Upcycling: From Feedbag to Tote Bag

This dress was made by Mrs. G. R.
(Dorothy) Overall of Caldwell, Kansas,
in 1959 for the Cotton Bag Sewing Contest 

Dear Rich: Would it be a violation of trademark or copyright law to take an empty livestock feed bag (with the name and/or logo of the company that produced the feed on it, along with usually a picture of an animal), cut it up, and sew it into a reusable grocery tote bag for sale? I have seen these items for sale on platforms like Etsy, but I know Etsy doesn't filter for IP law violations.

Unfortunately, we can't give you a green light, only a yellow one. Although we believe you will be fine under copyright law, trademark law is unclear regarding upcycling. On the one hand, anyone can recycle and resell authorized trademark goods under the principle known as trademark exhaustion (or the First Sale doctrine). This allows you to resell trademarked goods in their original form -- for example, a used Specialized bicycle or a vintage Gretsch guitar. 

Upcycle ≠ Recycle. Upcycled goods -- because they deconstruct legitimate goods to create new products -- are in a different category than recycled goods. The trademark owner may have a legal gripe if the new products reflect poorly on the brand, if they trigger product liability issues, or if consumers are confused or harmed by the upcycled products.  For example, the trademark owner of a distillery may have concerns about a lamp being constructed using its trademarked bottle. Consumers may not believe that the lamp comes from the distillery but the distillery still has the ability to threaten a lawsuit, something you don't want to deal with. 

The real world. Upcycled goods are prevalent on Etsy because they have not yet come to the attention of the trademark owner or because the trademark owner doesn't believe it is worth pursuing the seller. Based on these "odds," you may avoid being hassled. You can improve your odds by avoiding the use of the trademark owner's name in your Etsy text (although that approach may cut into your sales). Keep in mind, though, that even if Etsy does not filter for infringing items, it responds to trademark owner complaints about items that violate its IP policy.

PS Dept. In the 1920s and 1930s, rural women prided themselves on repurposing feedbags as dresses. Once the feedbag companies were aware of this phenomenon, they competed with each other by offering more elaborate dress-friendly bags. 

More Questions About Licensed Fabric

Dear Rich: I have two questions related to your post, "Can I Sell Clothing Made From Copyrighted Fabric?" (1) You indicate that crafters may freely use licensed fabric to make new creations under the first sale doctrine. But, it was my understanding that the first sale doctrine only applied to unaltered or substantially unaltered items. So, if I buy a Mickey Mouse fabric, decide to make a children's dress out of it, how does the first sale cover such an alteration? (2) Your post states that selvage statements such as "for personal use only" are not binding on the end users due to lack of assent. Wouldn't purchasing the item even in light of the selvage statement be an indication of assent? Similarly, there are thousands of digital artists on Etsy who have licensing terms for their creations but there is no requirement of assent necessary before purchase - are those statement also not binding? 
(1) How does the first sale affect alterations of copyrighted fabric designs? When you make clothing from a fabric design, you're not modifying the copyrighted design, you're modifying the shape and cut of the fabric. (It's true that cutting the fabric at certain angles may change how the design is perceived but that's not the same as modifying the design and reselling it.) Therefore, selling your clothing items is permitted under copyright law. When you use fabric containing trademarks (a different area of law than copyrights), courts will permit the resale of clothing provided that there is a prominent disclaimer that the finished goods are not associated with or endorsed by the trademark owner (see also this case). Alas, we're citing case law and precedents, legal niceties that some trademark owners may ignore when aggressively asserting rights at Etsy, etc. Therefore, unless you can afford to defend your rights in a courtroom, proceed with caution when selling clothing made from fabric that features trademarked characters or logos.
(2) Have you assented to a license if you see the "for personal use only" label before you purchase? No. A license requires mutual assent and without an affirmative indication of assent, no license is formed. For digital licenses, as you mention, "click to agree" assent is required. Otherwise, the "license" has no binding effect.

Can I Sell Clothing Made From Copyrighted Fabric?

silk fabric weaving circa 1914

Dear Rich: This question pertains to copyright images on fabric bought from the store. There have been a lot of questions regarding this because of crafter's listings being taken down from Etsy. I believe the ones being taken down are violating copyright by using imported items or their own reproductions. My question is can we purchase licensed fabric or ribbon from a store, make it into a dress or handbag and then sell those items legally? There is a "For personal use only" statement on the salvage of the fabric. My understanding is that First Sale Doctrine would cover the resale of the fabric along with a proper listing and disclaimer? You're correct. Thanks to the first sale doctrine, if you bought copyrighted fabric, you're free to make it into a product and resell that product. You're also free to photograph that product and reproduce that photo as part of an ad when selling the item. A disclaimer won't hurt but it's not required.
What about the statement on the fabric? The statement -- for personal use only -- is wishful thinking on the manufacturer's part. Unless you affirmatively agreed (signed something, clicked "I Agree" or made some other indication of assent) at the time you purchased the fabric, such a statement would not be binding on you.
What you can't do ... If the fabric is an infringement, that is, an imitation made without permission of the manufacturer, you'll run into problems. In that case, the copyright owner can stop your uses whether you knew or should have known it was infringing. You may also run into problems if you create fabric from found imagery that is still protected under copyright. In that case you're infringing the image owner's right to create derivatives.

Cutting Up Art Books and Selling the Prints

Dear Rich: In one of your articles, you state, "... the first sale doctrine does not permit the owner of a book of copyrighted art prints to separate the prints, mount them in frames and sell them separately.” This was the first time I have seen this interpretation. Where does the infringement start? Separating the prints? Selling separately? Mounting the prints? Framing and selling? I always thought it was okay to separate and sell -- for example, I buy a portfolio of loose prints by various artists printed and sold in the 1960s. Can I sell these separately as is. If yes, what if the folio is spiral bound, or stapled? Two California courts ruled that ripping out images from a book and reselling them in frames is not permitted under the first sale doctrine. A New York court seemed to agree with these rulings, while an Illinois court ruled that it was okay to disassemble a box of notecards and mount each card on a tile and sell it. (We wrote about these cases back in 2009.) We can't tell you the outcome of the various scenarios you describe but we can say that as a general rule, you'll have a harder time winning a case where prints are removed from a bound volume than from an unbound collection.
At what point? The infringement probably starts when you commence distribution of the derivative copies (the separate images taken from the book). It may start earlier -- when you separate the images -- but nobody is going to care about that, at least not until the images are available to the public. That's when the injury occurs and the copyright owner wants to take action.

Can I Display French Poetry At My Bar?

from the Paris Sketch Book by
William Makepeace Thackeray

Dear Rich: I own a bar in New York City. The bar is named after a famous French poet from the late 1800s. He died in 1896. He drew sketches as well as writing poems. I purchased a book from a manuscript museum based in Paris about the Poet. The book has images of the poet's handwritten manuscripts and drawings. I want to tear out some of these pages, cut out the images and make a collage on my bar top of the poets works. The collage will also be made of torn out pages from old poetry books that I have manipulated using paint to make the pages look old. The entire bar top will then be covered in a glass waterproof coating. Can I use pages from this book? All the images are of works produced by the poet before 1900. Yet this book was just produced last year. Pas de problème for your project. The Dear Rich Staff says, "Tous les bons!"
First sale doctrine. You're free to cut up pages of a book and display them in your bar under a principle known as the first sale doctrine -- a copyright principle that enables the owner of an authorized copy of a work to sell or dispose of it. There are some limitations for fine art works and even for printed books (as we discussed in a previous entry). But your proposed use steers safely clear of problems. In addition, if the works were published in the U.S. before 1923, they are safely in the public domain and free for you to use for any purpose.