Trademark Infringement Help

[chazus]

My girlfriend runs a perfume shop on Etsy. Most of the scents on there are game or television inspired. She's gotten two trademark infringement hits so far, and it's becoming an issue.

Her first was "Leaf on the Wind" (from Serenity). She contacted Fox about it, and they had no legal backing. The skinny of it is 'Trademark Infringement' only really applies on unique works if it is something that might confuse people. Obviously, a 5ml bottle of perfume is not very similar to a blockbuster movie.

Her second was "Creeper" (from Minecraft). Again, it's not an exploding creature in a game. It's perfume. Yet despite that, there are hundreds of people on Etsy making actual creeper plushies and the like, without problem.

My question is, does anyone know any decent, cheap (or free!) resource to help her deal with these? Having looked through the legal papers, rights of fair use, she hasn't made any kind of infringement. Etsy seems to be on a 'shoot first, ask questions later' basis. It's also been discovered (in Fox's case) that many TM handlers will often wave papers around to get stuff taken down, even if they don't have legal backing, which really serves no purpose but inconveniencing people.

UPDATE: J!NX screwed up. There was no infringement. It looks like it was either automated, or just laziness on the IP team's part.

[Lochton]

My girlfriend runs a perfume shop on Etsy. Most of the scents on there are game or television inspired. She's gotten two trademark infringement hits so far, and it's becoming an issue.

Her first was "Leaf on the Wind" (from Serenity). She contacted Fox about it, and they had no legal backing. The skinny of it is 'Trademark Infringement' only really applies on unique works if it is something that might confuse people. Obviously, a 5ml bottle of perfume is not very similar to a blockbuster movie.

Her second was "Creeper" (from Minecraft). Again, it's not an exploding creature in a game. It's perfume. Yet despite that, there are hundreds of people on Etsy making actual creeper plushies and the like, without problem.

My question is, does anyone know any decent, cheap (or free!) resource to help her deal with these? Having looked through the legal papers, rights of fair use, she hasn't made any kind of infringement. Etsy seems to be on a 'shoot first, ask questions later' basis. It's also been discovered (in Fox's case) that many TM handlers will often wave papers around to get stuff taken down, even if they don't have legal backing, which really serves no purpose but inconveniencing people.

Though, I most likely don't have your answer - but I have a pretty plausible thought of what it's happening. It is most likely that people have reported if. Some people report things on such sites, if they are not what they hope they are. I must say, the idea sounds awesome. But, my legal super powers are limited to reading the fine print only. Though, if you can contact the companies that there's no problem using the phrases/names you do - then contact Etsy and tell them not to be so paranoid.

[Deleted]

Would it not be easier for her to change the names? Going against mega corporations rarely ends well.

[chazus]

Would it not be easier for her to change the names? Going against mega corporations rarely ends well.

Honestly? Not really. Both for branding purposes, and... Well she has about 60-odd scents currently. The fact of the matter would be she'd lose a ton of sales if she had to change all her stuff from say, Castiel, Creeper, and Pan Galactic Gargle Blaster, to "Angel with Trenchcoat" "Green Monster" and "Alien Alcohol"

The entire point of the shop (which has been rather successful for a good couple years now) is that it touches on things gamers are familiar with. Not cheap knockoffs.

[Lochton]

Thats no fun! The idea sounds pretty cool, but to hell with mega corps imo.

Yeah, what's the cool in random names if the whole idea is that they are made with inspiration from things? Really, it's either Etsy being paranoid or people hating and reporting.

[Yunru]

If its just name its nothing wrong...they cant do s***.

But if the bottle looks like crepper then its problem.

Also:
http://www.urbandictionary.com/define.php?term=creeper

[Stir]

It's likely that 'leaf on the wind' and 'creeper' aren't trademarked at all. Especially 'leaf on the wind;' I don't believe for a second Fox has that trademarked.

So it's quite likely the companies are just warning her in the hopes she'll pay royalties. So instead, ask the companies for evidence that they have it trademarked. If such evidence does not exist, go on brewing. If they still want to push it, and they don't have the trademark yet, they'll need to get it trademarked... Which is a lot of trouble if you compare it to the pretty small amount of money they can get for the royalties.

Basically: Call their bluff.

[chazus]

Really, it's either Etsy being paranoid or people hating and reporting.

It's two things. First, Etsy has a nearly 'zero tolerance' for trademark infringement. They will shut people down at a mere mention, even if its bogus. By "we take IP policy seriously", they mean "If a company emails us, we'll shut it down before looking into the matter or contacting them"

Second, many companies have people, or even departments, whose job it is, is to go around the internet 'looking for stuff' and flag them for infringement, even if it it not legally infringing. When it comes to legal things, you have to be accurate, and they are not. We found this out with the whole Fox debacle. Basically, Fox's department uses their clout to shut people down, even if the claims are bogus. It's... sad, really.

[Lochton]

It's likely that 'leaf on the wind' and 'creeper' aren't trademarked at all. Especially 'leaf on the wind;' I don't believe for a second Fox has that trademarked.

So it's quite likely the companies are just warning her in the hopes she'll pay royalties. So instead, ask the companies for evidence that they have it trademarked. If such evidence does not exist, go on brewing. If they still want to push it, and they don't have the trademark yet, they'll need to get it trademarked... Which is a lot of trouble if you compare it to the pretty small amount of money they can get for the royalties.

Basically: Call their bluff.

I would wonder if they even had any paper proof.

- - - Updated - - -

It's two things. First, Etsy has a nearly 'zero tolerance' for trademark infringement. They will shut people down at a mere mention, even if its bogus. By "we take IP policy seriously", they mean "If a company emails us, we'll shut it down before looking into the matter or contacting them"

Second, many companies have people, or even departments, whose job it is, is to go around the internet 'looking for stuff' and flag them for infringement, even if it it not legally infringing. When it comes to legal things, you have to be accurate, and they are not. We found this out with the whole Fox debacle. Basically, Fox's department uses their clout to shut people down, even if the claims are bogus. It's... sad, really.

Indeed, that is what I pointed at in a different post, that some people take sport/job into reporting things. I have seen it before among other online stores.

[chazus]

I don't believe for a second Fox has that trademarked.

The funny thing is, the original claim was for "Firefly" trademark. Serenity, the movie, is not Firefly, the series. It's the same... fictional universe? But legally, property wise, they are two very different things. Also, they said what was trademarked was "I am a leaf on the wind, watch how I soar". Not "Leaf on the Wind". So it was double false on that.

Basically: Call their bluff.

That's the problem. She's done that so far, but there are two problems with it. First, every time she calls their bluff, an item has to be removed for a couple weeks from her shop. Second, Etsy tracks that. They've notified her if she 'keeps getting infringement notices' they'll shut her shop down permanently. EVEN THOUGH they've been proven to be false.

[Sunseeker]

How are they particularly themed to these things beyond the name?

[chazus]

How are they particularly themed to these things beyond the name?

Nothing. She does her own artwork, has created the scents herself. They are 'inspired' by, but thats about it. Just the names. Her Etsy shop is down right now, and I'm not sure if I want to link the tumblr account, as it may be construed as advertising.

Here's a picture a customer took, so you can see what she does. There's no artwork or relation to the things they're inspired by, outside of the name itself.

[Garnier Fructis]

The funny thing is, the original claim was for "Firefly" trademark. Serenity, the movie, is not Firefly, the series. It's the same... fictional universe? But legally, property wise, they are two very different things. Also, they said what was trademarked was "I am a leaf on the wind, watch how I soar". Not "Leaf on the Wind". So it was double false on that.


That's the problem. She's done that so far, but there are two problems with it. First, every time she calls their bluff, an item has to be removed for a couple weeks from her shop. Second, Etsy tracks that. They've notified her if she 'keeps getting infringement notices' they'll shut her shop down permanently. EVEN THOUGH they've been proven to be false.

Have you tried contacting Etsy about this and showing them that there was no legal basis for the complaints? See if there is something in their Terms of Service that you can use against them in court if you get shut down.

If worst comes to worst, contact some news stations and give somebody a black eye over this. A story with the headline: "Big Corporations force small business to close using illegal tactics" is sure to be a juicy grab for any reporter now.

[chazus]

Have you tried contacting Etsy about this and showing them that there was no legal basis for the complaints? See if there is something in their Terms of Service that you can use against them in court if you get shut down.

That's what I suggested. Even if something gets temporarily removed, I want to make sure her account doesn't have some hidden black mark on it. Another problem is that she's in her last year of college, and has neither time, nor money, to deal with actual court stuff, unfortunately.

If worst comes to worst, contact some news stations and give somebody a black eye over this. A story with the headline: "Big Corporations force small business to close using illegal tactics" is sure to be a juicy grab for any reporter now.

Fox is already the target (not of her doing) to a great deal of ire over the Jayne Hats situation. But hating them and getting hundreds of thousand of people to fire protest work apparently doesn't do much to something as large as Fox.

[Halicia]

If worst comes to worst, contact some news stations and give somebody a black eye over this. A story with the headline: "Big Corporations force small business to close using illegal tactics" is sure to be a juicy grab for any reporter now.

If Fox's alienation of firefly fans on Etsy with the jayne hat fiasco didn't turn them away from this, nothing will.

Has she trademarked the names & logos for the fragrances ? (I believe fragrances themselves cant be patented or trademarked, right ?)

Even if Fox or somesuch claims to hold the legitimate claim, it at least gives her some standing until they can invalidate her trademark.

[Stir]

That's the problem. She's done that so far, but there are two problems with it. First, every time she calls their bluff, an item has to be removed for a couple weeks from her shop. Second, Etsy tracks that. They've notified her if she 'keeps getting infringement notices' they'll shut her shop down permanently. EVEN THOUGH they've been proven to be false.

After reading this, I looked at your location: US.
Yeah; to put it in perspective, where I'm from, that cannot happen to you. The shop being closed for false accusations of copyright/trademark infringement, that is.
If it's possible in the US: I'm not surprised. Yep, nation bashing of a sort. I feel sorry for you.

Edit: Etsy shop... That's an online shop? Yeah; they make their own policy and aren't strictly bound by law. Which means that they'll want to pander to the big boys (Fox, in this case) to avoid getting sued for large amounts of money.

[chazus]

Has she trademarked the names & logos for the fragrances ? (I believe fragrances themselves cant be patented or trademarked, right ?).

I believe the fragrance (the actual chemical mix) can be. The name cannot. There's no argument that Jinx (via Mojang) 'owns' Creeper. But owning it is not grounds or allowance for trademark infringement. It's sort of like the concept of Free Speech, and where that actually falls. So far, according to actual law of trademark.. She hasn't violated anything. Unfortunately, a lot of places (Ebay, Etsy, Paypal, Craigslist) dont really care about legality, just obeying companies requests.

If it's possible in the US: I'm not surprised. Yep, nation bashing of a sort. I feel sorry for you.

The patent system as a whole, as well as copyright infringement, is wholly a broken one. I won't argue with you on that in the least. She has mentioned moving to another country before, and this is just another reason >.<

[Sunseeker]

Here's a picture a customer took, so you can see what she does. There's no artwork or relation to the things they're inspired by, outside of the name itself.

Well for starters, specific names are trademarked. So, things like "Hufflepuff" can only be used with express written permission, regardless of the product they're on. "composite" names, such as "Sonic Screwdriver" need to demonstrate more direct connections. Also the BBC isn't as uptight about things as American companies. More vague composite names need to be almost complete duplicates.

Your biggest issue is the fact that they ARE references, you are basically profiting off their established product base.

[Dispersedshadow]

The skinny of it is 'Trademark Infringement' only really applies on unique works if it is something that might confuse people. Obviously, a 5ml bottle of perfume is not very similar to a blockbuster movie.

There's also the issue of trademark dilution, which can apply to non-competitive products. If I own the trademark for "Zombo.com" and start seeing it on bags of horse shit, I can go after that person for harming my trademark, even if there's not direct competition between a bag or horse shit and my human potentiation web service.

[Valort]

Some information is missing, for example: What are the images on the perfumes? What are their descriptions?
If those two, together with the scent's name, bring up enough resemblance to the franchise, they can ATTEMPT to call it a trademark infringement.

Just by "Leaf in the wind" they can't. But if the whole description mentions Firefly over and over, and has a picture of Wash or Serenity soaring through space, then it is MORE than enough. That is the tiny line between making a reference and leeching off their creative trademarks.

Try selling a lightsaber-shaped bottle of red-tinted vodka called "Vader's dark side", for example. Lucas (Or, actually, Disney now) would be up your rectum before you could say K-Y.