The Upcycle Conundrum: Copyright and Trademark Infringement Risk of Repurposed ProductsJune 7, 2022 – Articles
Many companies have a keen interest in recycling and upcycling old products for resale, both for environmental and promotional purposes. But when those products contain third-party intellectual property, there can be trademark and copyright concerns. Dinsmore intellectual property partner Karen Gaunt wrote about this topic for Best Lawyers' Women in Law issue, out this month. Gaunt herself has been named a Best Lawyer multiple times since 2013. An excerpt of the article is below.
Whether a company can freely upcycle goods depends on the content of the original product and whatever has been added to it. Without a careful analysis, a company selling upcycled goods could be subject to trademark or copyright infringement claims. In some cases, though, neither IP right would be implicated, so seeking the advice of experienced counsel is critical.
Let’s say an upcycled T-shirt bore the Nike trademark or its Swoosh logo, and another company added its own trademark, content or slogan alongside. Nike could assert that the upcycled product created a false impression of affiliation, association, sponsorship or approval, or that consumers would mistakenly believe that the upcycled version came from Nike itself. A claim alleging trademark dilution by blurring or tarnishment may also be viable if the original brand is a well-known one like Nike.
Content creators often assume that a parody or fair-use defense will insulate against copyright or trademark claims. But the fair-use defense is just that—a defense—and it is not nearly as broad as many assume. Just because new content combined with existing content may convey a humorous message, that doesn’t automatically equate to a successful defense of fair use. In the context of copyright, it remains a difficult question—one the Supreme Court is currently grappling with in the Warhol case involving images of the late musician Prince—whether newly created material based on existing copyrighted content is sufficiently transformative to constitute a viable fair-use defense against a copyright-infringement claim.