Old Magazine and Book Pages

[jj1999]

Hi everyone.

I've been selling pages removed from my own collection of vintage magazines and books (mainly full page photos of famous musicians with a few film posters too) on Etsy since just before Christmas.

I've recently received a few notices of copyright infringement and today received a notice of trademark infringement from the legal representatives of a very famous and long deceased guitarist.

My question is: does what I'm doing actually contravene copyright and trademark laws or is it perfectly above board (as I believed it be).

Any help or advice on this would be very much appreciated.

Cheers

[AndyJ]

Hi jj

Just so that I am entirely clear about what you are doing, can you confirm that you have been cutting out the original illustrations from your magazines and books and only selling the original page (once, obviously) and there has been no copying of any of the material, save perhaps to produce a small thumbnail for the purpose of advertising* what is for sale?

If this describes what you do then there is no copyright infringement as you are lawfully exploiting something known as the First Sale Doctrine (in the USA) or Exhaustion Doctrine (in Europe and the UK). This doctrine is largely the same on both sides of the Atlantic, and says that since you are the legal owner of a work which is protected by copyright, you have the right to re-sell or give away that physical item and the copyright owner's right of distribution over that particular item was exhausted or ceased to exist at the time of the legal sale of the item to you. It is only the distribution right which is ended; the copyright owner's rights of reproduction and publication are unaffected.

Moving on to the trade mark issue, I assume that again the illustration your sold was taken from a book or magazine which you own and you offered it for sale using the musician's name to describe the image. If that is the case, then there is no trade mark infringement since you have used the name of the artist descriptively and that is permitted by law (see section 11 (2)(c) of the Trade Marks Act 1994). There is really no other way if describing a picture of an artist without using his or her name (unless the artist is Prince, in which case you might use the symbolic name he afopted for part of his career). The law recognises this and allows a trade mark which consists of a person's name to be used descriptively in this way. Furthermore, trade marks exist to protect the bona fide goods which are marketed under the specific trade mark so that the buying public can be sure they are getting a genuine product. Since you appear to be selling genuine pages from magazines which incorporate a genuine portrait of the artist, there is no element of falsification and so thus there cannot be any trade mark infringement.

I hope this clarifies things for you.

*The use of small thumbnail image for the purpose of advertsing etc is lawful under section 63 of the UK Copyright Designs and Patents Act 1988, and in the US it is lawful by virtue of a case known as Perfect 10 vs Amazon & Google

[jj1999]

Hi jj

Just so that I am entirely clear about what you are doing, can you confirm that you have been cutting out the original illustrations from your magazines and books and only selling the original page (once, obviously) and there has been no copying of any of the material, save perhaps to produce a small thumbnail for the purpose of advertising* what is for sale?

If this describes what you do then there is no copyright infringement as you are lawfully exploiting something known as the First Sale Doctrine (in the USA) or Exhaustion Doctrine (in Europe and the UK). This doctrine is largely the same on both sides of the Atlantic, and says that since you are the legal owner of a work which is protected by copyright, you have the right to re-sell or give away that physical item and the copyright owner's right of distribution over that particular item was exhausted or ceased to exist at the time of the legal sale of the item to you. It is only the distribution right which is ended; the copyright owner's rights of reproduction and publication are unaffected.

Moving on to the trade mark issue, I assume that again the illustration your sold was taken from a book or magazine which you own and you offered it for sale using the musician's name to describe the image. If that is the case, then there is no trade mark infringement since you have used the name of the artist descriptively and that is permitted by law (see section 11 (2)(c) of the Trade Marks Act 1994). There is really no other way if describing a picture of an artist without using his or her name (unless the artist is Prince, in which case you might use the symbolic name he afopted for part of his career). The law recognises this and allows a trade mark which consists of a person's name to be used descriptively in this way. Furthermore, trade marks exist to protect the bona fide goods which are marketed under the specific trade mark so that the buying public can be sure they are getting a genuine product. Since you appear to be selling genuine pages from magazines which incorporate a genuine portrait of the artist, there is no element of falsification and so thus there cannot be any trade mark infringement.

I hope this clarifies things for you.

*The use of small thumbnail image for the purpose of advertsing etc is lawful under section 63 of the UK Copyright Designs and Patents Act 1988, and in the US it is lawful by virtue of a case known as Perfect 10 vs Amazon & Google

Brilliant! Thanks so much for your reply.

Your first paragraph is accurate in describing exactly what I do - I use the original item and don't reproduce it in any way.

Do you have any idea why the respective representatives of the IP would feel confident in flagging my items with Etsy when I make it abundantly clear in the listing title and the description exactly what they are and also state that the aren't copied in any way?

Is it worth contacting the representatives and requesting that they withdraw their reports of IP infringement with Etsy?
Are they legally obliged to do so when I raise the issue with them?

Thanks again, you're been incredibly helpful.

[AndyJ]

Hi jj,

Aha the ol' Etsy shop routine! If you look at this other thread on this forum you will see that one particular law firm, TME law, has established a great money-making scheme getting people's Etsy shops closed down just by alleging some kind of intellectual property infringement. This is all they have to do to get Etsy to roll over, even though Etsy only needs to delist the individual item which is the subject of the allegation, in order to avoid any liability under the DMCA.

TME law never have to prove any actual infringement, and in many cases which I have heard about they wouldn't stand a chance of doing so if the defendant had the resources to appear before the court in Chicago. The beauty of the scheme is that you can't get your Etsy shop unlocked without the lawyers lifting the complain and they don't do this unless their targets cave in and pay some kind of settlement even though these people have probably done nothing wrong. I linked to an academic paper on the subject by Professor Eric Goldman in which he labels this type of operation SAD - standing for Schedule A Defendants.

And while there's nothing to stop you contacting the law firm who have approached you, I wouldn't expect them to take any notice of your request: they are not interested in what is right or wrong here, they are all about making money out of people.

[jj1999]

Thanks for getting back to me, Andy.

Wow, just read that thread and it sounds like a nightmare for those involved.
Fortunately for me, the legal firm that issue the notifications to me were based in The Netherlands and seemingly nothing to do with that routine.
I haven't had my shop suspended and they haven't contacted me with any legal action.
However, from what I've read, if you receive too many of these notifications within a certain (but unspecified time frame), Etsy close your shop.
So is there literally nothing I can do to have the notices removed and prevent any further IP violations other than cross my fingers and hope?


Cheers

[AndyJ]

As this involves a European law firm it's probably more worthwhile arguing it out with them. Have they told you exactly how they say you have infringed their client's trade mark? Since there is now an EU dimension, you will need to quote to them Articles 14.1 (c) and 15.1 of the EU Trade Marks Directive 2015/2436 . The first one of those relates to using a mark descriptively, and the second, Article 15, relates to the exhaustion of the right to prohibit the use of a trade mark in relation to goods (ie the poster, magazine or book from which the picture of the guitarist was taken) which has been put on the market by the proprietor or with his consent.

[jj1999]

Thanks. They haven't explained exactly how I've infringed their trademark - it's just a general email from Etsy with the usual blurb about them potentially putting a hold on my payments and a warning that I will be deactivated if I continue to receive IP infringement notices.

I've emailed the law firm mentioning the EU Trade Marks Directive articles. I'll let you know if/when they get back to me.

Thanks for your help with this, you've been brilliant.