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International and UK law regarding individual 'likeness'

Posted: Thu Sep 15, 2016 7:01 am
by bbloke
Hi again, you lovely people!

Got a bit of an interesting international issue for you to ponder...

I sell a badge that simply says 'Every Day Is Like Sunday'. The phase is a song title by Morrissey.

I think I'm right that in UK law a song title can't be copyrighted. I also know that both 'Morrissey' and 'Every Day Is Like Sunday' are not registered trademarks.

I appreciate that a 'passing off' case could feasibly be raised, but I've been happy to take that risk as negligible.

Now here's where it gets interesting.

I sell this item on the Etsy marketplace. I'm based in the UK and I pay my Etsy seller fees to their company based in Ireland.

A US based T-Shirt company have made Etsy take down my product listing with a DCMA claim that I am infringing on "Marks, images, likeness, logos or other identifying indicia of Artists including Morrissey"

I have checked and this company appear to have a contract with Morrissey to sell merchandise in the US.

I have checked on the US Trademark database and there is no registered trademark for 'Morrissey' in the US.

I believe that this claim is speculative, especially as I've not even used a 'likeness' of Morrissey.

While I appreciate that you may not be experts in US law, I'm more interested in the international aspects here.

Is there a legal basis for a US company to restrict my use of a phrase that is OK in UK law?

Can this claim under US law apply if my product is in the UK and Etsy are in Ireland?

Etsy have an option to counter a DCMA claim, but in it I have to state that I will abide by US law and any US court decision including any subsequent legal fines and costs. Is that even enforceable?


Posted: Thu Sep 15, 2016 8:17 pm
by AndyJ
Hi Darren,

This sounds like someone is abusing the DMCA takedown system in order to protect their own merchandise.

The wording "images, likeness, or other identifying indicia of Artists" has probably been taken from one of the various Publicity Rights statutes which have been enacted by a number of States in the USA. There is no Federal law on publicity right. Probably the most restrictive of these state laws is the one for California (which just happens to have quite a lot of celebrities among its inhabitants).

Interesting though all of that is, you do not come under the jurisdiction of the California or any other US state courts and so this claim is groundless. And of course the DMCA takedown system is only supposed to be used for alleged copyright infringement - which is not being claimed here - not other forms of intellectual property or personality rights, so I don't think you should have any trouble providing a counter notice. Incidentally, Etsy in the US is incorporated in the State of New York, which also has a Publicity Rights law, but it is very limited in its scope and application:
§ 50. Right of privacy. A person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.
§ 51. Action for injunction and for damages. Any person whose name, portrait, picture or voice is used within this state for advertising purposes or for the purposes of trade without the written consent first obtained as above provided may maintain an equitable action in the supreme court of this state against the person, firm or corporation so using his name, portrait, picture or voice, to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use and if the defendant shall have knowingly used such person's name, portrait, picture or voice in such manner as is forbidden or declared to be unlawful by section fifty of this article, the jury, in its discretion, may award exemplary damages. But nothing contained in this article shall be so construed as to prevent any person, firm or corporation from selling or otherwise transferring any material containing such name, portrait, picture or voice in whatever medium to any user of such name, portrait, picture or voice, or to any third party for sale or transfer directly or indirectly to such a user, for use in a manner lawful under this article; nothing contained in this article shall be so construed as to prevent any person, firm or corporation, practicing the profession of photography, from exhibiting in or about his or its establishment specimens of the work of such establishment, unless the same is continued by such person, firm or corporation after written notice objecting thereto has been given by the person portrayed; and nothing contained in this article shall be so construed as to prevent any person, firm or corporation from using the name, portrait, picture or voice of any manufacturer or dealer in connection with the goods, wares and merchandise manufactured, produced or dealt in by him which he has sold or disposed of with such name, portrait, picture or voice used in connection therewith; or from using the name, portrait, picture or voice of any author, composer or artist in connection with his literary, musical or artistic productions which he has sold or disposed of with such name, portrait, picture or voice used in connection therewith. Nothing contained in this section
shall be construed to prohibit the copyright owner of a sound recording from disposing of, dealing in, licensing or selling that sound recording to any party, if the right to dispose of, deal in, license or sell such sound recording has been conferred by contract or other written document by such living person or the holder of such right. Nothing contained in the foregoing sentence shall be deemed to abrogate or otherwise limit any rights or remedies otherwise conferred by federal law or state law.

Source New York State Civil Rights Code, Article 5)

Posted: Fri Sep 16, 2016 7:40 am
by bbloke
Hi AndyJ,

Thanks, again, for your response!

There's one thing I'd like your opinion on. On the Etsy DCMA counter notice, I have to agree to the following:

"You consent to the jurisdiction of the Federal Court for the judicial district in which you are located, or if your address is located outside the United States, for any judicial district in which Etsy is located, and that you will accept service of process from the person who provided the original notification or an agent of such person"

Given that you've said I am not under the jurisdiction of the courts in question, would I be waiving that by agreeing to the condition above?

Does 'service of process' mean being served with a court order and if so, would I be obliged to respond to such?

Posted: Fri Sep 16, 2016 6:53 pm
by AndyJ
Hi Darren

Clearly by accepting Etsy's terms since you live outside the USA you would be accepting the jurisdiction of any judicial district in which Etsy is located, which sounds to me to be rather wide! As I mentioned one of the places Etsy is located is New York state, and another is the Republic of Ireland. My understanding is that that your contract is with Etsy Ireland, and so I would have thought that that would be the appropriate jurisdiction in this instance. Since Ireland doesn't have a Right of Publicity law and its copyright law is substantially the same as the UK, I don't think you are at any risk by agreeing to this term.

Accepting service of process means agreeing to accept the jurisdiction of the court, although the court itself may not necessarily accept that it has jurisdiction over you! And even if it did and found against you (say by default as you did not appear to answer the claim) then their decision would be a civil matter and couldn't be enforced if the Court was in the USA. A court in Ireland could enforce a judgment due to reciprocal rules between EU member states, but as I have said, an Irish court would not hear a claim based on a US state law.

And if all of that was not muddled enough, don't forget that the DMCA takedown is invalid because it does allege an infringement of any copyright law.

Posted: Sat Sep 17, 2016 7:46 am
by bbloke
That's set my mind at rest.

Thanks for the comprehensive response, AndyJ!

Posted: Fri Oct 07, 2016 4:34 pm
by bbloke
Hi! I thought you might like an update on this.

Etsy refuse to process my counter DMCAs as they say - and I find this ironic - that "it's not a DCMA issue".

They recommended that I contact the complainant and resolve it with them.

I did contact the complainant, but they never bothered to reply.

As far as I can see there's nothing else I can do. It's Etsy's playground and I have to abide by their rules.


Posted: Sat Oct 08, 2016 7:01 am
by AndyJ
Hi bbloke

And they say that Americans don't understand irony. This rather supports the theory!

Posted: Mon Oct 10, 2016 3:20 pm
by bbloke
Further to all this...

After much email discussion with Etsy they have told me that I must comply with all US copyright/publicity rights/trademark law no matter where I am and no matter where any customer is. It's in their terms of use and by using their site I acknowledge that I agree.

So there you are. :D

They also told me that they automatically approve any complaint as the complain form is submitted 'under penalty of perjury'.

That sounds like a buck-passing clause!

Posted: Tue Oct 11, 2016 9:02 am
by CopyrightAid
If they have taken it down under penalty of perjury as a DMCA, then if they are abiding by US law then you should be allowed to make a counter claim (under penalty of perjury):
In order to protect against the possibility of erroneous or fraudulent notifications, certain safeguards are built into section 512. Subsection (g)(1) gives the subscriber the opportunity to respond to the notice and takedown by filing a counter notification.
In order to qualify for the protection against liability for taking down material, the service provider must promptly notify the subscriber that it has removed or disabled access to the material. If the subscriber serves a counter notification complying with statutory requirements, including a statement under penalty of perjury that the material was removed or disabled through mistake or misidentification, then unless the copyright owner files an action seeking a court order against the subscriber, the service provider must put the material back up within 10-14 business days after receiving the counter notification.
Penalties are provided for knowing material misrepresentations in either a notice or a counter notice. Any person who knowingly materially misrepresents that material is infringing, or that it was removed or blocked through mistake or misidentification, is liable for any resulting damages (including costs and attorneys’ fees) incurred by
the alleged infringer, the copyright owner or its licensee, or the service provider.

Conversely, if it really was "not a DMCA issue" I would be curious to know on what grounds they did take action.

Posted: Tue Oct 25, 2016 10:59 am
by bbloke
More news!

I'm afraid my Etsy shop has been closed because of another complaint about infringement. :(

After recent events I went through all my listings and removed anything that I thought would be a problem.

However, I got a 'trademark infringement' email to day because of a pac-man design that I had included in a set of 'eighties' themed badges:


OK, fair enough that it's clearly a reference to pacman, but on the other hand I drew the thing myself and the listing on Etsy didn't mention pacman at all.

Also, these buttons fall into the Class 26 category of goods, but Naimco do not have a trademark for Pacman in this class.

Again, Etsy say I should pursue Naimco and that they stand by the infringement allegation as it was brought under 'penalty of perjury'

I honestly don't know where to go from here.

It's not all doom and gloom as Etsy are, frankly, a very small part of my income revenue. Nevertheless I'd like to fight this if I can.

Posted: Tue Oct 25, 2016 6:37 pm
by AndyJ
Hi again Darren,

It sounds as though Etsy just wants an easy life and conveniently chooses to ignore some of the legal niceties, such as the fact that the DMCA takedown system is being (ab)used to bring trade mark and personality right claims. However that is not illegal unlike the fact, highlighted by CopyrightAid, that you should be afforded the opportunity to counter any claims made under the DMCA.

On the matter of the Pacman claim, since Etsy wish to operate under US law. this needs to be viewed in the context of any US registration for the Pacman 'character', and US trade mark law. The Lanham Act is somewhat broader in its definition of infringement than the corresponding UK Trade Marks Act 1994. Here's what § 1114(1) says:
(1) Any person who shall, without the consent of the registrant—
  • (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
    (b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,
shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.
Somehow I don't see it being worth your while pursuing the matter with Naimco, even if you can show that they have failed to register the graphic in Class 26 in the USA.

Posted: Tue Oct 25, 2016 6:57 pm
by bbloke
Thanks AndyJ.

I'm giving up on Etsy. They said I couldn't appeal the decision and will not reinstate my seller account - even if any claims were withdrawn.

It's really galling 'cos Etsy is full of people selling knock off stuff and I do my best to avoid that kind of thing.

What seems to have caught me out is that I started using their advertising campaign tools and so my items were bumped to the top of the searches, which - ironically - made them easy prey for bogus complaints.

This is making me re-evaluate my business. Given the way Etsy, Ebay, Amazon etc are handling IP complaints, I'm removing from sale any designs which may possibly be an issue.

But what worries me is that I can't see how I can protect my designs from any Tom, Dick or Harry complaining, no matter how groundless.

Could I get IP insurance to cover this kind of problem?

Posted: Tue Oct 25, 2016 7:43 pm
by AndyJ
bbloke wrote:Could I get IP insurance to cover this kind of problem?

Yes, there is a growing market for such cover. I suggest the best place to start would be the Government's own advice on the subject, and then follow up by checking some independent advice, such as that provided by the Chartered Institute of Patent Attorneys, before finally looking at a few of the specialist underwriters (eg here and here) to see whether what they have to offer would suit your needs and your wallet. Google should provide many other examples.

Disclaimer. I am not endorsing either of the brokers mentioned as I have no knowledge of their products or services.

Posted: Tue Oct 25, 2016 7:47 pm
by bbloke
Thanks, again, AndyJ.

Food for thought...


Posted: Thu Oct 27, 2016 12:26 pm
by bbloke
Hi again,

Sorry - you must be sick of hearing from me!

My partner and I have been arguing about which designs to get rid of and talking in circles about where to 'draw the line'.

We're settling on purely text designs with simple phrases. However we're worried that some of our designs could still be defined as derivative and therefore infringing.

For example we have a badge that says 'All you need is love', which we describe as a 'sixties hippies fancy dress accessory'.

On the one hand, it's a simple phrase, so surely it can't be subject to copyright, and it's a sentiment that is typically associated with the sixties era, so it's ok to describe it as that.

On the other hand this could be seen as a Beatles reference.

Which is right, or is that just too hard to say?

We're driving ourselves nuts! :D