Nolo’s Patent, Copyright, and Trademark Blog

Dear Rich: I have a question. Can a copyrighted or trademarked item be reused or “repurposed,” as they like to say in the recycling circles, into a new product for sale without permission? For example, can someone take a cereal box, cut it up, use the front of the box as a notebook cover and legally sell that notebook? Can someone tear a page from a magazine or calendar, fold that page into an envelope and legally sell that envelope? How about a bottle cap? Can someone fashion a piece of jewelry from a bottle cap that is identifiable in the finished piece? I’m so glad you asked. The short answer: Making jewelry from a bottle cap is probably okay, ripping pages from a magazine and selling envelopes could be fine (but ripping pages from a book or calendar may not), and making notebook covers from cereal boxes may lead to trademark problems.

The long answer (zzzzzz) is a bit more nuanced. Here goes: Copyright law permits the purchaser of a copyrighted work to resell, destroy, or do whatever they want to that work, as long as they don’t step on any of the copyright owner’s exclusive rights. This principle is known as the first sale doctrine, and that’s why people can sell used books, movies, and music on eBay and Amazon. The term “first sale doctrine” comes from the fact that the copyright owner maintains control over a specific copy only until it is first sold. (One exception: If it’s a limited edition artwork or fine art work — for example, signed and numbered photographs created in limited editions of 200 or fewer copies — you can’t destroy it.)

Naturally, things aren’t always so simple. For example, two cases involving the resale of artwork seem to have arrived at different results. In one case, a company purchased a book of prints by the painter Patrick Nagel and cut out the individual images in the book and mounted them in frames for resale. A court of appeals in California held that this practice was an infringement and was not permitted under the first sale doctrine. (Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988).) (A similar result was reached in Greenwich Workshop Inc. v. Timber Creations, Inc., 932 F.Supp. 1210 (C.D. Cal. 1996).) In a different case, a company purchased note cards, mounted them on tiles, and resold them. A federal court in Illinois determined that this practice was okay. (Lee v. Deck the Walls, Inc., 925 F.Supp. 576 (N.D. Ill. 1996.) (The same result occurred in C.M. Paula Co. v. Logan, 355 F.Supp. 189 (D.C. Texas 1973).) So, under these rulings, a person cannot rip individual images from an art book and resell them, but a person can mount individual note cards and resell those. Another case added further confusion when a federal court ruled that the purchaser of a bundle of software programs could resell the individual components (separate programs on CDs). (Softman Products Co. LLC v. Adobe Systems Inc., 171 F.Supp. 2d 1075 (C.D. Cal. 2001).)

You definitely want to take some care selling repurposed items that contain trademarks. Although you’re free to sell empty cereal boxes, you want to avoid implying that the cereal company is endorsing or is associated with your notebook products. That’s going to be tough to do if the cover of your notebook is identical to the cover of the cereal. Consumers will necessarily confuse the two and likely think the cereal company is selling notebooks (not a major leap, considering they sell to kids). A prominent disclaimer may help — for example, a statement that your business is not affiliated with or endorsed by the trademarked company. But who’s going to want to look at a big disclaimer on the cover? Whatever you do, don’t play up the trademarks you use in your company’s marketing or business name. For example, it’s not a good idea to name your website “Cheerios Notebooks.” Finally, as with all issues like this, the lower you are on a company’s radar — that is, the less you sell — the more likely you are to avoid any hassles.

Dear Rich: I have a question. I want to trademark a product that I will sell primarily in gay catalogs and I want to use the word “queer” as part of my trademark. I’ve heard that I’ll have trouble if I try to register it. Since registration costs $325, I’d like to know if that’s true before I file. I’m so glad you asked. There are dozens of trademarks with the word “queer” that have qualified for federal registration including Queer Beer, Queer Channel, Queer Duck, Queer Eye for the Straight Guy, and my personal favorite, The Coast is Queer. So it’s unlikely that the USPTO will hassle you based on that term alone. It’s true that the USPTO can reject marks that are scandalous and twice rejected the “Dykes on Bikes” trademark. However, that mark eventually achieved registration after the organization sponsoring the registration demonstrated that the term “dyke” was not disparaging to lesbians. (The trademark also survived a legal attack by a lawyer who claimed that the term denigrated men.) It’s true that some terms are still considered as scandalous and derogatory but, assuming nobody is using a similar mark on related goods, you won’t end up donating $325 to the feds. P.S. Did you know you can save $50 by filing your trademark as a TEAS PLUS application?

Dear Rich: I have a question. I’ve been buying domain names that are common misspellings of well-known online retailers and then setting up websites with Google Ads. So when someone types in the wrong spelling, they arrive at my site. Then, they can then click through to the correct company’s site using a Google Ad. I got a letter from one of the companies telling me to take down my site and give up my domain name. Why? Sure, I make some money, but aren’t I doing a good thing by leading people who misspell domain names to the right company? I’m so glad you asked. I can’t tell you whether what you’re doing is a ‘good’ thing or a ‘bad’ thing — let’s leave that up to the Dalai Lama — but I can tell you that what you’re doing is called typosquatting.

A typosquatter purchases misspellings of domain name in the hopes of catching and exploiting traffic intended for another website. (It’s been a lucrative source of income for many years.) Typosquatting is a variation of cybersquatting and if the company whose name you’re exploiting takes you to arbitration under international domain name arbitration rules and proves you’re acting in bad faith, you’ll have to give up the domain name. If the company takes you to court in the U.S. instead, you’ll have to give up the name, and perhaps pay damages. Some companies guard against this practice by purchasing the misspellings, such as www.amzaon.com (sic). Others have to chase down violators and either buy the name back from the squatter or go after them with lawyers — for example, Land’s End went after a typosquatter who purchased domain names such as www.lnadsend.com and www.landswnd.com and then demanded money for referring customers under the Land’s End affiliate program. Nice scheme. (Land’s End prevailed in the early stages of litigation, but so far, the company hasn’t managed to acquire the domains.) Another unfortunate problem — some unscrupulous typosquatters trigger malware. Arrivederci!

Dear Rich: I have a question. I’ll be using a lot of screenshots from different websites in my book. Do I need to get permission for that or is it a fair use? I’m so glad you asked. Conventional wisdom (and the Electronic Frontier Foundation) says that an unauthorized screenshot is an infringement. That said, the use of screenshots rarely triggers a complaint because either: (1) the copyright owners don’t want to complain about something that promotes their company — for example, an online tutorial about using Microsoft Word, or a book about starting an eBay business, or (2) the copyright owners believe the use is likely to be excused as a fair use. Although issues don’t often arise, occasionally copyright owners do complain — for example, Apple complained about pre-release screenshots of the iPhone. Some sites place limits on your use of screenshots in their user agreements.

Keep in mind that if the copyright owners do complain, the results can be unfortunate–it may disrupt publication of a book or other product. Perhaps a more important issue to consider is whether what you are doing is likely to anger or annoy the copyright owner. If it is, proceed with caution and review your use of the company’s trademarks so that your use doesn’t imply an association or endorsement.

P.S. In the future, sites will be able to block screenshots.

Dear Rich: I have a question. I use a generic term as the name for my business. The U.S. Patent and Trademark Office refused my trademark registration. Can I register the initials instead? I’m so glad you asked. As you noted, the USPTO won’t register a generic term as a trademark, and it uses a two-pronged test to make that determination. (Keep in mind, of course, that some terms can be generic in one field of goods but not in another — for example, ‘arrow’ for archery equipment versus for men’s shirts.) Using initials instead of the generic term will not guarantee you registration unless you can prove that — in the public’s mind — the abbreviation has a meaning distinct from the underlying generic terms. So, for example, Welding Services, Inc., a company that offers welding services, will have a hard time registering ‘WSI’ if customers associate those initials with welding services. And as WSI recently learned in a court battle, even if the company could get protection for a stylized version of WSI, it can’t stop a competitor, Welding Technology, from using its WTI logo (above). Sound complicated? Hey, when it comes to generics, even lawyers get confused.

Dear Rich: I have a question. If all works created by the U.S. government are in the public domain, can I reproduce the Copyright Office seal at my website? I’m so glad you asked because I was just looking at the ‘rebranded’ (.pdf) Copyright Office seal and wondering, what was wrong with the old one? (Branding is so dumb … even sheep hate it.) You can freely reproduce the Copyright Office seal with one exception; you can’t use it in any way that indicates you are associated with or endorsed by the Copyright Office. That’s because the seal is a registered trademark (Serial No. 89000946). That’s right, federal agencies can own trademarks (and the trademark serial numbers always start with 89).

For more about reproducing works that are in the public domain, see The Public Domain: How to Find Copyright-Free Writings, Music, Art & More, by Attorney Stephen Fishman (Nolo).

Dear Rich: I have a question. Last week, you talked about trademark logos. How do you search the USPTO database to find conflicting design logos? I’m so glad you asked. You can search design logos as follows:

1. go to the USPTO website
2. under Trademarks (on the left), click “Search TM Database”
3. then click “Free Form Search (Advanced)”
4. enter a word or words in the search box that signify what you’re looking for followed by [DE] (which stands for “design element”).

So, for example, if you were looking for design logos that included a meerkat (no not this meerkat) you would type: meerkat[DE]. Cute, huh?

For more on trademarks, check out Attorney Stephen Elias’ book Trademark: Legal Care for Your Business & Product Name (Nolo), now in its 8th edition.

Dear Rich: My band has been using the same name as a reggae band from the 70s. We even got a federal registration to use the name. Can we go after the original band if they continue to use the name and domain name? I’m so glad you asked. That reminds me of a recent case from the state of Washington involving The Wailers — a regional rock group from Tacoma, who, among other accomplishments, claim to have inspired the Kingsmen to record “Louie Louie” (though others may disagree). The Tacoma Wailers sued The Wailers from Jamaica — the reggae band that once backed Bob Marley– for trademark infringement and cybersquatting. Alas, a court ruled there was no cybersquatting because the reggae band acted in good faith to get the domain name. And the the Tacoma band lost its trademark claim on the basis of laches–a legal principle which basically means the band waited too long (or “slept on its rights,” in legal parlance).

To learn more about trademark law and its little nuances, check out Trademark: Legal Care for Your Business & Product Name, by Attorney Stephen R. Elias (Nolo).

Dear Rich. I have a question. I’m a dentist and would like to use a crocodile as my logo. Will I get sued by Lacoste? I’m so glad you asked. Your question reminds me of the plight of two British dentists who, in their quest to fix British teeth, used a green crocodile as their logo. Lacoste sued over similarities to its logo but the UK Intellectual Property Office ruled (.pdf) that (1) the marks were distinguishable (partially because the dentists used a composite mark–a mark that combines words and logo), and (2) that consumers were unlikely to confuse polo shirts with root canals. (Click for more information about teeth and crocodiles.)

To learn more about trademark here on this side of the pond, check out the 8th edition of Trademark: Legal Care for Your Business & Product Name, by Attorney Stephen R. Elias (Nolo).

Dear Rich: I have a question. What if I painted a logo for the Stanford football team on some rocks. Could I sell them at Stanford games? I’m so glad you asked. There are two problems with your plan. First, team logos are protected as registered trademarks, so unless you licensed the use, you’d probably get a nasty letter from someone like Heath Price of the Collegiate Licensing Company, who recently announced, “[I]f somebody took a rock, and they painted Michigan Wolverines in blue and gold on that rock and went out to try and sell it as a for-sale product, that’s protected.” The second problem is that if you sell them at games and some of your customers throw them at competing fans, that could lead to personal liability issues … although it could also increase the demand for caskets with sports team logos.

To learn more about licensing and how you can legally obtain a logo like the Cardinal’s, pick up a copy of my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off (Nolo).