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Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 115436
Experience:  Attorney practicing all aspects of copyright/trademark law
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We sell Kid T shirts on Etsy. We had assumed that if we

Customer Question

We sell Kid T shirts on Etsy. We had assumed that if we change an item, such as a Minion by 10% we would still be able to list it. However we have been hit by an infringement notice from Gerber Childrenswear Inc. Now they shut down 57 of our items. My
questions are as follows. 1. Can Gerber really have the rights to an incredible vast amount of items ranging from Mickey mouse, Minion, Elmo from Sesame Street, Lightning McQueen, Toy Story alien, a simple snowman, a pumpkin face and many more? 2. Can they
have the rights to ridiculously common homemade items they shut down. Such as a shirt with a simple 2 on it. Or a shirt with a spider hanging from a web. Or a Ghost that has a BOO under it. Or a shirt with a simple soccer ball. 3. Shirts that are copyright
such as cookie monster have been changed by us. I read about Deriviative works of copyrighted materials such as the Mona Lisa that a mustache was added to in order to use it. Can we change the cookie monster enough for example that we could have a deriviative
works copyright so basically no one can touch us. Where we could pay money to somehow have a deriviative copyright on our changed cookie monster so if we get hit with a copyright or get taken to court, screw you we have this so you can't touch us basically?
4. Gerber made the accusations on us put in the enfringment notice. WE can submit a DMCA counter notice (Digital Millennium Copyright Act) to counter their engringement. HOWEVER, Etsy puts fear in that saying If you have a good faith belief that a notice of
infringement involved a misidentification or mistake, you may consider submitting a DMCA counter notice. Please note that filing a counter notice may have legal implications. If you have questions about whether filing a counter notice is appropriate, you may
consider seeking advice from an expert such as an attorney. Basically saying if they don't reply to our counter notice within 10 days then our listing would go back up. However the other option is they would be informing of a court order against us. So it
appears that by doing the DMCA either 1. they will not reply or 2. we just opened a can of worms and now we are going to court. Is that correct there are only 2 options at that point? 5. If we do the DMCA only about the obvious dumb things like the 2 shirt
and the spider hanging from a web could they reply to the DMCA of those specific items and take us to court on the other items. Or could they only take us to court on the specific items we have in the DMCA. 6. At this point we want to fight this, we hate working
in fear and are wondering how much money you would estimate getting a real lawyer to help us be protected would cost. Is it even possible with our changed copyrighted items such as cookie monster or monsters inc sully to change it enough and get some type
of protection that we can list that item? ALSO can we have protection that YES WE CAN post a shirt that simply has a 2 on it for example.
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  Law Educator, Esq. replied 1 year ago.

Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.

I am afraid that 10% or 20% "rule" is more of a myth than the law. I am afraid that any use or derivative use of a copyrighted or trademarked item can be deemed a violation of the law and comes with very significant penalties.

They can actually shut down homemade craft sales and I have had people sued by Disney and even the NFL for taking material they purchased in the store with their copyright/trademark logos and making some craft with them and selling them online.

You cannot use any image that is copyrighted or trademarked without written consent of the owner of the mark. Anyone producing products with those images must pay license fees to the owner of the mark and large companies such as Gerber have no problems negotiating contracts with Disney or others to get license rights to sell goods with their copyrighted/trademarked logos or images on them.

A shirt with a simple soccer ball or a hand drawn ghost that you drew on it is acceptable.

You misunderstood the thing about the derivative works with the Mona Lisa. The reason that drawing a mustache on it allowed them to use it was because then they claimed the right to use it under "fair use" based on satire/parody (making a joke out of it) just like the old cards "wacky packages" where they took trademarked logos and made fun of them.

So if you took cookie monster and made him look different and something that was truly parody or satire, then you could likely claim fair use.

As far as the "simple 2" on it, you can sell a shirt with a number on it as long as it is not the same font and style to infringe on any other work (Thing 1 and Thing 2 shirts come to mind off the top of my head). However it is not against the law to sell a shirt with a number on it only. It is not against the law for you to sell a shirt with an image you have the right to on it.

You should not file the counternotice unless you can prove satire/parody in your works, because these companies are large enough it costs them nothing to pursue you and it would be mandatory for you to hire an attorney and it would get very expensive for you. While you may want to fight it, if you are found in violation, each shirt/product (not collectively, but each piece) can cause a fine of up to $150,000 for infringement so your fines if you lose the suit can be in the millions.

An intellectual property attorney is going to charge roughly $350 per hour or more to handle a case like this.

Customer: replied 1 year ago.
Thanks for your reply. I'm still hoping for clarification on a couple items.
1. Can Gerber really have the rights to an incredible vast amount of items ranging from Mickey mouse, Minion, Elmo from Sesame Street, Lightning McQueen, Toy Story alien, a simple snowman, a pumpkin face and many more? OR Are they just shotgun blasting us with copyrights for anything they see because they are mad at us and want to shut us down?4. Gerber made the accusations on us put in the enfringment notice. WE can submit a DMCA counter notice (Digital Millennium Copyright Act) to counter their engringement. HOWEVER, Etsy puts fear in that saying that Gerber at that point will either have to ignore it and we can repost certain shirts or they will have to take us to court. Is that true they only have 2 options.SO should we be scared to death of doing a DMCA Counter notice on stupid items like a penguin we drew a #1 on a shirt in not a common font of anyone, a pumpkin face etc.
We would like your thoughts. Should we be scared to death of a DMCA counter notice on the stupid items. Will that most likely open a can of take us to court because we did a counter on the dumb items that we fill they just shot gunned us with copyright infringements on rediculous common items.Hoping to hear back about the ramifications of a counter DMCA or if we simply have to put our heads down tuck our tail in between our legs and get pushed down by them and not sell these items that they attacked us on that are obvious mis signts by them being rude. Thanks
Expert:  Law Educator, Esq. replied 1 year ago.

Thank you for your reply.

1) Yes Gerber can really have rights to that wide array of intellectual property, it is not impossible, since they are a large company with capital to have such rights.

4) If you challenge the takedown notice and are found in violation, you can be hit for up to $150,000 per violation, plus their lost profits and attorney's fees.

If you did not have licensing from the copyright owner, you should have just taken them down and let them know you did. They are not being rude, they have a legal duty to police their copyright licenses and if they fail to do so they could lose their rights, so that is what they are doing here.

Now for your drawing of a penguin, they have no rights to that and it is not improper to challenge that type of take down notice, because they have no rights to your drawing of a penguin or pumpkin face that you actually drew and was not a copy of an actually licensed item like Minion or Mickey Mouse. If they are asking you to take down items that you actually designed and are just common drawings of an animal or bird, those are improper demands for those items, but not for Mickey, Minions and the other specific characters you may be modifying.

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