling things in the US, they [inaudible 00:29:50] in the US, even though they are located in the UK. If they’re only selling things in the UK, then the US company would have to go to the UK to sue them. Does that make sense? A big company might be willing to do that, but a small company probably won’t, because it’s very … The US is [inaudible 00:30:07] but it’s unusual in that [inaudible 00:30:09] system in a lot of other countries like China. They have the opposite, the first person to register a trademark owns it, even if they haven’t used it.
You have a lot of problems in China with companies registering marks that are famous in the US, but maybe the US company hasn’t used in China, and then the US owner of that mark is just kind of screwed, they have to go to China and try to fight it. The Chinese company will have ownership of that trademark in China. I don’t [inaudible 00:30:39] but like let’s say that Coke hasn’t [inaudible 00:30:42] anything in China yet, and some Chinese company registers the Coke trademark. It’s going to be different in different countries, whether you’re even violating a US trademark or [inaudible 00:30:54].
Rachel: I notice there’s a lot of sellers from Vietnam who seem to care very little. They care the least, it seems like, around trademark things. Does it have to be reciprocal agreements between the countries to be able to even sue people from a country?
Autumn: Yeah, there is an international treaty on trademark, but it doesn’t really work where you can sue reciprocal. If you see Vietnamese companies are sending things to the US, then you can sue them in the US, but then good luck getting them to actually show up.
Rachel: Yeah, and what’s the penalty if they don’t show up? Is there a penalty?
Autumn: Yeah, you can get what’s called the defendant doesn’t show up, and that’s just basically where you, as the plaintiff bringing the lawsuit, show the court that you have a valid claim. You have to present evidence showing you really do own the trademark and they really did infringe it, but it’s a pretty low bar. Then you get a judgement, but then like any other judgement, then it’s your job to try and collect on it. [inaudible 00:31:51] assets in the US or figure out a way to enforce that judgement in Vietnam would probably be pretty difficult.
Rachel: That’s very interesting.
Autumn: That’s why the international [inaudible 00:32:03] a big problem.
Rachel: Yeah, I could totally see that. Doug, if you have other questions, feel free, because we pretty much went through a lot of these that we had written down.
Doug: No, I mean, I have a lot of … The questions I have have pretty much been answered. My biggest concern was just let’s say they’re a fan of the Big Bang Theory, and they wanted to have a Big Bang Theory fanpage, that was my concern, I didn’t want them to go, Oh, I’ve done everything right, but I still got shut down because they had a Big Bang Theory fanpage on Facebook. Understanding as long as you have disclaimers saying Hey, we’re not literally trying to rip them off.
Rachel: Yeah, and actually, speaking of Big Bang Theory. There’s a big one that goes around, it’s like soft kitty, soft kitty, little ball of fur, something, it’s one of the quotes that is in the show. Then there’s people that do derivative, like soft puggy, soft puggy, like pug dogs and stuff. It’s similar, but it’s different use. It’s not exactly the same. How would that fall within legality terms?
Autumn: I’d say that the Big Bang Theory have registered that soft kitty whatever, that phrase, as a trademark. You changed a couple words, but it’s still [inaudible 00:33:14] heard it, they would say Oh, that’s a play on Big Bang Theory. That potentially could still be a trademark infringement, because it’s making you think of that brand or that company. That’s definitely a gray area, to be in the clear.
There is … When we talk about fair use [inaudible 00:33:31] transformative, that is a copyright concept, but in trademark law, there is a kind of fair use that is different. That is where you can use a trademark to refer to that company good if you’re just basically using it as a proper noun. Let’s say you sell replacement auto parts for Toyota cars. You can use the Toyota trademark to say This works with Toyota cars, and that’s not infringement because you’re not trying to say that your part is associated with Toyota cars, you’re just trying to say they fit in Toyota cars. That make sense?
Doug: No, that makes perfect sense.
Autumn: [inaudible 00:34:09] really relevant to your business, but I just wanted to kind of say …
Doug: No, no, that … Examples are great.
Autumn: About fair use and trademark, that’s kind of how it works there different than how much you change it. There’s not really a fair use concept in trademark law where you can change a logo a little bit and then it’s fair use. The whole thing with trademark is are you confusing consumers. With copyright, it really is did you copy it? It doesn’t matter if anybody recognizes that it came from a particular original use, the courts don’t really care. If you copied it, you’re guilty of copyright infringement. The trademark infringement analysis is a lot more complicated.
Autumn: I think it’s kind of … I don’t know if you’re, if this is relevant to what you’re working on, but I see this a lot with Etsy sellers who will buy fabric that has … Licensed fabric that has either university logos or characters or that kind of thing. The question is can they use that fabric to make something and advertise it as this is Frozen fabric, or whatever. For that, there’s two issues. With the copyright, there’s something called the first sale doctrine, you may have heard of this, which is the copyright only protects the first sale of an item.
That fabric, the person that manufactured the fabric has the copyright to the design can only control the first sale of it. Once I own the fabric, I can do whatever I want with it, they can’t stop me. If I’m selling things online using that fabric and I have in my title Frozen nightgown then that could be a trademark infringement of the Frozen trademark. Because it’s confusing Well, did Disney create that nightgown? Are they associated with that? Are they an official licensee? That’s just kind of a tricky area.
Rachel: Yeah, I guess it would be then … If I were to do that, say Elsa nightgown and I check the trademark search and there’s nothing with nightgowns for Elsa, would that be … That be more legal?
Autumn: I think it’s a little tricky, with somebody seeing that fabric, it could still be trademark infringement if somebody sees the fabric and thinks Oh, are they associated with Disney? That’s why a lot of people … You’ll see on the selvage of the … I don’t know if you guys sew at all, but … The selvage is like the edge of the fabric, there’ll be a little white part if the fabric is printed, and it has writing on it, usually it says who designed the fabric or where it came from, the brand name. Often it will say like not for resale or may not be used commercially, those kind of things. That’s why that’s there, it could be trademark infringement, even though you bought it from the store and you own the fabric.
Rachel: That actually makes me think of something that happened to me at Etsy, I’m curious if this was okay. I had a pillowcase and it had an elf, like elf [inaudible 00:37:07] on it, and then it was like a, people could personalize it with the name of a boy or something, and one of the tags we had was elf on the shelf and then months later, bad, yeah, we can’t do that.
Autumn: That’s really aggressive, I’ll tell you, I don’t know who thought that was [inaudible 00:37:21].
Rachel: No, they had to take it down, they wrote and they complained.
Autumn: I’m not surprised. Yeah, they’ve really gone through that, the elf … The people that own Elf on the Shelf are really aggressive. I’ve had other people come to me with that same issue. Yeah, using that as a tag, it is a trademarked name, Elf on the Shelf is a registered trademark, they can definitely come after you. I’m sure … Did the feet look like the elf on the shelf, or was it just that you had that tag?
Rachel: It was just that it was a tag. It was a clipart image, it had nothing to do with Elf on the Shelf, really.
Autumn: Yeah, if you’re using a trademarked name in the description or your title, that’s always going to [inaudible 00:37:56].
Rachel: Okay, good to know.
Doug: It’s about to get to … It’s a Supernatural reference, just because I get a lot of these ads that pop up. I see there’s this page called Jared Padalecki Fans and Jen Ackles Fans, those are the guys that star on Supernatural. I see them use images of the actor, Photoshopped graphic on the actual shirt. They do this with all sorts of stuff, I’m sure Rachel has seen this, too. It’s the most frustrating damn thing, because it’s literally making people think … People are going Oh, Jared, I love this shirt, thanks, it’s like they think that this their … For some reason, it doesn’t get shut down, these guys don’t get shut down, and it’s one of the most frustrating damn things.
Autumn: They’re selling shirts with the actor’s face on them?
Doug: No, no, no, they’re … Literally like, their Facebook advertisement is they’re saying something about the show, maybe it’s a quote, and that quote will be on a shirt, but it’ll be a picture of that actor wearing the shirt, and they’ve Photoshopped the design on that shirt. Then they’ll say something like, Thanks for the support, Jared! Like Thanks for the support, actor name, get yours here.
Autumn: That is very illegal.
Doug: Yeah, that’s … People are doing that all over the place on Facebook, and it’s one of the most frustrating dang things I’ve ever seen.
Autumn: That is … That falls into what’s called the right of publicity. That is like an actor has the right to the use of his own face in connection with goods or services. You can’t just take a picture of an actor and then use it to sell your stuff without their permission, because it basically implies that they’re endorsing your stuff, and you can’t do that unless you actually have their endorsement [inaudible 00:39:51]. I think probably [inaudible 00:39:54] is those actors [inaudible 00:39:56] their right of publicity and because it’s not some big company. Supernatural isn’t going to be … They don’t care, it’s the actors’ rights. That would be [inaudible 00:40:09] they don’t have [inaudible 00:40:10] people to go on the web, trying to find things.
Doug: No, I got you. It’s because shirts, Jared Padalecki does this … He battled depression and he made this shirt on … I can’t remember the platform, but he made this shirt and he donated all proceeds to depression awareness charities. These people are ripping his thing off and they’re pocketing …
Autumn: They put the picture of him in his depression shirt, they’re Photoshopping it with their shirt?
Doug: Yeah, with their shirt.
Autumn: That’s so dirty.
Doug: It really is, I just see this …
Autumn: Report it as a competitor.
Doug: What’s that?
Autumn: As a competitor, you obviously could report it.
Doug: Not even as a competitor, it’s like you said, it’s just downright dirty, man. I would never … Anyway, sorry.
Autumn: There are certain celebrities that really take this seriously, like Elvis, the estate of Elvis Presley really goes after [inaudible 00:41:08] his face. I think that Michael Jackson … There are some celebrities that take it very seriously.
Rachel: That’s interesting, too. I didn’t know the estates could … I guess it makes sense. Is there a point where a face goes into public domain?
Autumn: Yeah, [inaudible 00:41:25] …
Doug: That’s a great question.
Autumn: The right of public [inaudible 00:41:30] state law right, so it is different in every state. California and Tennessee have really strong rights of publicity, but New York doesn’t. It just depends on where the celebrity died, where their estate is. There’s a case in New York where somebody was trying to shut down … I can’t remember what celebrity it was, but the estate brought a lawsuit and it was dismissed because the court said, In New York, you don’t have the right to publicity after you’re dead. It’s state by state. If you wanted to use a dead famous person’s face, you’d want to do [inaudible 00:42:05] what state law would govern that use. Some of them are not protected, but others are.
Rachel: What happens then if you’re doing something online? Does it matter, let’s say, where you are when you list the product, or can you only …
Autumn: Yeah, it matters where their estate lives, that’s going to be the state law that … No matter where you’re selling it.
Rachel: Where the estate lives, okay. Then, the estate lives is where that person died, or where the estate currently is?
Autumn: I would say, that makes [inaudible 00:42:40], I would have to look at it.
Autumn: [inaudible 00:42:43]
Rachel: Fair enough, and general public domain stuff is good to sell, right? Things that are in the public domain databases?
Autumn: There is a date, and I can’t remember the date, I think it’s like [inaudible 00:42:55]. Anything created prior to that is definitely in the public domain, and then there’s like the next 50-75 years, it’s kind of … Something may be in the public domain, some things may not, because during that period you could renew your copyright, but not everybody did, so it’s kind of case by case, you have to figure out whether things are in the public domain. Anything created after 1958 is definitely not in the public domain, unless they’ve given up their copyright, which you can do, but it’s hard to figure out.
Doug: Got you.
Rachel: Speaking of giving up stuff, so if let’s say someone had a trademark for a certain quote and then the trademark died, and then someone went and made a T-shirt and then they … They were the first ones to use it after the trademark died, but the other person wanted to go and … I know this is like, might not ever happen, but now I’m just nerding out.
Autumn: It happens more than you would think.
Rachel: Really? What happens in that case then?
Autumn: The trademark has expired, they lose their federal trademark rights, but they would still have common law rights or if they … Let’s say it’s a famous phrase, like a slogan, and the business, even though the trademark expired, they were still using it in their business, they would keep those common law trademark rights for whatever goods and services they’re actually using it with in whatever geographic territory they’re actually using it in. If they’re actually using it, [inaudible 00:44:25] the whole time, but they don’t … They lose that federal trademark registration, but they still own all the common law rights. They’re still the priority trademark owner. If it’s a company that they stop using it, take a break, or they rebranded or whatever, and that trademark expires, then yeah, it’s kind of a free-for-all. The next first person to use it would have those rights, moving forward.
Rachel: They could go and make a trademark?
Autumn: Yeah, and then if company A comes back and they want to start using it again, then they would be kind of screwed because somebody else had come in in the meantime and started using it.
Autumn: In the United States, it’s kind of use it or lose it. If you stop using your trademark and it expires, you will lose those rights. They only want to … You’re kind of giving a business a monopoly on using that phrase or that logo or whatever. You don’t want somebody to have a monopoly on something they’re not even using.
Doug: This is really cool. This is really good information.
Autumn: Lots of things, yeah.
Rachel: Did you have another question, Doug? I wasn’t sure if you …
Doug: I kind of did. There’s this fantasy logo, it’s Dungeons and Dragons related, it’s for this thing called Pathfinder Society, and my buddies were like, Hey, you should put that logo on a shirt, and I was like, Hey, no I can’t do that, that’s actually a published logo. They’re like, No, it’s on public domain, and I’m like, Are you sure about that? They’re like, these guys are like freaking Dungeons and Dragons connoisseurs, they know everything about D&D, so they were like, Yeah, it’s definitely in public domain. I’m like, well, I go on the website, [inaudible 00:46:05] public domain, I don’t want to touch it, because that puts all of my stuff …
Autumn: The guy with the bow and arrow and [inaudible 00:46:11] and the compass, or whatever that is?
Doug: Yeah, it’s … I don’t know what it is, it’s like a little black criss-cross, looks like an X.
Autumn: How did they know it’s public domain?
Doug: That’s what I mean, I was trying to say like, Well, show me that it’s in the public domain, but they were like, they were for sure. Because here’s how this works, Dungeons and Dragons utilizes a system called the d20 system, and it uses 20-sided dice, and that’s … They classify that as d20 system board game, is what D&D is. The question is is that Paizo, the people that own Pathfinder, Pathfinder is a game based off of the d20 system, loosely based off of Dungeons and Dragons. If you know Dungeons and Dragons, you know Pathfinder, it’s essentially Dungeons and Dragons. Uses the same rules set, the same everything, it’s just a different kind of … A different theme. They’re essentially piggybacking off of Dungeons and Dragons, so it’s kind of … It’s like this big convoluted mess, and that’s what they’re explaining. They’re public domain because this, this, and that, we’re for sure it’s public domain. I just was curious, if that particular logo was in public domain, I could throw that on a shirt?
Autumn: If it really is.
Doug: Okay. I would make sure it is, I’m not going to be like Well, Autumn said …
Autumn: Yeah, yeah.
Doug: I just wanted to make sure.
Autumn: Yeah, and I will … Something else, there’s so … Public domain is a copyright contest. Even if … Let’s say the line in the sand … It’s 1923. Anything created before 1923 is definitely in the public domain. Let’s say this was drawn in 1922, definitely public domain, definitely not protected by copyright. But, let’s say Dungeons and Dragons started using it in connection with its business, and everybody [inaudible 00:48:03] now they’ve got trademark rights. It doesn’t really matter that it’s in copyright public domain, you can still violate that trademark right. [inaudible 00:48:12] using it with a different product. That make sense?
Doug: That makes perfect sense.
Autumn: [inaudible 00:48:16]
Doug: It’s just [inaudible 00:48:20] there’s so many catch-22s.
Doug: Double-edged blades on this whole thing, it’s just …
Autumn: What I always say, like, It’s safest and easiest to just create your own stuff!
Doug: That’s what I do, but it’s like … There’s a few things that I do that … I’ve found a lot … It’s very easy to find really neat designs that cater to people that are fans of specific things, as long as you’re not blatantly ripping it off. This is very helpful.
Autumn: You’re always going to have questions or there’s always going to be a line you’re kind of trying not to cross.
Doug: Yeah. Well, my rule of thumb, before I ever even thought of needing to speak to a lawyer, my rule of thumb is I personally say, Man, I don’t know if that’s too close or not, then I wouldn’t do it. If I had to personally step back and go I wonder if this is going to be okay, then I’m just going to play it safe and say no, I’m not going to do it. If my gut even remotely says, I don’t know, then I stay away from it.
The good news is I think, I mean Rachel, from what we’ve talked about so far, we still possibly have a [inaudible 00:49:24]. I’m okay, I’ve got all the stuff I needed to know.
Rachel: Yeah, me too, thank you so much. I thought we would only need half an hour and here I can think of … Wow, there’s so much.
Autumn: As you get into things, you have questions, feel free to shoot me an email and as long as it doesn’t take me very long to answer them off the top of my head, I’m happy.
Rachel: Oh, thank you so much.
Doug: We won’t ask you to write us an essay, don’t worry.
Autumn: All of this stuff, the copyright framework stuff, is generally, other than the common law that we talked about a little bit, the same in all 50 states. I do that work [inaudible 00:49:58].
Doug: Oh, no, then you’ll be a good ace up my sleeve.
Autumn: Yeah, happy to be a resource.
Doug: Great, perfect.
Rachel: Awesome, well, thank you so much for your time and for all your knowledge. I look forward to staying in touch.
P.S. You can find Autumn right here.
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That really was a super useful article. Thanks!