Having previously investigated through this forum (and other places ), having found no reason for any infringement issues I have been making and selling cuff links etc made from original images cut directly from comic books, annuals etc. mainly using Marvel and DC images. I don’t use trademarked logos or images such as the batman wings etc. I do not copy or alter the images in any way or use decoupage techniques.
I have been asked by the shop selling these items to prove that I have the necessary permission and I am not infringing any copyright issues. Can you confirm I am not infringing copyright or trademarks, I do not need permission from the originators of the art work and that there are no trading standard matters that could arise from the sale of my items.
Thank you
using comic books etc
Hi sarah
Let's take the trade mark issue first. Generally speaking trade marks have to be registered before they gain legal protection, which means that this is mainly confined to company or product names and logos. Occasionally some slogans (things like "Have a break, Have a Kitkat") get registered along with more esoteric qualities such as colours (the red soles of Christian Laboutin shoes for example). But unless your cuff links etc use any such registered marks, your use will not amount to trade mark infringement. And even if you do use a registered mark, or a substantial part of it, that won't necessarily amount to infringement if it is unlikely to confuse anyone as to the origin of the goods. A major factor in this last point is the categories of product the trade mark has been registered for. For example unless Marvel have registered a super hero which you have used, in Class 14 (Personal jewellery) they face an uphill battle in trying to show confusion, whereas if you were selling magazines the proximity of the two products in the marketplace would make the possibility of confusion much greater. That's why we can have the same trade mark used by Apple the phone and computer maker and Apple the record label.
There is a body of common law which relates to something called passing-off, which may be applied where a trade mark (or similar feature) has not been registered but has nonetheless become closely connected to the goodwill in a company or product etc. This is much more likely to cause you problems, because clearly one of the reasons you wish to use parts of these comics is the association with the original item. I suspect that the appeal of the cuff links is greatest among fans of the comics who recognise and value the connection. However in order to prove passing off, a claimant needs to show that he has goodwill in his product, that there has been misrepresentation leading to confusion in the minds of customers as to the true origin of the goods, and that as a result damage has been caused to the claimant. Factor number three - damage - would be quite hard to show in your case, because clearly your sales in no way undermine the saleability of the comics themselves. The best way to resist factor number two - misrepresentation - is to clearly announce to your customers that your products are not licensed or approved by DC or Marvel Comics etc. There is little you can do about factor number one - goodwill - as that undoubtedly exists amongst the fans of the comics.
Turning to copyright, things are much clearer. As you are not copying but re-purposing the original works, you are covered by something called the exhaustion of rights. This doctrine says that once something has been legitimately sold, the rightsowner's ability to control what happens to the disposal of the work is extinguished. For example if you buy a first edition of a rare book, and subsequently re-sell it for a greater amount than you paid for it, the copyright owner has no come back. Equally, if you decide to give the book away, or burn it, that is also outside the control of the copyright owner.
One small twist in this otherwise straightforward doctrine came about recently in the decision of the Court of Justice of the European Union (CJEU) in a case called Art & Allposters International BV v Stichting Pictoright. This case involved a company (Allposters) which bought posters featuring old, out-of-copyright works of art, and by some chemical process transferred the printed image onto a canvas background, so that the finished product looked like an oil painting. Pictoright owned the copyright in the original posters and complained that this process infringed their copyright, not least because Allposters was selling their canvases for many times the cost of the posters. The CJEU said that this was indeed infringement and that the exhaustion of rights doctrine did not apply because Allposters had changed the tangible medium which comprised the copyright work (ie the paper substrate of the poster). This decision has been criticised by a number of people because, firstly, it makes the law less clear, and secondly because the court took into account the greater value of the secondary work, which should really be irrelevant to their decision.
If you do not destroy the medium on which the images you use are carried, this court decision should not effect what you want to do. However it does introduce a level of uncertainty which was not there before.
Let's take the trade mark issue first. Generally speaking trade marks have to be registered before they gain legal protection, which means that this is mainly confined to company or product names and logos. Occasionally some slogans (things like "Have a break, Have a Kitkat") get registered along with more esoteric qualities such as colours (the red soles of Christian Laboutin shoes for example). But unless your cuff links etc use any such registered marks, your use will not amount to trade mark infringement. And even if you do use a registered mark, or a substantial part of it, that won't necessarily amount to infringement if it is unlikely to confuse anyone as to the origin of the goods. A major factor in this last point is the categories of product the trade mark has been registered for. For example unless Marvel have registered a super hero which you have used, in Class 14 (Personal jewellery) they face an uphill battle in trying to show confusion, whereas if you were selling magazines the proximity of the two products in the marketplace would make the possibility of confusion much greater. That's why we can have the same trade mark used by Apple the phone and computer maker and Apple the record label.
There is a body of common law which relates to something called passing-off, which may be applied where a trade mark (or similar feature) has not been registered but has nonetheless become closely connected to the goodwill in a company or product etc. This is much more likely to cause you problems, because clearly one of the reasons you wish to use parts of these comics is the association with the original item. I suspect that the appeal of the cuff links is greatest among fans of the comics who recognise and value the connection. However in order to prove passing off, a claimant needs to show that he has goodwill in his product, that there has been misrepresentation leading to confusion in the minds of customers as to the true origin of the goods, and that as a result damage has been caused to the claimant. Factor number three - damage - would be quite hard to show in your case, because clearly your sales in no way undermine the saleability of the comics themselves. The best way to resist factor number two - misrepresentation - is to clearly announce to your customers that your products are not licensed or approved by DC or Marvel Comics etc. There is little you can do about factor number one - goodwill - as that undoubtedly exists amongst the fans of the comics.
Turning to copyright, things are much clearer. As you are not copying but re-purposing the original works, you are covered by something called the exhaustion of rights. This doctrine says that once something has been legitimately sold, the rightsowner's ability to control what happens to the disposal of the work is extinguished. For example if you buy a first edition of a rare book, and subsequently re-sell it for a greater amount than you paid for it, the copyright owner has no come back. Equally, if you decide to give the book away, or burn it, that is also outside the control of the copyright owner.
One small twist in this otherwise straightforward doctrine came about recently in the decision of the Court of Justice of the European Union (CJEU) in a case called Art & Allposters International BV v Stichting Pictoright. This case involved a company (Allposters) which bought posters featuring old, out-of-copyright works of art, and by some chemical process transferred the printed image onto a canvas background, so that the finished product looked like an oil painting. Pictoright owned the copyright in the original posters and complained that this process infringed their copyright, not least because Allposters was selling their canvases for many times the cost of the posters. The CJEU said that this was indeed infringement and that the exhaustion of rights doctrine did not apply because Allposters had changed the tangible medium which comprised the copyright work (ie the paper substrate of the poster). This decision has been criticised by a number of people because, firstly, it makes the law less clear, and secondly because the court took into account the greater value of the secondary work, which should really be irrelevant to their decision.
If you do not destroy the medium on which the images you use are carried, this court decision should not effect what you want to do. However it does introduce a level of uncertainty which was not there before.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
the saga continues.....
they are now using lee versus art as a reason i cannot sell my cuff links in the shop . i have looked into it and don't think this has any bearing to my situation . The law cited is American and there are conflicting results from the same case.
Whilst I have not have altered the original images is the end result different enough for them to be counted as a "Derivative work", and therefore making this case null and void in their argument ?
They are requesting I still get a '' permission ''. Would a licence from the CLA provide me the relevant cover ? I feel I don't need permission or am not breaking any UK laws (and yes its is an expensive way to ensure I can sell a couple of pairs of cuff links a week when I don't think i need to do anything !)
they are now using lee versus art as a reason i cannot sell my cuff links in the shop . i have looked into it and don't think this has any bearing to my situation . The law cited is American and there are conflicting results from the same case.
Whilst I have not have altered the original images is the end result different enough for them to be counted as a "Derivative work", and therefore making this case null and void in their argument ?
They are requesting I still get a '' permission ''. Would a licence from the CLA provide me the relevant cover ? I feel I don't need permission or am not breaking any UK laws (and yes its is an expensive way to ensure I can sell a couple of pairs of cuff links a week when I don't think i need to do anything !)
Hi sarah,
I am confused as to why the shop feels that Lee v ART supports the need for you to get a licence. Firstly as you say that was decision by an American court so doesn't apply here in the UK, and rather more importantly the Appeals Court of the 7th Circuit said there was no infringement in what the ART company were doing. If your process is similar to what ART were doing with Lee's cards, then you have nothing to fear from that particular decision even if it did apply here.
However if the 'shop' is actually an online presence such as Etsy, then that may be why they want to stay within the US law*, but clearly they have misunderstood the finding in Lee v ART.
As for whether you are creating derivative works, I think it is highly unlikely that a UK court would take this view. Indeed the legislation does not include the word. The nearest we get is 'adaptation' (see section 21), but that is not something which applies to artistic works, such as the comics, and your cufflinks, which would be considered works of artistic craftsmanship, which also come under the heading of artistic works. That is not say that the UK courts have never found a second work to have been derived from an earlier one (see for instance the Red Bus case), but in such cases there has to have been copying of the original. You are clearly not copying anything and so I maintain you do not need a licence.
Unfortunately if you approach a collecting society such as the CLA, they are much more likely to take your money rather than confirm that you don't need a licence because, frankly, their business is to make money for their members.
If this is a bricks and mortar shop here in the UK, then I think they are seriously misleading themselves over this, although ultimately I suppose they have every right to refuse to sell your products if they are particularly risk averse. Equally, you are perfectly entiled to find a new outlet for your goods. Good luck!
* If the shop insists on basing its policies on US court cases, then Mirage Editions, Inc. v. Albuquerque A.R.T. Co, 856 F.2d 1341 (9th Cir. 1988) is far more relevant because in that case a company incorporating pages from book into ceramic tiles was found to have infringed the copyright in the book. The problem with a lot of US caselaw is that there are conflicts between the judgments off the various Circuits, which aren't bound by each other's decisions. Only a ruling by the Supreme Court has binding effect on all the Circuits. Derivative works are notorious for coming within the Fair Use doctrine, which holds that if the new work is 'transformative' and economically separate from the original in that they appeal to different sorts of buyers, then this can be fair use. The most notable recent decision of this kind is probably Cariou v Prince.
I am confused as to why the shop feels that Lee v ART supports the need for you to get a licence. Firstly as you say that was decision by an American court so doesn't apply here in the UK, and rather more importantly the Appeals Court of the 7th Circuit said there was no infringement in what the ART company were doing. If your process is similar to what ART were doing with Lee's cards, then you have nothing to fear from that particular decision even if it did apply here.
However if the 'shop' is actually an online presence such as Etsy, then that may be why they want to stay within the US law*, but clearly they have misunderstood the finding in Lee v ART.
As for whether you are creating derivative works, I think it is highly unlikely that a UK court would take this view. Indeed the legislation does not include the word. The nearest we get is 'adaptation' (see section 21), but that is not something which applies to artistic works, such as the comics, and your cufflinks, which would be considered works of artistic craftsmanship, which also come under the heading of artistic works. That is not say that the UK courts have never found a second work to have been derived from an earlier one (see for instance the Red Bus case), but in such cases there has to have been copying of the original. You are clearly not copying anything and so I maintain you do not need a licence.
Unfortunately if you approach a collecting society such as the CLA, they are much more likely to take your money rather than confirm that you don't need a licence because, frankly, their business is to make money for their members.
If this is a bricks and mortar shop here in the UK, then I think they are seriously misleading themselves over this, although ultimately I suppose they have every right to refuse to sell your products if they are particularly risk averse. Equally, you are perfectly entiled to find a new outlet for your goods. Good luck!
* If the shop insists on basing its policies on US court cases, then Mirage Editions, Inc. v. Albuquerque A.R.T. Co, 856 F.2d 1341 (9th Cir. 1988) is far more relevant because in that case a company incorporating pages from book into ceramic tiles was found to have infringed the copyright in the book. The problem with a lot of US caselaw is that there are conflicts between the judgments off the various Circuits, which aren't bound by each other's decisions. Only a ruling by the Supreme Court has binding effect on all the Circuits. Derivative works are notorious for coming within the Fair Use doctrine, which holds that if the new work is 'transformative' and economically separate from the original in that they appeal to different sorts of buyers, then this can be fair use. The most notable recent decision of this kind is probably Cariou v Prince.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Rickster007
- New Member
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- Joined: Wed Nov 02, 2022 6:38 pm
Re: using comic books etc
Does it infringe copyright re selling comics as I’ve bought a job lot of them from EBay and I’m looking to frame a few nice ones up and re sell them!