What are the limits on use of intellectual property in t-shirts?

Recently, a friend asked me about the vast world of t-shirts. Yes, t-shirts are ubiquitous. They have slogans, pictures, drawings on them. They communicate something about the creator and the wearer. They have become a bastion of intellectual property. Many t-shirts are about personality and their importance in pushing intellectual property forward cannot be ignored.

  • What are the rules for trademarks in t-shirts?

Many t-shirts have slogans on the front of the shirt. That would be an ornamental use of the slogan. It does not signify to consumers that there is a source for the t-shirt itself or quality in the t-shirt (that is the point of the hangtag). In another example, a repeated flower pattern on china is generally considered to be ornamental use, not trademark use. A purchaser of those goods would not understand that the flower pattern is intended to identify the applicant as the source of the goods, but rather would see that pattern only as an ornamentation or decoration on the goods, on packaging, or in advertising.

For more information, see Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; In re Villeroy & Boch S.A.R.L., 5 USPQ2d 1451, 1454-55 (TTAB 1987) (holding an applied-for mark consisting of a floral pattern design of morning glories and leaves for tableware to be nondistinctive and merely a decorative pattern with no trademark significance); TMEP §§904.07(b), 1202.03 et seq.

So, a company looking to use a slogan as a trademark needs to consider other ways of using the mark in order to register. The first would be to get the slogan extremely popular in order to acquire distinctiveness. This would qualify under Section 2(f) of the Lanham Act in connection with applicant’s goods. In other words, because of the extensive use and promotion of the mark, consumers now directly associate the mark with the applicant as the source of those goods. Note: Long-term use alone is generally not sufficient to show acquired distinctiveness for marks that are merely ornamental.

Acceptable evidence of use and promotion can include:

(a) advertising and promotional materials that specifically show or promote the applied-for mark in use as a trademark and source-identifier;

(b) dollar figures for advertising devoted to such promotion;

(c) dealer and consumer statements indicating recognition of the applied-for mark as a trademark;

(d) other evidence that shows consumer recognition of the applied-for mark as a trademark for applicant’s goods.

For more information on Section 2(f), see 37 C.F.R. §2.41(a); TMEP §§1202.03(d), 1212.06 et seq.

The second path to trademark protection is using the slogan for other goods/services. This will establish that the trademark owner’s use is an indicator of secondary source for the trademark owner’s goods.  For example, a university that provides educational services could apply for its name on the front of t-shirts. While use on the front of a t-shirt may not be considered acceptable trademark use, the university could provide a service mark registration or other evidence to show that it provides educational services as evidence of secondary source for the t-shirts to overcome the ornamental issue.

For more information on secondary source, see TMEP §1202.03(c).

The third path to registering that slogan and enforcing it as a trademark is to make it a part of the hangtag and, therefore, make it the brand of the t-shirt. This may require the slogan owner to interject some quality and source direction in the construction of the t-shirt. But, from there, the trademark process is normal.

  • What about designs and pictures?

The use of pictures and designs on t-shirts is a little more tricky. Obviously, a designer who has created a design, then that design can be used on a t-shirt as a part of a business. The design is the “author” of the work that falls under copyright law. (Yes, the Copyright Act refers to the creator of a work that falls under copyright law as an “author” of the work, regardless of the medium.) Third parties would not have the right to use that design.

But, surely, many t-shirts are parodies. Yes. The defense of Fair Use to copyright infringement is the key for the use of these pictures on t-shirts. The use of a derivative work from an original work must fall under Fair Use.

The Copyright Act of 1976, in § 107, defines Fair Use, stating that “Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

So, there has to be a balance. The other situation is Campbell v. Acuff-Rose Music, 510 U.S. 569 (1994), which is a United States Supreme Court copyright law case that established that a commercial parody can qualify as fair use. That money is made does not make it impossible for a use to be fair; it is merely one of the components of a fair use analysis.

  • Purpose and character. When looking at the purpose and character of 2 Live Crew’s use, the Court found that the more transformative the new work, the less will be the significance of the other three factors. The court found that, in any event, a work’s commercial nature is only one element of the first factor enquiry into its purpose and character. So, in a t-shirt parodist’s work, the design on the t-shirt must be transformative from the original.
  • Nature of the copyrighted work. It has little merit in resolving this and other parody cases, since the artistic value of parodies is often found in their ability to invariably copy popular works of the past.
  • Amount and substantiality. The heart is what most readily conjures up the work for parody, and it is the heart at which parody takes aim. So, there is going to have to be some appropriation of the original work in order to parody it. But there will have to be some kind of departure from the original work in order to find for the new work.
  • The effect upon the market. Parodies in general, the Court said, will rarely substitute for the original work, since the two works serve different market functions.

So, if there is going to be a use of copyrighted works in t-shirts, then the t-shirt designer must remember to do enough work to parody that original use.