accidental use?

[Steve2R0]

Have a question - was at a festival last month and seen a cool sign by one of the stages. Decided to get someone to make me a design that resembled the sign for a shirt with some other stuff around it. Didn't think anything of it, but got a notice today from the printing people that the y had shut down that campaign because of an IP complaint of the text from that sign. I had posted it on a facebook page of people that go to the festival and sold maybe 3 or 4 of those things. I was curious on it and googled the trademark database and seen that the words on the sign were not registered trademarks, then checked the company's website and not a single image with that sign has a copyright or trademark mark on it. I sent a message back to the printing company saying I didn't think it was trademarked, and they responded stating they sent my counter statement to them and they would start my campaign back if there was no legal document received in 14 days. This freaked me out a bit, because I don't want to get into any legal situation with anyone, and I asked them to tell the people complaining that I did not wish to counter anything. Even if the stuff isn't protected, I don't have the resources to stave off some kind of legal situation. The printing company said that they would notify them I did not wish to counter the complaint.

My concern is that I don't understand any of this stuff, and don't want to get mired in some unnecessary mess that came from me just not knowing. Would a general action in a situation like this be for them to send a letter telling me to stop (which was already done) using the image for anything? Or would it go further? Obviously hoping nothing serious comes from it, but I have no clue.

Thanks in advance for any info.

 

[quincy]

Have a question - was at a festival last month and seen a cool sign by one of the stages. Decided to get someone to make me a design that resembled the sign for a shirt with some other stuff around it. Didn't think anything of it, but got a notice today from the printing people that the y had shut down that campaign because of an IP complaint of the text from that sign. I had posted it on a facebook page of people that go to the festival and sold maybe 3 or 4 of those things. I was curious on it and googled the trademark database and seen that the words on the sign were not registered trademarks, then checked the company's website and not a single image with that sign has a copyright or trademark mark on it. I sent a message back to the printing company saying I didn't think it was trademarked, and they responded stating they sent my counter statement to them and they would start my campaign back if there was no legal document received in 14 days. This freaked me out a bit, because I don't want to get into any legal situation with anyone, and I asked them to tell the people complaining that I did not wish to counter anything. Even if the stuff isn't protected, I don't have the resources to stave off some kind of legal situation. The printing company said that they would notify them I did not wish to counter the complaint.

My concern is that I don't understand any of this stuff, and don't want to get mired in some unnecessary mess that came from me just not knowing. Would a general action in a situation like this be for them to send a letter telling me to stop (which was http://digitalcommons.law.yale.edu/cgi/viewcontent.cgi?article=1410&context=ylpr done) using the image for anything? Or would it go further? Obviously hoping nothing serious comes from it, but I have no clue.

Thanks in advance for any info.

Are you in the US, Steve? If so, in what state?

If you are in the US, what was received by the printing company was a DMCA takedown notice, sent by the holder of rights that are claimed to have been infringed by you.

The first step the receiver of such a notice must take to preserve their own immunity from suit is to remove alleged infringing material from their website or disable access to the material. The second step is to inform the alleged infringer (you, in this case) that a takedown notice was received and a counterclaim can be filed, disputing infringement.

If you file a counterclaim, the rights holder has 14 days to take legal action against you or the material removed from its place online can be returned to its original location.

If you choose not to file a counterclaim, the material will not be returned to its previous location. It is permanently removed.

The rights holder can choose to sue you for infringement regardless of what you decide to do. Most rights holders are satisfied with the removal alone. Others will file an infringement suit. What happens depends on the extent of the infringement, the demonstrable harm to the rights holder, the litigiousness of the rights holder, the strength of the case that can be fashioned from the facts.

You can consult with an IP attorney in your area and have your tee shirt design compared to the design on the festival sign, to better determine if there is an infringement suit possible that has some merit. A suit without merit could still be pursued but it is less likely.

One additional note: Registration is not necessary for trademarks or copyrights (until a suit is intended). Copyrights are automatic once a creative and original work is fixed in tangible form. Trademarks gain rights through the use of them in commerce.

If you ARE sued, you will want to have an attorney help with your defense. From what you describe, a lawsuit seems unlikely.

 

[Steve2R0]

Are you in the US, Steve? If so, in what state?

If you are in the US, what was received by the website was a DMCA takedown notice, sent by the holder of rights that are claimed to have been infringed by you.

The first step a website must take to preserve their own immunity from suit is to remove the alleged infringing material from their site or disable access to the material. The second step is to inform the alleged infringer (you, in this case) that a takedown notice was received and a counterclaim can be filed, disputing infringement.

If you file a counterclaim, the rights holder has 14 days to take legal action against you or the material removed from its place online can be returned to its original location.

If you choose not to file a counterclaim, the material will not be returned to its previous location. It is permanently removed.

The rights holder can choose to sue you for infringement regardless of what you decide to do. Most rights holders are satisfied with the removal alone. Others will file an infringement suit. What happens depends on the extent of the infringement, the demonstrable harm to the rights holder, the litigiousness of the rights holder, the strength of the case that can be fashioned from the facts.

You can consult with an IP attorney in your area and have your tee shirt design compared to the design on the festival sign, to better determine if there is an infringement suit possible that has some merit. A suit without merit could still be pursued but it is less likely.

One additional note: Registration is not necessary for trademarks or copyrights (until a suit is intended). Copyrights are automatic once a creative and original work is fixed in tangible form. Trademarks gain rights through the use of them in commerce.

If you ARE sued, you will want to have an attorney help with your defense.

Thank you for the info, am currently in the US, in TN. The design was similar to the sign by the stage, I thought it was ok since it wasn't a company name or logo. Actually I didn't even check to see if it was trademarked/copyrighted until the print shop said they took it down today - lesson learned I guess. guess I'll just hope nothing comes of it and talk to a lawyer if anything does. Sort of sucks that a 'whoopsie' may end up costing a bunch of $ I don't really have, hopefully they will be satisfied and we can all go about our business.

 

[quincy]

Thank you for the info, am currently in the US, in TN. The design was similar to the sign by the stage, I thought it was ok since it wasn't a company name or logo. Actually I didn't even check to see if it was trademarked/copyrighted until the print shop said they took it down today - lesson learned I guess. guess I'll just hope nothing comes of it and talk to a lawyer if anything does. Sort of sucks that a 'whoopsie' may end up costing a bunch of $ I don't really have, hopefully they will be satisfied and we can all go about our business.

I think you are probably safe from any legal action. Although unintentional infringement is still infringement, it would be a mitigating factor should any lawsuit arise over the use of a rights-protected design or slogan/phrase.

As advice for the future: Whenever you see something you did not yourself create, someone else created it. That someone else probably holds rights in it. The extent of these rights should be considered prior to use.

Good luck, Steve.

 

[Steve2R0]

I think you are probably safe from any legal action. Although unintentional infringement is still infringement, it would be a mitigating factor should any lawsuit arise over the use of a rights-protected design or slogan/phrase.

As advice for the future: Whenever you see something you did not yourself create, someone else created it. That someone else probably holds rights in it. The extent of these rights should be considered prior to use.

Good luck, Steve.

Thanks so much for the information.

 

[justalayman]

Thank you for the info, am currently in the US, in TN. The design was similar to the sign by the stage, I thought it was ok since it wasn't a company name or logo. Actually I didn't even check to see if it was trademarked/copyrighted until the print shop said they took it down today - lesson learned I guess. guess I'll just hope nothing comes of it and talk to a lawyer if anything does. Sort of sucks that a 'whoopsie' may end up costing a bunch of $ I don't really have, hopefully they will be satisfied and we can all go about our business.

To clarify a bit since you seem to be stuck on registration being critical ;

A trademark does not have to be registered as a trademark to be a valid and protected mark. Use in commerce is what is required for a mark to be considered a trademark. Many trademarks do not include a company's name and there is art other than a company's "official" logo that may also be considered as a trademark for that company.


Copyright covers basically any art. Somebody created it and that is who owns the rights (unless transferred to another entity). It doesn't require registration to be protected works although registration is required in order to file suit for infringement. That is not a requisite to suing for trademark infringement

 

[quincy]

Thanks so much for the information.

You're welcome, Steve. Thanks for the thanks.

Good luck.