Printing t-shirt design with trademarks?

September 30, 2013 4:44 PM

My fraternity created a cool design that uses the outlines of a lot of the things that we like into our Greek letters. Unfortunately, this design incorporates a lot of different trademarks from a lot of different franchises, and as a result, we're running into different people saying that they can't print our design since it includes trademarks. Is there a way we can get around this? Can we get it printed as fair use somehow?

To clarify, we're not planning on selling these for profit. We'd just like to provide a cool piece of swag for our members. I think I read somewhere that if the design is taken as art, it's alright, but I'm not too clear on the subject. Thanks in advance!

posted by fizzzzzzzzzzzy to Law & Government (12 answers total)

They are being cautious which makes sense for them. There is a very good chance that your design would be considered Fair Use if you go down the laundry list of what Fair Use generally is (transformative, non-profit, small amounts of content, no effect on original thing's value). However, just claiming that something is Fair Use does not keep people from deciding to sue you.

So if you had the logo of, let's say, the famously litigious company Disney on your shirt, they could still go after you even if you ultimately triumphed. And this sort of thing is annoyingly expensive though more and more people are finding lawyers to help them pro bono since it furthers the aims of Fair Use which is generally a good thing. There's also the additional non-fair use issue which is that using other companies logos might make it appear as if those logos supported your fraternity which could be an issue depending on the reputation of your fraternity. I am also not clear if this is just for your local fraternity or if you're trying to make a thing for your national chain (like, would you sell these t-shirts online though Zazzle? That's very different from just giving them out at your local BBQ). That might affect how people thought about your using corporate logos in this way.

So, depending on how many logos you are using, it might be easier to get some sort of "permission" from various marketing departments enough to let the t-shirt printers know that you've done your homework, or I'd keep shopping around for a t-shirt company who cares less about trademark infringement which may be more of an issue here than copyright.

NB: I'm not a lawyer, just a fair use advocate.
posted by jessamyn at 4:55 PM on September 30, 2013 [2 favorites]

The print shops aren't going to be required to print your shirts no matter what -- it's not like you can get your design certified as fair use before you start -- and they're afraid of liability if one of these franchises tries to get a bit litigatey. And of course it's unlikely you're going to get permission from each of these companies.

And in the long, long shot that one of these companies notices and sues, you may or may not win -- after all, you want to use their trademarks for marketing purposes (i.e., the definition of swag), but even if your case would be held up as Fair Use by any judge in the land, that doesn't stop them from suing, and so the printers are rightfully acting cautiously.

Your best bet is just finding some shadier printer. Or finding someone on your college campus who has a screen printing rig set up and not much care about what they screen print (if you go to a large school, odds are good that someone there is into screen printing).
posted by brainmouse at 4:58 PM on September 30, 2013

If you're changing the logos around, you might be able to have those modifications be considered Fair Use as transformative use. But you'd have to change them quite a bit.
If you can screen print them yourself, you'll probably be fine. But most commercial printing outfits won't take the risk.
You can try for permission, but it's going to be a long time to get some places to even respond.

And I work with Fair Use all day long.
posted by Ideefixe at 5:14 PM on September 30, 2013

With respect to fair use advocates, etc., fair use is a copyright doctrine (not correctly construed as broadly as many claim) and has nothing to do with trademarks. Copyright law and trademark law are two entirely separate areas of federal law and it is almost always an error to assume that some principle of one applies to the other.

You and your fraternity, and the printers, can get into serious trouble for trademark infringement. I am a long-time trademark lawyer, but not your lawyer for any purpose. However, I suggest that unless you want to be remembered as the guys whose infringing tee shirts got your fraternity in trouble, you find another design. Trademark infringement can get you in trouble with a trademark owner and if you use several marks without permission, you can end up having your tee shirts confiscated or, at worst, find yourself involved in several lawsuits.

And trademark owners are humorless. They may be unpersuaded that your tees are art and harmless to their interests. Remember, one variety of trademark infringement is "confusion of association"--that means that if anyone is likely to think that your tee shirts are in any way sponsored by or associated with the trademark owners, it is infringement. Your clever tee shirt design may not be worth the trouble you can create with the wrong design. Come up with another one.
posted by Jenna Brown at 6:24 PM on September 30, 2013 [14 favorites]

Unfortunately, this design incorporates a lot of different trademarks from a lot of different franchises, and as a result, we're running into different people saying that they can't print our design since it includes trademarks.

This is not going to happen because the printshop can get in a boatload of expensive trouble.
posted by DarlingBri at 6:30 PM on September 30, 2013

Unfortunately, when it comes to trademark and copyright, the "Golden Rule" applies: He who has the gold makes the rules.

Disney et. al. have a lot more money for lawyers than the print shop does, and the print shop knows it. Even if the print shop were to prevail in the end, the expense of fighting the lawsuit would probably put them out of business before they reached the end. The risk is too great relative to the reward (your $50-$500) and it doesn't make any sense for them to take that risk.

Which is to say, you're screwed. Redo your art to remove the trademarks. Or to modify them.
posted by Chocolate Pickle at 6:57 PM on September 30, 2013

Or to modify them.

Even modifications won't work. If the modified trademarks look enough like the real ones to confuse anyone, you have not escaped the possibility of a trademark infringement suit.

And don't get your legal advice from a site called "TV Tropes."
posted by Jenna Brown at 7:03 PM on September 30, 2013 [5 favorites]

Trademark fair use is rather different from copyright fair use, so the articles linked here and here don't quite apply. Jenna Brown correctly noted that.

But there is such a thing as trademark fair use, although I think it does not apply here. Trademark fair use, unlike copyright fair use, is not using a trademark for a limited purpose. Rather, it means that trademark holders cannot prevent others from using trademark terms that are otherwise common words. For example, the company Apple cannot stop a grocery store from advertising "fresh apples for sale". On the other hand, there really isn't trademark fair use for a mark like Exxon because that word has no meaning outside its trade context. The copyright fair use elements of limited excerpt, non-profit use, and so on don't apply to trademark fair use. (cool swag is not a legal defense to any intellectual property claim)

You cant make the print shop accept your job. They are being prudent, in my view. I recommend that you design a shirt that does not incorporate someone else's intellectual property.
posted by Tanizaki at 7:52 PM on September 30, 2013 [2 favorites]

Buy a cheapo speedball screenprinting kit and a bunch of blank tshirts and print whatever you want. Printing tshirts is not difficult and doesn't require any equipment that isn't trivially easy to come by, especially if it's just one color and all outlines.
posted by jeb at 12:17 AM on October 1, 2013 [1 favorite]

You've probably received some very sound advice above. That said, you can probably just find a small-time print shop and ask them to do it (think: t-shirt kiosk at the farmers market vs. storefront shop on Main Street).
posted by samthemander at 12:25 AM on October 1, 2013

Assuming you're a chapter of a national fraternity, you may be putting your national organization at risk as well—a litigious trademark holder might decide they are an attractive target and go after them as well. And as noted above, even if the trademark holder doesn't win, the lawsuit can be expensive to defend. If we haven't convinced you, check with your national organization (who may well have a lawyer who can give them/you actual legal advice) and see what they say.
posted by DevilsAdvocate at 4:57 AM on October 1, 2013

Can you use look-alikes? Or, approach the local Coca-Cola bottler, and others and ask for a donation, charge an extra $5 for the shirts, and give proceeds to a charity. List all donors on the back, and ask for permission to use logos on the shirt.
posted by Mom at 11:03 AM on October 1, 2013