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Tabberone is pronounced tab ber won |
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| Licensed Fabric |
Last Updated November 28, 2009
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We have located two federal courts cases concerning the use of fabric to make items to sell:
In Precious Moments vs La Infantil, 1997, the federal court invoked the first sale doctrine in denying Precious Moments attempts to block the use of its licensed fabrics to make bedding for sale. The 1st Circuit Court said making a fabric item from fabric lacked any originality so it was not copyright infringement. Since then, M&M/Mars, Disney Enterprises, Major League Baseball, United Media (Peanuts fabric), Sanrio (Hello Kitty fabrics), and Debbie Mumm, have been sued when these companies tried to block the eBay sales of items hand-crafted from their licensed fabrics. Every one of them settled rather than risk losing the issue in court.
In Scarves By Vera, Inc. v. American Handbags, Inc, 188 F. Supp. 255 - US: Dist. Court, SD New York 1960, American Handbags was using towels manufactured by Vera to make handbags for sale. On some of these handbags made with plaintiff's towels there could be seen, at the bottom, the name Vera coupled with the figure of a Scarab or Ladybug, all three of which were registered trademarks of Vera. The judge rejected Vera's copyright claims.
It should be noted that in both cases the judges required the defendants to provide disclaimers attached to the items because the items were being sold in stores. The disclaimers were to plainly disavow any relationship between the manufacturer of the item and the trademark owner. This was done so "an ordinary, intelligent purchaser" would not be misled that there was any connection. When selling on-line, a prominent, highly visible and well-placed disclaimer, such as our recommended Tabberone Disclaimer, would likely serve the same purpose and legal need as the disclaimers required by the courts. Precious Moments disclaimer court quotation and Scarves By Vera disclaimer court quotation. |
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Licensed fabric means the fabric is licensed by the rights owner to be manufactured and sold. It does not mean the fabric is licensed at the time it is sold.
A license on the use of the fabric requires the person buying it to agree, usually in writing, to conditions on the use of the fabric before paying for the fabric.
If you do not agree to the "license" before purchasing, they will sell the fabric to you anyway. In fact, no one even asks you if you agree to the license. They
just sell you the fabric. Any fabric sold without a signed mutual agreement prior to the sale is not licensed and there are no provisions in the law that allow
for otherwise. Any one who tells you otherwise is lying. And, under the definition of a "license", they would record your name and address, require periodic
payments, and demand the fabric be returned to them when you are done with it. That just does not happen.
A copyright statement as defined in the US Copyright Act is using the symbol © along with the word "copyright" (or abbreviated "Copr."), the first year of publication of the work, and the name of the copyright owner. Nothing else. Any other statement by the copyright owner is irrelevant, extraneous, unenforceable and improper. Makers of hair care products frequently place prominent labels on their products stating "Professional Use Only - Not To Be Sold at Retail," or words to that effect. None of the numerous courts that have considered such labels has found them to prevent transfer of title. Nor do label notices create an "implied equitable servitude upon the chattel," such restraints on alienation being disfavored at common law. Clairol, Inc. v. Cody's Cosmetics, Inc., 353 Mass. 385, 393 (1967) (finding labels stating "For Professional Use" to have no legal significance). See, e.g., Tripoli Co. v. Wella Corp., 425 F.2d 932, 941 (3d Cir. 1970) (enforcement of legend on products "marked 'for professional use only' not to be sold retail" would be "a serious restriction on freedom of trade and competition"); Matrix Essentials v. Quality King Distribs., 522 F. Supp. 2d 470, 478-79 (E.D.N.Y. 2007) (finding that the trademark first sale doctrine barred enforcement of "professional use only" restriction); Matrix Essentials v. Cosmetic Gallery, 870 F. Supp. 1237, 1241 (D.N.J. 1994) (refusing to enforce a legend stating "For professional use. Not for retail sale."); Polymer Tech. Corp. v. Mimran, 841 F. Supp. 523, 529-30 (S.D.N.Y. 1994) (no valid claim for unauthorized distribution despite plaintiff's "expression of intent so to restrict sales by labeling its products 'For Professional Use Only.'"). When someone releases fabric into the stream of commerce they effectively have relinquished control over the uses of that fabric. What we find disturbing is that there are so many people who want to believe that a pattern manufacturer or a fabric manufacturer has the right to tell you what you can and cannot do after you buy their product. It just isn't so. Imagine if General Motors tried to tell you where and when to drive a vehicle you purchased from them. Would you listen to them? Of course not! While the pattern on the fabric may be copyrighted, the actual fabric itself is not. The pattern may include images of registered trademarks, such as the logo of the New York Yankees or a John Deere logo, etc. Licensed fabric means fabric that has been licensed by the rights owner to be manufactured and sold. It does not mean the fabric is being sold with a license. Disney licenses Springs Industries to manufacture, distribute and sell fabric that contain images of the Disney characters. That is where the term "licensed fabric" originates. For something to be sold with a license there has to be agreement between the seller and the buyer concerning the terms of the sale. Even though the selvage may make a statement that the fabric is for "non-commercial home use only", that "restriction" is not enforceable primarily because the purchaser does not have agree to the terms before purchase. Copyright law applies to the use of licensed fabric in the application of the first sale doctrine. Bear in mind, the term "licensed fabric" legally only refers to the fact the manufacturer of the fabric has a license to use the images on the fabric. It does not mean the fabric is "licensed" to the purchaser. "Licensed" products require an agreement between the owner of the product and the potential purchaser. Fabric is not "licensed"; fabric is sold. Judge Waterman of the Second Circuit Court of Appeals, said that under the Lanham Act "one can capitalize on a market or fad created by another provided that it is not accomplished by confusing the public into mistakenly purchasing the product in the belief that the product is the product of the competitor." American Footwear Corp. v. General Footwear Co. Ltd., 609 F.2d 655, 662 (2d Cir. 1979), cert. denied, 445 U.S. 951, 100 S. Ct. 1601, 63 L. Ed. 2d 787 (1980) (finding that the manufacturer of a "Bionic Boot" did not infringe the trademark of the producers of the "Bionic Woman" television program). |
| We have two quotes here from the 2nd Circuit Court of Appeals (1991 and 1995) relating to clothing and the fact that clothing is not copyrightable. So if clothing is not copyrightable, what copyright claim could the manufacturer of the fabric make against someone for making shirt out of their "licensed fabric"? Since the fabric design was not copied, nor were the images on the fabric copied, where is the infringement? Any claim it is a derivative fails on the same grounds because a derivative must be copyrightable in its own right. A claim for trademark infringement fails because the product is made from genuine material from the trademark owner. |
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The question is: can someone buy licensed fabric to make and sell items? Yes. Will the owners of the trademarked and copyrighted
images interfere with the sales of these items? They might. They often do interfere.
But, you ask, how can they interfere with the sales of items if the law says you can do this? They interfere because they can. They interfere because they know the great majority of sellers will not fight back by taking them to court. These companies employ lawyers that we refer to as bottom feeders. Some companies, like Hit Entertainment, have continued their interference in the secondary market by terminating eBay auctions. They try demand that once the fabric is made into an item the item has become an unlicensed product and therefore infringing. They also try to insist that there is a likelihood of confusion by potential purchasers. Baloney. When making and selling items from licensed fabrics, we suggest you use the Tabberone Disclaimer as well as careful wording of the title. |
| See also Implied Licenses, also What Is A License, also Patterns, also Licensing & Licenses also End User Licensing Agreements (EULAs) also Quilting. |
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Articles About Licensed Fabrics
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As a rule we do not link to web sites. Some web sites do link to these pages. Links to web pages are a criteria used by some search engines.
These links do not constitute endorsement of these web sites or their products and are added as we locate them.
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