One of the largest infringements we see at SunFrog of copyright and trademark law involves sports related apparel. Before creating a new design, we have put together a guide on the ins and outs of trademark/copyright infringement to reference. Before using sports team names, colors, logos or branding it is important to determine if a product could be perceived as officially licensed goods.
Team names should be avoided at all costs, but there are other violations that will cause design shut downs. The design below is an example of infringement because it uses the Baylor Bear’s colors and logo which are both registered trademarks owned by the club.
Team colors are protected as trademarks. Colors provide both identity and unity within an organization. This helps customers to easily identify new product lines and merchandise being released by the organization. Often times, colors and color schemes are much more useful to a sports team by allowing their brand to be distinguishable from a distance. This is particularly true when a color scheme is unique to a particular patron within the affiliation.
The NFL/NCAA and their player’s associations own trademark on nearly every aspect of their team names, logos and colors. If found guilty of trademark infringement the responsible party may be legally liable to reimburse the NFL profits from any sale, licensure fees and even court costs. While the below image does not use a team name or team colors, it is still considered trademark infringement because the name “Watt” refers to a member of the NFL Player’s Association. Watt is a team member of the Houston Texans and, therefore, falls under their NFL PA trademark.
Copyright v Trademark
What is the difference? A trademark is a mark (word, phrase, symbol, design, mark, device, or combination thereof) used to identify the product source and differentiate if from similar products in the field. Copyright does not expand to cover names, colors, typefaces, designs, etc. that trademark often does.
Copyright coverage includes, but is not limited to:
- Works of art (two or three dimensional)
- Photos, pictures, graphic designs, drawings and other forms of images
- Songs, music and sound recordings of all kinds
- Books, manuscripts, publications and other written works
- Plays, movies, shows, and other performance arts
Copyright protection is automatically applied to an original work of authorship from the moment of creation and fixation. No action is required to secure copyright protection; neither publication registration or the use of notice. With that said, a work of U.S. birth must be registered before a counter claim can be issued or a suit filed. If it is believed that a copyrighted work has been stolen please refer to our Copyright and Intellectual Property Policy
Applications to Clothing
- Anything that is silk screened or printed, prominently on the front or back of a shirt is generally considered artwork and subject to copyright.
- To qualify as a trademark, the logo or slogan must be used as the chief mark for the brand. Branding requires the logo or slogan to appear in the actual craftsmanship of the design i.e. sewn into the waistband, collar, hem, pocket or applied to the label, sticker or tag.
- When a design, logo or slogan is regarded as artwork, even though it may be protected by copyright, the protection only extends to the origins of the artistic configuration. Any variation upon the original concept are acceptable as long as the original design is not directly copied. Variations of font, placement and color are all changes that could be made and re-marketed.
Confusion in the Marketplace
The central idea behind trademark infringement is “confusion in the marketplace.” The law protects against consumer confusion by requiring that “marks” on similar products and services are fundamentally different. Trademark owners must prove a few key elements during an infringement case.
- That the product posses a valid mark
- That someone else used said mark
- That the mark was used in the business of goods and services
- That the mark was used in a manner to confuse the consumer
Right of Publicity
A person’s right to publicity gives them the right to monetarily benefit from any use of their name, image or likeness. The right of publicity prevents unauthorized commercial use of identity, including name, image or likeness. Selling a shirt with a NFL players name, without expressed consent, is a violation of their right to publicity.
The law also bans use of any identifying characteristics referring to celebrities. Using likeness, voice or any other unique characteristic that may lead the consumer to believe this is an official product, without expressed consent, is prohibited. As an example, this Katie Perry shirt infringes upon the Right of Publicity, unless the designer had permission from Katie Perry or her official organization.
If the general consuming public would likely be confused about the origin of a product or service sold, then “confusion” exists, and the trademark has been infringed. Any product using a celebrity likeness or identifier, would likely lead the consumer to believe that the product has been officially endorsed by the celebrity.
Parody is another largely misunderstood section of trademark law. Parody involves imitating a serious work of art, literature or music for humorous or satirical effect. Many paradies are protected under “fair use” by both Copyright and Trademark Law, but not all parodies are protected.
Fair use is more likely to be granted if works of parody are meant to be used for noncommercial or educational purposes rather than profit. Courts have stated that the parody must actually make fun of the original work or its creator. For trademark, parody infringes if the consumer fails to understand that the source is not the creator.
While confusion is not required in dilution actions, trademark owners can maintain legal actions against parody even if:
- Consumers understands the joke
- Consumers are not confused about the origin of the parody
- Consumers are not confused into thinking the creator is affiliated with the trademark holder
Dilution, through precedent, ranks the value of the mark over the value of the joke, social commentary or satire which is the subject of parody.
After receiving millions of views, the Beastie Boys responded to this commercial claiming copyright infringement, to which GoldieBox responded with an official lawsuit. GoldieBox claimed that the commercial was protected under “fair use” and they were just trying to “break down gender stereotypes and encourage young girls to participate in activities that challenge their intellect.”
Responding, the Beastie Boys expressed their support of the ideal but noted: “Make no mistake, your video is an advertisement that is designed to sell a product and long ago, we made a conscious decision not to permit our music and/or name to be used in product ads. When we tried to simply ask how and why our song ‘Girls’ had been used in your ad without our permission, you sued us.” A will from one of the late group members also bolstered their case stating that his image was never to be used for advertising or commercial gain. Eventually the video was pulled as part of their advertising campaign and GoldieBox issued an apology.
Copyright/Trademark law is a complex mistress and is something that is best avoided. Lawyers will go to great lengths to protect their clients and courts will often air on the side of the mark holders . Fighting a trademark or copyright lawsuit is VERY expensive and generally not worth the hassle. Trademark and Copyright Law also applies to many other major organizations, such as the film industry, video games industry and large companies. The subjects chosen for this article were the most commonly violated, but be aware the these laws are not limited to the topics covered.