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Movies and TV shows - copyrights and unofficial merchandise

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retrocausality
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PostPosted: Thu Mar 14, 2013 10:46 am    Post subject: Reply with quote

typonaut wrote:
There is a case of a toy maker including the Opel logo on the model of a car, Adam Opel v Autec, which finds that faithful reproduction of a scale model, including the logo of the manufacturer, is not a trade mark infringement.

I think you would have to consider when, or under what circumstances, you could create confusion as to origin in the minds of the public.

Clearly the trade mark holder may use similar images to promote their own marks/products, but that isn't quite the same issue (unless you are copying their designs).


Interesting. Am I reading this correctly?

Faithful reproduction on a scale model isn't an infringement in itself, but if the main car company market its own scale models under that trademark and the existence of the 3rd party scale model company's products affect the sales of the car company's own scale models, then it's an infringement?

Do Adam Opel not have a possible case for Design Rights infringement against the replica manufacturers in this situation?

Am I right in thinking that the 3rd party company's logo being prominent on the packaging, instruction manual (and presumably the underside of the replica car) is the decisive factor, as it takes away the potential confusion in the marketplace as to the origin of the replica?

So in theory, if we, rather than just selling a tshirt with a photo of an F1 car on it, gave the tshirt a prominent logo of our own design above the photo to distinguish it from official merchandise of the motorsports team being shown in the photo, then we're more likely to be ok?

Say for example we came up with a name for the range, like "Motorsports Fanwear" and displayed that name in big letters across the top of the chest of the tshirt, above the photo in each of the designs. Would that make it ok?

And if so, would this ethos not also be applicable to the "passing off" side of things in the case of tshirts about movies, TV shows, bands or celebrities?

E.g. a "Film Buff Unofficial Fanwear" logo somewhere prominent or at least noticeable on the "Nostromo Flight Crew" tshirt mentioned earlier in the thread?

We have a sort of "rival" local tshirt company with a similar catalog of products, that makes official licensed products for some movies but also a large number of unofficial "inspired by..." tshirts. That company even goes so far as to say on its product pages "This tshirt design was inspired by Star Wars" (or whatever). And so, one of the most common things I hear when I'm saying "no" to people bringing me designs, is "CompanyX get away with making designs like this about this movie, so why can't we?" (obviously that's not the actual company name).

I keep saying "They might've got away with it so far, but it's surely only a matter of time before they get hit with a massive lawsuit which bankrupts their company and lands the directors in prison".

They then tend to look at me as if to say "no way, that won't happen, there's a thousand companies on the net selling 'inspired by...' tshirts. Why would the authorities pick on that one, or us for that matter?" and I end up feeling like the bad guy for telling them we can't use their design they've spent half the day making before showing it to me. (Thankfully, they've started asking for my input earlier in their design process, so this is happening less frequently now than it was at first.)

Am I wrong about this? Are our rivals not being hit by lawsuits because their "inspired by" designs are actually OK as long as they appear to a casual observer to be unofficial "inspired by" designs, or even to only be relevant to someone that has seen the movie due to the design not actually mentioning the name of the movie?

For example, a tshirt with the words "I Use The Force like Luke" or "I love Chewie and R2" with original hand-drawn silhouette characatures of the characters mentioned would be clearly "inspired by" Star Wars, but surely nobody on the street would ever believe they were genuine Lucasfilm merchandise? Would that make them OK or is it, like I've been telling the designers, that it's only a matter of time before our rivals get hit with lawsuits?

Our rival seems to operate under the "use a design until we get a cease and desist letter, and then remove that particular design and carry on", but if I understand correctly the info I received earlier in the thread, a C&D wouldn't necessarily be the only action they might receive, and that a large company like Disney might hit them with a court summons simultaneously to sending the C&D letter?

Of course, part of the "problem" is that our own tshirt company began on the back of a successful website design and Search Engine Optimisation company, and so when you searched for the name of any number of popular TV shows and movies with the word "tshirt" afterwards in Google, our website was almost invariably in the first page of results with one of our old "inspired by..." designs.

I keep telling them that this would make us a prime target if any of these TV or movie companies were to think we were infringing their intellectual property and decided they wanted to make an example out of us.
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retrocausality
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PostPosted: Thu Mar 14, 2013 11:40 am    Post subject: Reply with quote

AndyJ wrote:
Phil,
Sorry not to have time to answer this is depth tonight, but take a look at this case which has some of the features you raise:
Irvine v Talksport
This was appealed here and here.
Since UK law doesn't especially protect an individual's personality or image rights, the main weapon celebs have recourse to is the tort of passing off.


Hi Andy, thanks for the reply.

Yeah, I've read about the Irvine-Talksport one before. And also a few others on a similar theme:

- McCullock v Lewis A May (Produce Distributors) "Uncle Mac cereal" case where the cereal company used the celebrity's name and image to sell puffed wheat (found in favour of the cereal company due to the celebrity not having goodwill in the cereal industry);

- Henderson v Radio Corp Ltd case of the dance music record with a photograph of dancers on the sleeve (found in favour of the dancers in opposition to the earlier Uncle Mac case); .

- Children's TV Workshop v Woolworths "Muppets unofficial merchandise" case, (found in favour of CTVW)

- Pacific Dunlop v Hogan "Crocodile Dundee" impersonator in an advert case (found in favour of Hogan)

I was actually thinking more along the lines of long-dead celebrities.... Jimi Hendrix, Elvis Presley, Jim Morrison, James Dean, John Lennon...

As these people have been dead for a number of years, they presumably have no remaining "good will" of their own in the merchandise industry, and the public would not expect any merchandise containing their image to be "official"? (Obviously there's another issue, of the copyrights on photos of those celebrities, but presumably if we had a design that had been hand-drawn from memory of that celebrity rather than from any one particular photograph, then that wouldn't be an issue?)

I think in the US their image rights are passed to the benefactors of their estates for a certain amount of time, but which is different in each state (I think it's something like 80 or 90 years after their death in Illinois), but if I understand it correctly, that would only be an issue if we were to try to sell our tshirts in US states for which those rights were still valid?
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typonaut
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PostPosted: Thu Mar 14, 2013 11:47 pm    Post subject: Reply with quote

retrocausality wrote:
Faithful reproduction on a scale model isn't an infringement in itself, but if the main car company market its own scale models under that trademark and the existence of the 3rd party scale model company's products affect the sales of the car company's own scale models, then it's an infringement?


No, I don't think that's it. I think this case says that, despite Opel having registered its mark for toys, Autec isn't infringing that mark by making a scaled replica of a full-sized car, if it includes that mark where it appears on the full-size car (eg on the front grill or tailgate).

If Autec made a "fantasy" model Opel, and put the Opel mark on it, they probably would be infringing.

retrocausality wrote:
Do Adam Opel not have a possible case for Design Rights infringement against the replica manufacturers in this situation?


I don't really know anything about this area. A few years ago there were lots of people making full size replicas of cars, but that doesn't seem to happen so much these days - whether that's a threat of design rights infringement or just fashion, I don't know.

What little I have read in this field indicates that insurance companies are generally lobbying against IP rights in car panel designs, to facilitate the supply of third party replica parts.

retrocausality wrote:
Am I right in thinking that the 3rd party... So in theory, if we, rather than just selling a tshirt with a photo of an F1 car on it, gave the tshirt a prominent logo of our own design above the photo to distinguish it from official merchandise of the motorsports team being shown in the photo, then we're more likely to be ok?


You're getting into the "how can I put a disclaimer on it" debate again.

In the case of your photographer/painter's output, I don't think you need to worry, except as noted above - you should make sure you avoid confusion as to the origin of the goods.

That may mean selecting an image that does not prominently show a logo.

retrocausality wrote:
I keep saying "They might've got away with it so far, but it's surely only a matter of time before they get hit with a massive lawsuit which bankrupts their company and lands the directors in prison".


They may never face a law suite, but that is the risk that people are prepared to take, in some cases.
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PostPosted: Fri Mar 15, 2013 12:01 am    Post subject: Reply with quote

retrocausality wrote:
I was actually thinking more along the lines of long-dead celebrities.... Jimi Hendrix, Elvis Presley, Jim Morrison, James Dean, John Lennon...

As these people have been dead for a number of years, they presumably have no remaining "good will" of their own in the merchandise industry, and the public would not expect any merchandise containing their image to be "official"? (Obviously there's another issue, of the copyrights on photos of those celebrities, but presumably if we had a design that had been hand-drawn from memory of that celebrity rather than from any one particular photograph, then that wouldn't be an issue?)


I wouldn't really make that bet. All of these people have estates managing their interests, and they are still in the public eye. They are still of public interest, as is their work, and have economic value - otherwise you would not be contemplating printing t-shirts bearing their likeness.

Here's a UK case about the rights to the trade mark "Elvis", and related marks: Elvis Presley Enterprises Inc v Sid Shaw Elvisly Yours

The only thing I would take from this is that clearly rights holders (of some form) are keen to expand their grip on any rights related to the "image" (in the broadest terms) of the celebrities that they represent. I wouldn't be surprised to see new development in this area.
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PostPosted: Wed Mar 27, 2013 10:18 am    Post subject: Reply with quote

Hey guys, me again.

An idea has come forward in our t-shirt company, that we should make retro t-shirts out of "public domain" movie posters for old black and white B-movies.

But how old does a movie have to be for the poster to be "public domain", and does it being PD mean that anyone can sell t-shirts displaying the movie poster, or does it just mean that it's OK to use them for personal use?

I have a vague recollection that personal (not commissioned) art doesn't become PD until something like 70 years after the death of the artist, but isn't it a different amount of time if it's commissioned art?

And in this case, is it not a "passing off" trademark issue with relation to the movie company, in addition to the copyright attached to the poster? Or would we "get away with it" on the grounds that it's unlikely the public would expect these t-shirts to be official, so many years after the movie was made?

Our "rival" t-shirt firm are already selling t-shirts of movie poster artwork from movies like "Attack Of The 50-foot Woman" (1958), "Plan 9 From Outer Space" (1959) and the old Japanese Godzilla movies, and claiming that they're "official" tshirts. Are they likely to have obtained licenses for these, or are they PD, or are our rivals just misinforming the public with regard to the officialness of these t-shirts?

On another note, we're on the verge of having our own licensing company, so we should hopefully be starting to get licenses to create and sell official licensed products in the very near future. Hooray! \o/


Edit 1: How would one go about finding out who owns the rights to old movies, so that we can try to arrange a licensing deal to make official t-shirts?


Edit 2: I found these cases in the US that seem at odds with the final ruling of the Arsenal v Reed case...

http://www.schwimmerlegal.com/2011/03/betty-boop-and-the-return-of-jobs-daughters.html

In the Job's Daughters cases, a jeweller had been making watches with the Job's Daughters emblem on, and were allowed by the courts to continue doing so because many other jewellers were also selling watches with the emblem on despite not being endorsed by Job's Daughters, and so the public would never consider it to be a mark of origin, only of allegiance of the wearer.

"Although these inscriptions frequently include names and emblems that are also used as collective marks or trademarks, it would be naive to conclude that the name or emblem is desired because consumers believe that the product somehow originated with or was sponsored by the organization the name or emblem signifies."

In the Betty Boop case, the Job's Daughters case was mentioned, saying "Jobís Daughters is directly applicable to Fleischerís trademark claims. Even a cursory examination, let alone a close one, of the articles themselves, the defendantís merchandising practices, and any evidence that consumers have actually inferred a connection between the defendantís product and the trademark owner, reveal that A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product. . . . The name and [Betty Boop image] were functional aesthetic components of the product, not trademarks. There could be, therefore, no infringement."



Now, I thought the US and UK were both a part of international trademark and copyright conventions that established continuity on this sort of thing, and yet the Arsenal v Reed verdict seems completely at odds with these US cases.
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AndyJ
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PostPosted: Wed Mar 27, 2013 2:24 pm    Post subject: Reply with quote

Hi again Phil,
The question about when something enters the public domain is complicated so I'll try to deal with the other questions first.
Forget about commissioned works. That is more to do with ownership of the copyright than the duration of the copyright term, and was largely confined to private commissions (portraits, etc). The main reason why privately commissioned art, for instance, might have a different copyright term is because if it isn't published, then different rules apply prior to the 1988 Act coming into force. I think it is highly unlikely that any movie posters would have fallen into that category.
For a Trade Mark to remain valid it has to be re-registered periodically, and in order to do that there must not be a break of more than 5 continuous years of inactivity associated with the mark. So even if early films titles were registered as marks when they first came out, it is highly unlikely any of those marks would still be valid today. For much the same reason a claim of passing-off is unlikely to succeed as it would be difficult to show any current goodwill in the film.
As for the activities of the rival firm, it is perfectly possible that they have licences to reproduce the film posters, or alternatively they have decided to take a chance and just gone ahead and reproduced them. As you are probably aware the word 'official' has absolutely no meaning in this context. At the very least it might assist a claimant in a passing off or trade mark case to establish bad faith on the part of the defendant but would not be actionable per se.
When you start licensing these works, it would be worth enquiring about acquiring exclusive rights within a specific territory (say the UK). This would not necessarily prevent you selling your products anywhere in the world, but it would allow you to prevent other tee-shirt companies in the UK from selling the same posters. As an exclusive licensee your company could commence litigation to prevent this, whereas as a non-exclusive licensee you would have to rely on the rights owner to start legal proceedings.
With old film posters, I would expect the production company or in earlier days, the studio, which made the film to own any rights as may exist in the posters. There are lots of sites you can use to track down these details. Try starting with imdb.com, then sites like the BFI film database. Or of course, use Google. Other routes to the information maybe via the director or screenplay author who will have rights in the film itself (but not the posters) and so may be able to point you towards the current rights owner of the posters.
Which brings me on to the public domain. This has no legal definition but means that a work is free of copyright, either because it never qualified for copyright for various reasons (for example US Government publications) or the copyright term has ended. Once something is in the public domain, anyone may exploit it, either for personal or commercial use.
The complicating factor is deciding which jurisdiction applies to the poster, US or UK law. UK law is relatively simple, so if the poster is obviously produced in the UK for a UK audience, then UK law will apply. If it a US poster then the applicable law may be UK or US law, depending on which is the shorter, subject to the fact that anything produced in the US prior to 1923 is now in the public domain. But apart from that, working out what is and isn't in the public domain in the USA is immensely complicated because it depends on, among other things, whether the copyright was ever registered, and if so whether re-registration was applied for. In a large proportion of cases re-registration was not done and so works created between 1924 and 1976 could well be out of copyright now.
That's a very brief answer for what is a very detailed subject. Hope it helps
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Last edited by AndyJ on Wed Mar 27, 2013 8:52 pm; edited 2 times in total
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retrocausality
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PostPosted: Wed Mar 27, 2013 2:56 pm    Post subject: Reply with quote

AndyJ wrote:
...

But apart from that, working out what is and is n't in the public domain in the USA is immensely complicated because it depends on, among other things whether the copyright was ever registered, and if so whether re-registration was applied for. In a large proportion of cases re-registration was not done and so works created between 1924 and 1976 could well be out of copyright now.
That's a very brief answer for what is a very detailed subject. Hope it helps


Hi Andy, and thanks very much for the reply! (oh, and by the way, did you notice my 2nd edit?)

With regard to the non-registration of copyrights, I thought I'd read somewhere that there was an act passed in 1988-ish that stated that putting a (c) sign on the original work (like the movie poster) was no longer necessary to register copyright, and that this motion had been backdated, so that the copyrights for a great number of works that had been considered public domain due to non-registration were now back in the hands of the creator/beneficiary once more.

Am I mixing up UK and US law here, or did I just manage to get the complete wrong end of the stick about this in the first place?
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PostPosted: Wed Mar 27, 2013 6:12 pm    Post subject: Reply with quote

Hi Phil,
Taking your second edit from the earlier post first, don't necessarily expect much commonality in the caselaw of the US and UK. Yes there are certain international agreements but they merely set the basic standards to which the domestic laws of the signatory countries are supposed to adhere. Copyright is much more tightly constrained by treaties such as the Berne Convention and TRIPS. Trade Mark law is very much more parochial and less constrained by international law. Probably the biggest aggregation of national law on Trade Marks is the EU's Community Trade Mark (CTM) regulations which require a CTM to be recognised throughout the EU. But even that does not mean that UK domestic Trade Mark law has to comply with CTM standards.
Because many landmark US court decisions occur at either the District level or in the Courts of Appeal of the 11 US Circuits, none of which are binding on other courts in other Districts or Circuits, it is often the case that different courts come up with completely opposite findings on substantially similar facts. And of course US case law is not in any way influenced by UK decisions or vice versa. I can only think of one case in which a US court tried to take UK precedents into account, and even then it came up with entirely the opposite decision to what the UK courts have held on that particular issue (the case was called Bridgeman Art Library v Corel Corp, but it's not in any way relevant to your subject).
Moving on to your more recent posting, you are right that the 1976 Copyright Act caused a number of works which had previously been in the public domain to come back into copyright. This was because prior to the 1976 Act*, copyright terms were based on a registration process, which included the requirement for a copyright notice on the work, and failure to include the notice usually meant the work was not protected. These requirements are known as 'formalities', and the Berne Convention, which the USA had not joined at that stage, forbids the use of formalities and requires that signatory countries adopt the minimum standard of the author's life plus fifty years term, which is what the 1976 Act introduced. But in order to deal with works made under the old (registration) system, transitional arrangements had to be made. Some of these resulted in copyright being revived for works which were already in the public domain. This situation was compounded by the so-called Uruguay Round Agreements Act of 1994 which further revived copyright in the US for certain foreign works which had been in the public domain. And the 'Sonny Bono' Copyright Term Extension Act of 1998 further muddied the waters by extending the fifty year post mortem period to 70 years, as well as giving fixed extensions to the terms of some pre-1976 works. As I said previously, working out the term for works created in the US between 1923 and 1976 is extremely complicated (or as one eminent US academic put it 'messy, very messy'). But if you intend to use these film posters only in the UK (or at least not in the USA) then UK law says that only the maximum term which would be available under the relevant UK Law at the time, assuming it is shorter than the current US term, will apply here.

* a secondary change occured because prior to the 1976 Act, copyright disputes had largely been dealt with under State statute law or the common law. From the 1976 Act onwards only Federal law on copyright applied.
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PostPosted: Thu Mar 28, 2013 9:25 am    Post subject: Reply with quote

AndyJ wrote:
But if you intend to use these film posters only in the UK (or at least not in the USA) then UK law says that only the maximum term which would be available under the relevant UK Law at the time, assuming it is shorter than the current US term, will apply here.



Oh, am I reading this correctly? Copyright term is whatever the term was in the law at the time of the creation of the poster (or is it from the death of the creator?)? As oppose to the current term in 2013?

(I was assuming that the current term of 70 years meant that everything created by anyone that died in the last 70 years was out of bounds without a license.)

So, if that's the case, then that means there'll be work that was created in the 60's by some unlucky artiste that died immediately afterwards, that will now be available for anyone to use?
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PostPosted: Thu Mar 28, 2013 2:45 pm    Post subject: Reply with quote

AndyJ wrote:
For a Trade Mark to remain valid it has to be re-registered periodically, and in order to do that there must not be a break of more than 5 continuous years of inactivity associated with the mark. So even if early films titles were registered as marks when they first came out, it is highly unlikely any of those marks would still be valid today. For much the same reason a claim of passing-off is unlikely to succeed as it would be difficult to show any current goodwill in the film.


I've just been reading through the thread again (and that other t-shirt thread you linked, re: planet of the apes) and I noticed this bit in bold, above.

I'm a little confused about trademarks and the definition of "goodwill" if it's something that can be there one day and gone the next without the trademark holders having done anything to change this.

For example, in our situation, where we'd be trying to sell t-shirts containing a PD poster of an old movie... why would it be the case that a 1920's movie, the makers of which had never made merchandise for the movie, would have any less "goodwill" than, say, Star Wars?

If I understand some of the other things I've been told on this thread correctly, then if there's a market for merchandise based on a movie, it shouldn't matter how old that movie is, the right to make and sell that merchandise is in the hands of the owners of the rights to that movie, whether they choose to or not.

Isn't the existence of a market evidence enough of "goodwill"?

Also, for "passing off" to stick, doesn't the infringement have to damage that goodwill in some way?

If, somehow, we were to create a t-shirt design that in some way increased goodwill in a movie that had been long forgotten by mainstream society, say, by causing sales of that movie to skyrocket after our design is seen being worn by a celebrity, then would we still have committed an actionable offence?
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PostPosted: Thu Mar 28, 2013 6:43 pm    Post subject: Reply with quote

retrocausality wrote:


Oh, am I reading this correctly? Copyright term is whatever the term was in the law at the time of the creation of the poster (or is it from the death of the creator?)? As oppose to the current term in 2013?

(I was assuming that the current term of 70 years meant that everything created by anyone that died in the last 70 years was out of bounds without a license.)

So, if that's the case, then that means there'll be work that was created in the 60's by some unlucky artiste that died immediately afterwards, that will now be available for anyone to use?


The authority for my staement is Section 12 (6) of the CDPA:
Quote:
(6)Where the country of origin of the work is not an EEA state and the author of the work is not a national of an EEA state, the duration of copyright is that to which the work is entitled in the country of origin, provided that does not exceed the period which would apply under subsections (2) to (5)

This requires you (or the court) to calculate what the term would be if the work had been created in the UK at the same time and under the same circumstances, and the compare the notional UK term with the actual term claimed in the jurisdiction where the work was actually made.
As far as terms within the UK are concerned, there are 4 significant events:
The 1911 copyright Act set the term for most works at the author's lifetime plus 50 years.
The 1956 and 1988 Acts maintained the life plus 50 years, and the
1995 Duration of Copyright and Related Rights Regulations (SI 1995/3297) extended this to lifetime plus 70 years, in line with an EU Directive on the subject.

That bit is relatively straight forward. However when each new Act or Regulation was introduced, there had to be transitional arrangements concerning works which were still in copyright when the new Act/Regulation came into force, to work out if they would automatically benefit from the change. However unlike in the US, no works were taken out of the public domain once their term had expired.

That is the situation as regards an artistic work which has been published. There a number of important caveats about, amongst other things, unpublished work, anonymous and pseudonymous works and other types of works such as photographs and films made before the 1956 Act, and Crown Copyright etc, but you don't need to worry about them in the context of film posters, provided that you can discover the artist who created the work and find out when he/she died. This is no easy task, and represents the down side of the UK not operating a registration system for copyright.
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PostPosted: Thu Mar 28, 2013 7:34 pm    Post subject: Reply with quote

retrocausality wrote:

I've just been reading through the thread again (and that other t-shirt thread you linked, re: planet of the apes) and I noticed this bit in bold, above.

I'm a little confused about trademarks and the definition of "goodwill" if it's something that can be there one day and gone the next without the trademark holders having done anything to change this.

For example, in our situation, where we'd be trying to sell t-shirts containing a PD poster of an old movie... why would it be the case that a 1920's movie, the makers of which had never made merchandise for the movie, would have any less "goodwill" than, say, Star Wars?

If I understand some of the other things I've been told on this thread correctly, then if there's a market for merchandise based on a movie, it shouldn't matter how old that movie is, the right to make and sell that merchandise is in the hands of the owners of the rights to that movie, whether they choose to or not.

Isn't the existence of a market evidence enough of "goodwill"?

Also, for "passing off" to stick, doesn't the infringement have to damage that goodwill in some way?

If, somehow, we were to create a t-shirt design that in some way increased goodwill in a movie that had been long forgotten by mainstream society, say, by causing sales of that movie to skyrocket after our design is seen being worn by a celebrity, then would we still have committed an actionable offence?

It is important to differentiate between trade mark law and passing-off. Trade mark law is a statutory matter and so the definitions and requirements are generally clear on the face of the Act. This is sometimes referred to as black letter law. Of course the statute law can be clarified and developed by caselaw, but by and large the courts have a good idea what Parliament intended when it introduced the Act. Passing-off on the other hand is a common law tort. There is no authoritative written definition of passing-off or what ingredients are necessary to prove a claim, beyond what the courts themselves have said on the subject.
So the current Trade Marks Act does not actually refer to goodwill, other than in the context that a trade mark may be assigned or otherwise passed on as part of the overall goodwill of a business. The ingredient most like goodwill which comes into play in trade mark disputes, is where a trade mark has a reputation within the area in which it is used, and thus there might be dilution of that reputation if goods bearing an identical or similar mark, but in a different class of registration, are allowed to continue to be sold to the public (s. 10(3) of the TMA).

With passing-off, the courts have over the years established the three elements which need to be established, as you mentioned, namely, that goodwill exists, that the alleged passing-off damages or will damage that goodwill, and there has been misrepresentation in the activities complained of. If the passing-off involves a registered trade mark, it usually easier to prove infringement under the Trade Marks Act than under the tort of passing-off. In theory there is nothing to stop claims on both counts. Where an unregistered trade mark is at issue, there is no alternative but to use the passing-off route.

So, applying this to movie posters, you can see how early posters, where movie titles were not registered as trade marks (it's a comparatively recent thing), are not likely to lead to successful passing-off allegations due to the lack of goodwill on the part of the film's rights owners, and through lack of damage to the goodwill, even if it existed. Titles which are trade marks need to be currently registered to gain protection under the TMA, and I would suggest that only the most recent or the most prominent titles, such as Star Wars or similar high grossing films, are likely to maintain up-to-date registration, but in any case it is very easy to check this.
Undoubtedly, copyright is the biggest problem you face.

Afternote: I thought this blog post might interest you as it looks at a very similar topic: Art and Atifice
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retrocausality
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PostPosted: Fri Apr 19, 2013 3:51 pm    Post subject: Reply with quote

Hey guys, me again!

Since I last posted, we've signed a licensing deal with a music industry photographer, who has worked with many famous names over the last few decades, photographing them in photoshoots and at live concerts as their official photographer.

She sells her photographs online, (much like the motorsports photographer mentioned earlier in the thread) and to our knowledge she has close relationships with the musical artists she photographs, who invite her back again and again in an official capacity.

The plan is to make t-shirts of her photographs.

Now, although we have HER permission to use the photographs, we haven't spoken to any of the musical artists in the photographs.

The powers that be have again asked my opinion on the IP side of things.

From our previous conversations on here, I'm fairly sure that we're still on shaky ground in this situation.

The designs that the designers have created with the photographs are incredible... if anything, they're too good. In my opinion they look like official band merchandise for the artists in question, with the one possible get-out that the band names aren't mentioned at all in the designs.

They were preparing to upload the designs to our stores, and I threw my spanner in the works and suggested that they would need to make sure that there's no way a member of the public would ever think that our t-shirts are official band merchandise, or we'd be susceptible to a passing off suit.

As such, the designers came up with a number of ideas for how to alter the designs to make it obvious to anyone that sees the designs that the t-shirts are an official collection by the photographer, and NOT endorsed by the bands or musical artists in the photos.

After some considerable to-and-fro between the bosses and the designers, with me in the middle saying NO to almost everything they suggested, eventually it was decided that they'd just put the photographer's signature at the bottom of the photo on the shirts.

My question is, will this be enough?

I would be much happier if they'd taken my recommendation to add a border or logo-stamp in a prominent position on the design, with the photographer's name (let's call her Jane Doe for the sake of anonimity) being the focal point... "The Jane Doe Rockstar Photography Collection" or something similar.

The problem is that every one of the designs looked worse for having the stamp included. They look great without the stamp, but not so great with it on. This is why the bosses decided to go without it, and settle for Jane Doe's signature instead, with no other text to show that it's a Jane Doe t-shirt, not a Band-A or Musical-Artist-B t-shirt.

I'm a bit worried about this, particularly as I'm certain the bosses will want the name of the celebrities featured in the photos to be on the website on the pages on which we're selling the shirts.

Any advice?
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AndyJ
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PostPosted: Fri Apr 19, 2013 6:54 pm    Post subject: Reply with quote

Hi Phil,
Glad to see things are moving forward. The problem with passing-off is that it is common law so there are no 'written rules' to guide us. You have looked at a number of passing off cases, from which I'm sure you have gathered, it can be pretty much on the whim of the claimant to bring a case, and then a bit of a lottery which way the court will decide. That said, you know about the three elements generally accepted as being necessary to make out a claim: goodwill, misrepresentation and damage. While most bands will probably be able to establish that they have goodwill among their fans, the other two elements are going to be much harder to establish. Cases like Irvine depended, to a degree, on the misrepresentation aspect of altering the image of Irvine so that he appeared to be holding a radio. Your images alone will not contain any visual element which can be said to deliberately mislead the public, much as with the football scarves in Arsenal v Reed in the passing-off issue, which were held to be no more than tokens of allegiance. And finally it would be hard to argue that there was damage to the goodwill of a band caused by someone else selling tee-shirts. The goodwill would more properly reside in the quality of their music or on-stage performance rather than any memorabilia. Assuming your images do not denigrate the band (which I assume would not be in your company's commercial interests anyway) I think any claimant would have an uphill battle establishing points 2 & 3.
On that basis, I don't think putting the photographer's name on the images really changes things one way or the other, although obviously she may be pleased by it. It doesn't really have the same effect as Mr Reed's notice on his stall which emphasised that his scarves were not official merchandise. The one thing I suggest you check is if the photographer has licensed her images to any of the bands or artists trhemselves. Clearly if she has that could cause problems if the bands have already used the images (or very similar ones from the same series) on any of their official material such as album sleeves, publicity etc.
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AndyJ
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PostPosted: Sat Apr 20, 2013 12:40 pm    Post subject: Reply with quote

Following on from my previous comments, it occurs to me that so far we have just looked at the issue with regard to the bands etc, but earlier in this thread you mentioned what rival tee-shirt companies were doing. If you think there is a chance that these companies might try to take advantage of your designs by marketing something very similar, then you need to look at what protection your designs will have to counter this.
Obviously the copyright in the original photograph(s) will be available, but unless you signed an exclusive licence with the photographer, you won't be able to start any legal action against an infringer; that has to be done by the copyright owner, and she may not wish to do this. Also, unless you have an exclusive or sole licence there is nothing to stop the photographer also selling licences to your rivals. The difference between the two types of licence is: an exclusive licence means that only your company can use the photographs and even the photographer is prevented from using them for the term of the licence, whereas a sole licence allows your company and the photographer to exploit the works, but the photographer cannot sub-licence any third party. This of course refers back to my earlier remark about whether the photographer had already licensed her images to the bands.
Another way of getting additional protection is to register the designs with the IPO. This has a number of advantages, in that it is a relatively simple process and can give your a monopoly in the design, and designs which are materially very similar, for up to 25 years, in 5 year chunks. And unlike trade mark registration you don't have to specify the goods or services to which the design will apply, so if you decide to bring out a range of mugs or bedcovers using the same designs they will be protected too. This can work out quite expensive if you have many designs to register, but doing them in batches can save money. Basically each item costs £20 plus there is a £20 fee per overall registration (eg one item costs £20 + £20 = £40, whereas 3 items costs (3 X £20) + £20 = £70). You can find more details here.
If necessary, you can register for a Community-wide design right. Details can be found on the IPO website.
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