How dangerous would it be to make and sell an anti-"insert name of big box retailer here" t-shirt?
January 23, 2009 11:42 AM   Subscribe

How dangerous would it be to make and sell an anti-"insert name of big box retailer here" t-shirt?

I've been writing a blog for the last several years that highlights misdeeds of a large retail chain. I'd like to branch out and create some t-shirts that include the name of the retail chain. What kind of legal woes could I be exposing myself to?

The t-shirts would be the name of the blog along with some pithy comment about their business practices. It seems like this should be a fair use issue but I'm not sure.

I'm not expecting to sell very many and don't want to expose myself to lawsuits or anything but the shirts would not make any sense without the name of the retailer on them.

posted by fenriq to Work & Money (15 answers total) 1 user marked this as a favorite
Not that everyone else doing it is ok.. but Google searching for " sucks tshirt" or "anti- tshirt" seems to bring up ample opportunity to buy anti-business shirts.
posted by SirStan at 12:02 PM on January 23, 2009

I don't expect there is much help for you here. Could you be sued? Of course you could, and it doesn't matter whether it is right or not unless you're prepared to defend against a lawsuit. They have lawyers on retainer, you do not. Where this falls on the whole legal/fair-use/parody/satire continuum? Well, you know what the people who really know about the law on this site are going to tell you to do.

Realistically if the blog has not triggered action the shirts are unlikely to, and the most likely action would be a C&D rather than a lawsuit. But there are no guarantees.
posted by nanojath at 12:03 PM on January 23, 2009

Best answer: Not a lawyer, etc, etc.

On one hand there is no way to not be at risk for a lawsuit, even if you're on the good side of the law.

On the other hand go for it. We've got that free speech thing and it's a terrible thing to be afraid of using it.

I would stand clear of using any © or ™ property of the company (logos, slogans, and so on) just to be 1000% in the clear. And no libel of course. But otherwise go for it!
posted by Ookseer at 12:14 PM on January 23, 2009

The potential hassle vs. actual benefit in this case is really slanted.

There are a lot of situations that fit the basic facts you described where it's an obvious fair use. Even in those situations, a mega-corporation with a lot of lawyers and money can make your life awfully difficult.

There are also a number of ways to take the basic facts above and put yourself in a position where you go just a step farther than Fair Use gives you the right to do.

Be very wary of anyone who tells you, without hearing all of the details (and asking a number of questions), that you're definitely making a fair use . . . it likely means they really have no idea what they're talking about.

That said . . . if you're going the self-published t-shirt route and have very low (or non-existent) start-up costs, you're probably fine. Nanojath is right that you're much more likely to get a C&D than a law suit, just because one of them is cheap and one of them is very, very expensive. That said, it's their right to sue if they want to, so the safe bet is to either to just drop the idea or talk to a lawyer who knows a lot about IP issues.
posted by toomuchpete at 12:15 PM on January 23, 2009

Free speech protects the shirt-wearer well enough. It's dicier for those making a profit selling the things.
posted by rokusan at 12:26 PM on January 23, 2009

Any disparaging use of another's trademark is likely to result in a lawsuit which you will lose unless you are conducting a non-fiction, critical analysis of the goods or services provided by the trademark holder. So while making a blog post about how much you hate Wal-Mart, or getting paid to write an article about how much you hate Wal-Mart will probably be okay, "Wal-Mart Sucks," sold as a t-shirt, will almost certainly result in getting your pants sued off. There's nothing critical going on here, just straight up disparagement for profit.

Check here for a brief discussion of the use of others' trademarks.

This is pretty much a no-go.
posted by valkyryn at 12:33 PM on January 23, 2009

Go for it. There is something very wrong if just the idea of lawsuits can dissuade your from exercising your right to free speech.
posted by dunkadunc at 12:36 PM on January 23, 2009

The profit issue sets off alarm bells for me too. In regards to valkyryn's observations, here's a thought. If you don't care about making money off this project, why not encourage your readers to make a t-shirt of their own, have them send in photos of them wearing the homemade t-shirts, and post them all to your blog? You could even provide a template on your site for the basic t-shirt design.

If it's just a bunch of people running around in homemade t-shirts, evil corporation might have less incentive to sick their lawyers on you. Of course you could still get sued.

I am not a lawyer, take my advice as a creative suggestion.
posted by vincele at 1:08 PM on January 23, 2009

Ah, something I have experience with!

One of my prized possessions is the cease-and-desist letter that I received from Sun Microsystems' lead counsel. I was selling tshirts that said "Jesus Hates Java", which included the trademarked coffee cup image.

I called the woman, we had a very pleasant conversation, and she (very rightly) explained that there were ways that I could criticize Sun without using their trademarks. I was not sued into oblivion, and I got a great conversation piece (the letter) out of it.

Google has the original ad I posted seven years ago:

I would advise you to be cautious. Your adversary may not be as gentle as Sun was with me.
posted by DWRoelands at 1:21 PM on January 23, 2009

Response by poster: Good insights, everyone, thanks. The shirt would be disparaging and would require the use of the company. I will give some thought to how I could do it without naming them directly. What about something like a nickname for the company (i.e. Wallyworld instead of Wal-Mart)?

If I were going to be producing these myself at home then I'd have no worries about it but I was planning on using CafePress for it and I think that greatly increases my potential exposure.

And DWRoelands, I would definitely not expect this company to be gentle, they have a track record quite to the contrary.
posted by fenriq at 1:29 PM on January 23, 2009

Best answer: After re-reading valkyryn's analysis, I think it's misleading at best, and just plain wrong at worst.

Trademark isn't about protecting companies from disparagement and criticism, it's about protecting source identifiers. The court isn't going to look at your t-shirt and say "Well, now, fenriq here is saying bad things about Mega-Store! We can't have that!"

They're going to look at it and ask a number of other questions, like "Would an average consumer be confused and think that Mega-Store made or endorsed the shirt?"

The analysis is more complicated than that. For some interesting comments that conflict with valkyryn's comments above, check out the "Amuse don't Confuse" section of this article from Wired. It's a little old, but Trademark hasn't seen too many huge innovations in the last decade.

But, again, my comments about people wanting to offer pronouncements about the legality of your t-shirt without knowing any further details still stands. There's no way for us to know if what you're proposing would run afoul of trademark law because we just don't have enough info.

A point about the business of suing someone, though: I'm sure your blog is great, insightful, and really casts the social benefits of the mega-store in doubt . . . but at the end of the day, I'd guess that Mega-Store would get more bad press from suing you over a t-shirt than they would save by wiping the t-shirts off the face of the planet (assuming they could), because I doubt more than a half-dozen people would actually buy one.

So unless you were doing something really awful with the shirt, you're probably not going to get sued out of the clear blue sky.
posted by toomuchpete at 2:28 PM on January 23, 2009

I called the woman, we had a very pleasant conversation, and she (very rightly) explained that there were ways that I could criticize Sun without using their trademarks. I was not sued into oblivion, and I got a great conversation piece (the letter) out of it.

Sun hasn't always been so nice, but a direct result of the interaction I had with their legal department was an improved relationship between the company itself and third-party fan sites. At least they started asking nicely before siccing the lawsharks on people.

They sorta bought me off by sending me a brand new Ultra 10 workstation at the end of that whole ordeal as "thanks for working everything out without a lawsuit". It ended up being my desktop workstation for a couple of years.

My chosen hostname for that system? sosumi.
posted by mrbill at 2:41 PM on January 23, 2009

Best answer: IANAL, this isn't legal advice, this is just my personal understanding, consider it hearsay, etc. etc.

The purpose of trademark is to prevent a competing company, in the same field, from branding a product in such a way as to mislead consumers into believing that it was really produced by the trademark holder. E.g., as Grey Helix LLC, I cannot brand my new coffee machine "Mr. Coffee"--this would lead consumers to believe that they were buying a machine produced by Mr. Coffee. I probably couldn't even call it "Monsieur Cafe", 'cause the courts would say, "Yeah, there's a consumer that stupid, who'll be confused."

[Interesting fact: so long as you're in different fields or geographic areas, trademarks can legally be duplicated. But, in practice, this doesn't happen very much--and usually ends in litigation, as per the Apple Computers vs Apple Corp dispute. I'm having trouble finding an example, thanks, I suspect, to globalism and the internet. It apparently used to be much more common.]

However, the very name "WalMart" is not protected from use. You can't name a store WalMart--you'd be confusing customers. But, you can use it in print, even for profit. You can even disparage them for profit, so long as you do not make it look like the shirt is produced or endorsed by WalMart. And if your shirt says, "WalMart sucks dangling donkey dicks", I doubt that any court is going to think that the average anybody is going to believe WalMart printed that shirt. Also, it's my understanding that a printed shirt is, legally, identical to a book or a play--both of which can be sold and disparage pretty much whatever they want if presented as fiction.

What you cannot do is use the design of their logo, as it is copyrighted on top of being trademarked. This means that you can print "WalMart" on a shirt, but probably cannot print "WAL*MART" [in blue] on a shirt. The first is simply writing down the name of the company, the second is infringing the copyright on their logo as a derivative work.

mrbill's example probably had much more to do with the use of the coffee-cup logo than it had to do with the words "Jesus Hates Java". Sun does own "Java" as a trademark in the realm of computers and technology, but nobody is going to think that a t-shirt is a computer language.

But nothing can keep the company from C&Ding or suing you. They may not be in the right, but that's irrelevant. They already have their lawyers, who are getting paid to do whatever it is the company wants them to. If you're on today's todo list, they'll go ahead and do what they're paid to. You, on the other hand, have to find and pay a lawyer out of your own pocket.

It's really a common tactic on the part of megacorps. They harass you through the legal system in near certainty that it will get too expensive and too time-consuming to continue the battle. And if you don't show up, oh, whoops, summary judgment. Yes, many times, you're awarded lawyer's fees and court costs if you win the case, but it's a gamble and most lawyers won't take that bet.
posted by Netzapper at 5:05 PM on January 23, 2009

Netzapper, there's a whole lot of really, really bad information in that post.

"so long as you're in different fields or geographic areas, trademarks can legally be duplicated."

No, this is not true at all. First of all, in the U.S. a registered trademark is enforceable nationwide against all but those who were using the mark (in a non-infringing way) before the registration was granted.

Second, the standard for infringement is "likelihood of confusion" and it's a fairly subjective test, there aren't many bright-line rules like you suggest.

Third, even if you were clearly not infringing, you'd end up getting sued for dilution, which is distinct from infringement, but every bit as commonly litigated.

"What you cannot do is use the design of their logo, as it is copyrighted on top of being trademarked."

The logos may be copyrighted. Problem here is that many logos are just not copyrightable because they don't contain a sufficiently creative expression. If I had to guess, I would say that WalMart's logo doesn't meet that standard.

What got the Java shirt into "trouble" was not copyright, I'd guess, but that big companies like to throw their weight around, pretty convinced that they can get even more protection out of trademark law by just being bullies and having the war chest to buy enough lawyers.

So, basically, everything between the first sentence of the second paragraph and the paragraph that starts with "But nothing . . . " should probably be disregarded.
posted by toomuchpete at 10:22 PM on January 23, 2009

mrbill's example probably had much more to do with the use of the coffee-cup logo than it had to do with the words "Jesus Hates Java".

I didn't use their coffee-cup logo; it was the SunHELP logo I used at the time which was four interlocking purple words that they judged was too similar to their logo.

The main complaint was about the "proprietary information" documents that I had found on their own web site, saved locally, and posted on my site. The rest was just window dressing.
posted by mrbill at 10:28 PM on January 23, 2009

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