Penguin books copyright claim

[Gaz1984mcc]

Hi Everyone sorry to be a pain I received and email earlier from penguin books. Regarding my personalised book cover prints that I sell on my website.

They have asked me to remove them from sale by the 12th of this month. I would like some advice as to if I should just remove the products or pursue trying to fight the claim by finding a copyright lawyer.

I have attached a screenshot of my prints vs the penguin book covers I understand that mine have the same color at the top and bottom and cream in the middle. Which they are saying infringes there copyright.

Do they really own the right to the colour scheme and it's positioning.

Below is a screenshot of my book and there book cover prints which they sell on the penguin book website.

My prints are totally customised, customers can choose any colour they want, have any text on the print. Remove parts of the print and add part of the print.



Please let me know your thoughts.

Many Thanks

Gaz

[AndyJ]

Hi Gaz and welcome to the forum.

Unfortunately your image hasn't appeared so it's hard to be sure about the similarity between the book covers. However I suspect that Penguin would be hard pushed to bring a successful claim under copyright for something which resembles their classic cover format. What I think they may have in mind is a claim for passing off. This tort is based on the premise that someone (you) mispresents their goods as being those of the other brand, and which thus causes financial or reputational damage to that other brand owner. It is exploiting their goodwill.

I think you have to analyse why you chose that particular format for your covers. If it was indeed in order to evoke the Penguin style, then it may be better to not fight their claim unless you can demonstrate a defence such as parody.

[Gaz1984mcc]

Thank you so much for the reply how do you post an image on here I just tried a Google drive link hoping that would work.

https://drive.google.com/file/d/1jsHP6M ... p=drivesdk

Thanks
Gaz

[Gaz1984mcc]

Dear Gary,

Our tri-band classic book cover design features on the infringing listings, this includes the following design: bold coloured sections at the top and botton, a cream banner in the middle, and in the top coloured section a black rounded diamond shape. https://www.magic-posters.com/products/ ... fdb4&_ss=r

The Design bears a close resemblance to the classic covers. We are concerned that your use is likely to confuse the public into believing that the posters are linked to or authorised Penguin products, which is not the case.

[Gaz1984mcc]

That's the email from penguin. The thing is do people really think they are buying a penguin book cover from my site I doubt it. To be honest my customers are just buying a personalised book cover and most of the prints sold have nothing to do with books. They are usually quotes, family names etc that customers want on the prints.

I don't even know where I go from here with this. I remove the diamond at the top and maybe put a circle and put the book type. But then they are pretty much saying I can't have a middle part missing in white where I could put the quote for a customer.

It seems like over enforcement of what is in effect 3 lines on a book cover. There's so many brands that use 3 lines. Flags that use 3 lines. Even the diamond shape at the top is a registered trademark with a different company.

And then I see famous artists like harlaand miller the connor brothers and james mcqueen literally selling these paintings of prints with and without the logo. How do they get away with this yet mine is just a book cover with 3 lines on.

Thanks
Gaz

[AndyJ]

Hi Gaz,

Thanks for the additional information. I think that Penguin's email is hinting at passing off rather than a copytight claim. How likely they would be in successfully bringing a claim in court is anybody's guess. Fundamentally they want to prtoect their branding and are likely to use high price lawyers to do so. That might mean that it would be an expensive business for you to defend the claim, and even if you won, there's a chance that you wouldn't get your legal costs back. Of course they are bullying you, but they aren't doing anything that most other large brand owners wouldn't do too, unfortunately.

[Gaz1984mcc]

I totally understand thanks for your reply. Do you think they would win a passing off claim against my print. Is there anything I can chnage on my print that would stop the claim?

[Gaz1984mcc]

Forgot to say that I would be willing to fight this claim if I thought that they probably wouldn't win but I have no idea.

[AndyJ]

I am not aware of any case in which Penguin have actually sued anyone over this sort of issue, but I am aware that you are not the first to receive a cease and desist letter from them. As I mentioned, if they decided to make an example of you they can be expected to hire some expensive lawyers to argue their case. It's hard to say how the court would decide. Take a look at a couple of other passing off cases to see how the courts weigh up the 3 factors in a typical passing off case.
Thatchers v Aldi
Phones4U Ltd vs Phone4u.co.uk Internet Ltd
Shazam Productions v Only Fools the Dining Experience (this case involved both copyright and passing off)

Incidentally, there is another form of protection known as Registered Design Right which protects the shape, appearance and conformation of a product. I have done a quick check and it does not appear that Penguin have registered the classic layout as a design, which is fortunate.

[Gaz1984mcc]

Thanks for the reply I have replied to penguin a few times but not had much of a response. Is this normal procedure for a company to send a cease and desist email. But not willing to engage in any conversation regarding this. I have asked then directly what they would like removing from the print but no response.

Thank you
Gaz

[Geo12345]

Hi Gaz,

I read this thread with a lot of interest and was wondering if you had had any further correspondence from Penguin /did they get back to you?

I have a company that makes note books and am looking into the possibility of producing some that would have a similair look and feel to an old penguin book. Was doing a bit of research and came across your thread. On Etsy I have found people selling mugs / posters etc with the actual Penguin Logo on them and they definitely aren't official products... Strange that they would come after you and not them?

I looked at your posters ( which are great BTW) and noticed you are still selling them.. did you get legal advice that told you that what you were doing was ok... Penguin just being bullies and to ignore them?

Be very grateful for anything you'd be willing to share.

Many thanks

Geoff

PS Andy - this is an amazing source of information. thank you!