Movies and TV shows - copyrights and unofficial merchandise

[retrocausality]

(snip)
That said, you know about the three elements generally accepted as being necessary to make out a claim: goodwill, misrepresentation and damage. While most bands will probably be able to establish that they have goodwill among their fans, the other two elements are going to be much harder to establish. Cases like Irvine depended, to a degree, on the misrepresentation aspect of altering the image of Irvine so that he appeared to be holding a radio. Your images alone will not contain any visual element which can be said to deliberately mislead the public, much as with the football scarves in Arsenal v Reed in the passing-off issue, which were held to be no more than tokens of allegiance. And finally it would be hard to argue that there was damage to the goodwill of a band caused by someone else selling tee-shirts. The goodwill would more properly reside in the quality of their music or on-stage performance rather than any memorabilia. Assuming your images do not denigrate the band (which I assume would not be in your company's commercial interests anyway) I think any claimant would have an uphill battle establishing points 2 & 3.
On that basis, I don't think putting the photographer's name on the images really changes things one way or the other, although obviously she may be pleased by it.
(snip)

Hi Andy, and thanks very much for the reply!

I'm really confused now...

I thought that in the Arsenal v Reed case, the reason it was eventually found in favour of Arsenal was that once the merchandise had left the stall, there was no way for a person in the street to know that it wasn't official Arsenal merchandise, and as such it was diluting the public perception of the quality of Arsenal merchandise.

Applying that to our Jane Doe t-shirts, I was working under the assumption that we'd have to make sure that anyone in the street that saw the shirt should be able to tell at a glance that it's a Jane Doe t-shirt rather than a Band-A or Musical-Artist-B t-shirt otherwise we'd similarly be diluting the public perception of the Band-A or Musical Artist B brands.

But you're saying that for musical artists, their goodwill isn't in their merchandising, it's in their music, and so anyone could sell t-shirts of that band, as long as they owned the copyright to the photo they used?

Obviously, I'm delighted if that's the case, I'm just shocked.

Is this how Panini got away with the "Fab Five" Spice Girls' unofficial sticker album?

Presumably putting the name of a band on the t-shirt would be a trademark no-no?

But what about when it's a single person? Picking a name of a random musical celebrity whose name is their "brand" out of the air... let's say Eric Clapton... If we had photos of Eric Clapton, would we be able to make t-shirts of the photos, but with his name on them?

[AndyJ]

Hi Phil,
Sorry to have confused you on the Arsenal v Reed case. That's why I included the words "on the passing-off issue" because the whole case was about both trade marks and passing-off. In the original trial Laddie J concluded that there was no passing-off. Later, the matter of infringing trade marks went to the Court of Appeal, with an ECJ ruling to aid them, and it was here that the trade mark issue went against Mr Reed, but the passing-off finding at first instance was not appealed.
However, I don't think that trade marks are the major problem you face with your tee-shirts, for the simple reason that the bands and artists are less likely to have registered any images of themselves as trade marks, hence my emphasis on passing-off because it is more generic in scope.
So as long as you check carefully using the IPO trade mark database, for any marks, including the names of bands, which relate to the artists you plan on featuring, you should be able to avoid any trade mark infringement.
It is just worth emphasising the difference between trade marks and passing-off as causes of action. Trade mark infringement must involve a mark* which identical or similar to the registered mark which is used in course of trade. That's why using the words 'Star Wars' here in the posting is not infringement even though they are a registered trade mark.
Passing-off is much wider in scope and includes other behaviour which implies that there is a direct connection between the genuine goods or services and the ones which are allegedly being passed-off, for instance verbal statements that they are genuine. That's why I tried to analyse the issue of goodwill and any damage to that goodwill in respect of your shirts and the artists who will be featured.

* a 'mark' can include anything which can be graphically represented, so includes music, colours, symbols, the shape of packaging and theoretically smells (although I am not aware of any having been successfully registered).

[retrocausality]

Passing-off is much wider in scope and includes other behaviour which implies that there is a direct connection between the genuine goods or services and the ones which are allegedly being passed-off, for instance verbal statements that they are genuine. That's why I tried to analyse the issue of goodwill and any damage to that goodwill in respect of your shirts and the artists who will be featured.

* a 'mark' can include anything which can be graphically represented, so includes music, colours, symbols, the shape of packaging and theoretically smells (although I am not aware of any having been successfully registered).

Thanks again.

You say that the tort of passing off "includes other behaviour which implies that there is a direct connection between the genuine goods or services and the ones which are allegedly being passed-off"

Is this key to every passing off case, or was that just an indicator of the wider scope of the tort?

I was just thinking back to our early conversations about tv/movie/computer game t-shirts. The company's intention was never to make the buyer think that our t-shirts were genuine merchandise or in any way endorsed by the makers of the TV show / movie / game.

Our designs were more informal "fan-wear" that referenced some small aspect of the show / film / game - "in-jokes" and that sort of thing - without actually mentioning the name of the film they were referencing.

Maybe I wasn't clear about this at the start of the thread. I probably used bad examples and muddied the water by calling it "unofficial merchandise".

Take the "Lord Of The Rings" trilogy as an example... there's a line in the first movie, which turned into an internet meme - "One Does Not Simply Walk Into Mordor". Many t-shirt companies, ours included, jumped on the meme bandwagon and produced t-shirts bearing slogans like...

"I Simply Walked Into Mordor"
"I Simply Walked Into Mordor And All I Got Was This Lousy T-Shirt"
"One Does Not Simply Alt+Tab Into Mordor"

Etc.

Assuming our in-joke designs fall beneath de minimis copyright standards, bear no reference to the title of the subject matter, bear no claims of being endorsed or official (or indeed has a "not endorsed by / not official" disclaimer), I don't understand how they would be "bad" while an Eric Clapton t-shirt with his name on it, bearing a photo we owned the copyright for would be "fine".

Is it not feasible to claim that an in-joke t-shirt is a "sign of allegiance" to the show / movie / game, increasing its exposure rather than damaging its goodwill, and that any goodwill would actually reside in the tv show / movie / game anyway (in the same way as a musician's goodwill is in the music) and not in their own official clothing lines?

My head's spinning.

[AndyJ]

You say that the tort of passing off "includes other behaviour which implies that there is a direct connection between the genuine goods or services and the ones which are allegedly being passed-off"

Is this key to every passing off case, or was that just an indicator of the wider scope of the tort?

It's not key, it was just mentioned to demonstrate that a passing-off claim could arise from something other than the use of a replica or similar trade mark.

Assuming our in-joke designs fall beneath de minimis copyright standards, bear no reference to the title of the subject matter, bear no claims of being endorsed or official (or indeed has a "not endorsed by / not official" disclaimer), I don't understand how they would be "bad" while an Eric Clapton t-shirt with his name on it, bearing a photo we owned the copyright for would be "fine".

Is it not feasible to claim that an in-joke t-shirt is a "sign of allegiance" to the show / movie / game, increasing its exposure rather than damaging its goodwill, and that any goodwill would actually reside in the tv show / movie / game anyway (in the same way as a musician's goodwill is in the music) and not in their own official clothing lines?

The more general the target of your joke (such as a TV programme, or cult film) the less likely you are to face problems, because the average person will see your joke for what it is, parody. Most of the time we think of parody in terms of copyright, but in my opinion exactly the same human reaction is at work when it comes to defending a claim of passing-off. The buyer of the tee-shirt will be in on the joke, otherwise why would she want to buy that particular shirt? And by recognising the joke she will also recognise the source of the tee-shirt is unlikely to be the makers of the film or TV show because the joke mocks the film/show, albeit in a gentle way. I dare say there are shows which it could be argued already take the piss out of themselves, so this could be a double bluff, but either way there will be sufficient ambiguity for the buyer not to be truly confused as to the source of the item.
Contrast this with a tee-shirt bearing a picture of Clapton along with his name. That is much more specific, personal and without the dimension of humour, and so as with the Irvine case, much more liable to invoke confusion in the mind of the buyer as to whether this may or may not be official memorabilia. And that in turn increases the chance of the person (Clapton in this example) considering a passing-off claim.

[retrocausality]

Interesting! In that case it looks like I might've been overly harsh when I audited the designs, getting rid of the ones that I thought were possible infringements. I need to take a look at the list again and see if I can reinstate some designs.

Thanks again!

[retrocausality]

Hi all, me again!

The topic of "public domain movies" has come up again, with me being charged with the task of finding old movies we can make retro t-shirts for.

I know we covered this briefly earlier, but I just wanted to check that I understand it correctly and that we're definitely ok to do so.

A number of our competitors and suppliers have started making t-shirt designs based on old movies.

I was just about to place an order for some from a supplier when I noticed a couple of them are in this list on wikipedia...

http://en.wikipedia.org/wiki/List_of_fi ... lic_domain

Namely...

The Driller Killer
Night Of The Living Dead

I've immediately crossed those two movies off the list of designs to buy from the supplier, while I look into this.

We've launched a "retro t-shirts" website recently, and there are plenty of movies in the list that have interesting advertising posters that would make good retro t-shirts.

If the movie is public domain, does it necessarily follow that the associated poster will be PD too? If not, would it be OK to mock up movie posters based on actual frames from the movies?

After the conversations on this thread, and from the reading I've been doing about IP, I'm terrified to say "yes" to any design that isn't 100% generic and unrelated to anything. The problem being that there are few generic unrelated designs that the public seem to want to buy from us - hence the reason we've found licensed suppliers, allowing us to sell official products.

[AndyJ]

Hi Phil,
You should definiteIy work on the principle that even though a particular movie may be in the public domain, that would not necessarily apply to its poster. Even more so if different posters were produced for different national cinema audiences. For instance, a poster produced in the UK would be wholly governed by UK law, and probably would not be in the public domain even if you were reasonably sure that the US motion picture was.
On that basis taking a still from the film and creating your own poster from it would be a better option.

[retrocausality]

Hi Phil,
You should definiteIy work on the principle that even though a particular movie may be in the public domain, that would not necessarily apply to its poster. Even more so if different posters were produced for different national cinema audiences. For instance, a poster produced in the UK would be wholly governed by UK law, and probably would not be in the public domain even if you were reasonably sure that the US motion picture was.
On that basis taking a still from the film and creating your own poster from it would be a better option.

Awesome, thanks Andy.

[AndyJ]

Hi Phil,
I just wanted to bring a recent case to your attention as it has a number of elements which bear on your area of concern.
It's called Fenty v Topshop [2013] EWHC 2310 Ch, but is being referred to colloquially as Rihanna v Topshop, since Fenty is Rihanna's real surname.
In summary the case is about some tee-shirts bearing Rihanna's picture which were sold by Topshop, but which had not been authorised by Rihanna. The issue was not about copyright, but passing-off. She won the case.

[retrocausality]

Hi Phil,
I just wanted to bring a recent case to your attention as it has a number of elements which bear on your area of concern.
It's called Fenty v Topshop [2013] EWHC 2310 Ch, but is being referred to colloquially as Rihanna v Topshop, since Fenty is Rihanna's real surname.
In summary the case is about some tee-shirts bearing Rihanna's picture which were sold by Topshop, but which had not been authorised by Rihanna. The issue was not about copyright, but passing-off. She won the case.

Thanks for that!

I've just read the transcript and it makes very interesting reading.

If I understand the judgement correctly, Topshop would have won the case if the photograph used hadn't resembled her album photos in such a way that fans of Rihanna's work might have assumed it was directly related to her marketing campaign for the album in question, meaning misrepresentation had occurred.

So this means, presumably, that if a 3rd party were careful to select a photograph of a famous person that could not be mistaken for an official marketing campaign for a product by that famous person, then as long as the 3rd party's products did not contain a trademark of that celebrity (such as their registered artist name / band name / album title etc.) then it would not be "passing off"?

I.E. If I had a photo of Rihanna that I had taken myself, in which she isn't depicted in a setting or costume related to her own merchandise, album artwork, or marketing campaigns related to them, then so long as our products fulfilled the above criteria about not having her trademarked name or R mark on them, we could happily sell those products without fear of losing a passing off case?

[AndyJ]

Hi Phil,
I agree that the judge made it fairly clear that the facts in this case made it exceptional, and thus that a more general use of an artist's likeness on a tee-shirt would probably not amount to passing-off, because either one or both of the elements of goodwill or misrepresentation would fail to be sufficient. This can be seen from the final paragraph in the judgment:

Conclusion
75. The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off. However the sale of this image of this person on this garment by this shop in these circumstances is a different matter. I find that Topshop's sale of this Rihanna t-shirt without her approval was an act of passing off. I find for the claimants.

[retrocausality]

Hi Phil,
I agree that the judge made it fairly clear that the facts in this case made it exceptional, and thus that a more general use of an artist's likeness on a tee-shirt would probably not amount to passing-off, because either one or both of the elements of goodwill or misrepresentation would fail to be sufficient. This can be seen from the final paragraph in the judgment:

Conclusion
75. The mere sale by a trader of a t-shirt bearing an image of a famous person is not, without more, an act of passing off. However the sale of this image of this person on this garment by this shop in these circumstances is a different matter. I find that Topshop's sale of this Rihanna t-shirt without her approval was an act of passing off. I find for the claimants.

I was wondering if you might be able to help me with something...

There's a very famous British TV show with a long history of merchandising, a number of registered trademarks to do with characters and themes in the show, and a massive fanbase.

To our knowledge, their entire merchandise licensing for clothing is handled by a single company, a merchandising company that is a "silent" sister company of a particular fairly-large chain of high street shops.

A new installment of this TV show is imminent, and fan hype is at a high.

As such, our company have been desperately trying to get hold of the merchandising company in order to arrange to buy official merchandise from them to sell on our own websites.

The problem is, nobody is answering.

We tried by email and got no response.

We've phoned them many times, but always get automatically transferred to an extension that gives a brief instruction to leave a message after the tone.... and nobody gets back to us.

What can we do?

Surely the TV company want to make money from merchandise, and so, will they be aware that their license-owner is failing to supply to companies outside their own sister chain?

Is this a case for the monopolies commission? It seems to us that the license holder is deliberately avoiding contact with other interested parties in order to allow their sister high-street-chain to have a monopoly on clothing related to this program.

Also, on a related note, I've read / heard conflicting reports about "public demand".

On one hand I've heard that if there's a public demand for something that isn't being catered for by the IP owner, then after a certain amount of time other unlicensed companies can step in and fill the void.

On the other hand I've also heard that the decision whether to merchandise or not merchandise is the decision of the IP owner, and if they don't want to make merchandise then nobody else is allowed to either.

I have a feeling that the former is likely to be more applicable to "registered designs" than to trademarks and copyrights, but I just wondered if there would be scope in a situation such as ours, where we've REALLY TRIED to contact them with the intention of buying their goods wholesale for sale on our sites but for whatever reason they don't seem interested in even getting back in touch with us.

[AndyJ]

Hi Phil,
Exploitation of most intellectual property rights is at the sole discretion of the rights owner. They may license others to exploit their rights (or a subset of them) in three ways:

• a. By an exclusive licence, which means that the licensee alone can exploit the work and not even the rights owner can exercise their right to make copies etc, during the term of the licence.
  b. By a sole licence, which authorises the licensee, but does not remove the rights owner's right. or
  c. By a non-exclusive licence. This would allow several producers to become licensees in parallel.

The anomaly you mentioned applies to unregistered design right (UDR). UDR lasts for the shorter of:

• 15 years from the end of the year in which the design was created (either in a drawing or in prototype form),
  or 10 years from the end of the year in which the articles were first made available to the public.

However during the last 5 years of the term, a third party can obtain a compulsory licence to produce articles to the UDR design. If the owner and potential licensee cannot agree the terms of the licence, then the Comptroller of Patents Designs and Trade marks (part of the IPO) can be asked to arbitrate.

This exception does not apply to Registered Designs.

UDR cannot be applied to the surface decoration of an object, so in most cases it would not be applicable to the artwork on clothing (see Lambretta Clothing Ltd v Teddy Smith (UK) Ltd [2004] EWCA 886).

Going back to your particular problem, I suggest that contacting the licensee is a waste of time, unless they have the power to issue sub-licences. You might be better contacting the rights owner direct.
Afternote. Having just re-read you posting, I see that you wish to buy the manufactured articles, in which case my comment about sub-licensing would not apply. However since you are having difficulty in contacting the merchandising company, it might still be worth approaching the rights owner, and indeed checking to see if you can obtain a license to produce the goods in house, as I assume this would reduce costs for your company

[retrocausality]

Hi again. And thanks for that, Andy!

Another question... trademark related...

What does "protected" mean?

http://www.ipo.gov.uk/tmcase/Results/23/WE00000907082

Usually on the IPO website they're "registered" or "dead" but that one says "protected" so I was wondering if it was a special case.

[AndyJ]

Hi Phil,
The mark you linked to is an International Trade Mark issued by the World Intellectual Property Organisation, which is the next level up from Community Trade Marks. The 'WE' at the start of the index number indicates that the registration is from within the EU. WIPO use the term 'protected' to mean the same as 'registered' does for UK or CTM marks.