Q about intellectual property rights and trade dress infringement.

What is the name of your state (only U.S. law)? New Mexico

I've been playing with photoshop and altered free free images, as well as some purchased digital sheets. I added some fun sayings I found on the internet, and as far as I can tell, are not trademarked phrases, as I searched; especially something as generic as "bite me," or "change your shoes, change your life." I was having fun with them and posting them on facebook for my friends to enjoy, and to boast about my new photoshop skills. As facebook goes, it spread around. I also found many of my pics on google images.

I received a letter from a lawyer stating this:

"It appears that the images and designs are directly copied from *** designs. In many instances you have replaced the underlying image with a different, yet similar, image. In some cases, you have modified the captions slightly. As you know *** has not licensed its trade dress or any other intellectual property rights to you and we were surprised to see *** designs being used without our client's permission. It is possible you did not realize that using *** intellectual property without such a license may constitute trade dress infringement, copyright infringement, and deceptive practices under federal law."

Now, to be fair, the images I used were similar as far as the era (retro), but they were not this companies copyrighted images. The phrases were not found to be trademarked (I sure hope I was searching correctly!). I am not sure if this is infringement if I use them? Trade dress, I understand that a bit, since I was using retro imagry.

So what I'm wondering, have I committed trade dress infringement, copyright infringement, and deceptive practices?

Much appreciated!

Have you committed trade dress infringement, copyright infringement and deceptive practices? Possibly. Obviously someone thinks so enough that they hired an attorney to inform you of that fact.

You would need to have the works you created examined by an IP attorney in your area, who can do a side-by-side analysis of your work and the work you are accused of infringing. It sounds like some of the images you have been using were not "free" images, afterall.

Most of what you find on the internet is rights-protected material and permission is needed from the rights-holder prior to using it.

Thank you for your reply, Quincy!

Is USPTO the correct website for searching for trademarks? What about using sayings and phrases? I know you can't copyright them, but you can trademark them (and upon search at uspto, none of these phrases come up). If a phrase like "change your shoes, change your life" isn't trademarked, is that trade dress infringement somehow?

This company has a colorful image of a woman in shoes with the "shoe" phrase, I had an image of women walking, in black and white, with opposite color shoes, with the "shoe" phrase. If I use a phrase on an image that I purchased, or was from public domain (isn't that all copyright free now, public domain?), is that trade dress infringement? Because, I have seen (and obviously loved) companies doing the similar thing, with retro images and phrases; are they committing trade dress inf. on each other?

I'm just trying to understand, because I've seen this same/similar idea, with the retro pictures and catty phrases, all over. Could it just be a scare tactic?

Thank you again!

I hope I can post these url's on here??? Here are some perfect examples....

#15: I Can Please Only 1 person a day. Today is not your day. : Zen Cart!, The Art of E-commerce

I can only please one person per day. Today I choose me. Refrigerator Magnet #7661 | Retro Bitch Refrigerator Magnets | Refrigerator Magnets | Shop By Product Type | Ephemera Inc. Retail

Tin Signs Mini Magnetic Only Please Signs Retro Gifts from RetroPlanet.com

The artzthings magnets are just like anne taintors in design, retro with the text on a white strip. Are they infringing on each other's copyrights? These are all bigger businesses, I've seen them in local shops also.

Thanks!

First, the USPTO is a correct website for a trademark search of federally registered trademarks (or pending marks) but most trademark searches will be done by professional search firms for the following reason. A trademark does not need to be registered either on the federal level or the state level to be afforded protection under trademark law. Trademark ownership, and the accompanying protection ownership provides, comes with a mark's use in commerce.

A trademark is usually a word or a short phrase or a logo or a symbol that is used to identify a product or service. Trade dress encompasses all elements used to promote a product or service - the shapes and designs and decors and environments and displays specifically created for use in advertising and promotion.

Copyright covers original and creative works (literary, musical, artistic, etc).

What the examples from your links above show are the use of old, originally black-and-white, colorized photos with the same or a similar phrase displayed on the photo.* The old photos in their black-and-white form are in the public domain and can be used freely by anyone. The colorized versions that are shown, on the other hand, may be protected by copyright. Ted Turner colorized public domain black-and-white movies and his colorized versions are copyright-protected.

The old phrases that are used (proverbs, adages, etc) are in the public domain and can be used freely by anyone, if they have not already been connected with a product or service as a trademark or used in promoting the product or service as tradedress. Neither the black-and-white versions of the photos or the old sayings on their own can be copyrighted as they are in the public domain, whereas, for example, a collection of old sayings compiled in a book could be copyrighted, just as the colorized version of an old photo could be.

Problems can arise with the use of a public domain photo in combination with an old phrase. Whether a work is legally problematic or not can be largely dependent on are how the elements are presented together. If your use of a photo and phrase is designed in the same or in a substantially similar fashion to another's, it could be infringement. Substantial similarity comes from the layout, the colors, the connecting of a particular phrase to a particular photo, the confusion in origin that may occur when a consumer views a work, the creative design elements that make it original and protectable. If your use of a photo and phrase competes with a photo/phrase combination from an advertisement or promotion of a product or service, it could be infringement. If the photo or phrase you use has been incorporated into a company's trademark in some way, it could be infringement. I can't see off-hand how deceptive practices is involved with your uses, but I see where there could potentially be a claim of palming, or passing, off.

Whether you have infringed on another's work or not, or engaged in deceptive practices or not, is something I can't tell you from posts on a forum. The most I can tell you is that someone thinks you have infringed, hence the letter you received from the attorney.

You can review your work with an attorney in your area, who can make a comparison of your work to the alleged infringed work. The attorney can look over the letter you received and investigate the individual or company behind the letter. The attorney can let you know better where you may stand legally against the claims being made. Or you could argue the infringement with the rights holder/his attorney directly. Or you could keep doing what you're doing and hope you aren't sued. Or you could scrap what you have been creating and try to avoid any conflict in the future by investigating more thoroughly what is already being created, produced and marketed.

I recommend an attorney's review.

Good luck.


*Notes: A design you linked to has been "discontinued" on one of the websites and is no longer available. Another site you linked to has a notice posted that states the images and designs are copyrighted and the copyrights are held by the site owner and the respective owners of the images and designs.

Wow... your explanation is fantastic. Thank you so much for explaining it, so well, and so clear. I truly appreciate that!

I am a student, and was having fun with the images, and phrases, and I think I'd prefer to scrap it. I don't have the time, or money to pursue something like this, and frankly, it's not that important to me. I just want to have fun and create cool stuff to enjoy, and be enjoyed.

Thank you again! Have a wonderful week!

You're welcome, wildwildwest5. You have a wonderful week, too.