Expert advice on the business of running a garment decoration company
I’ve been asked by a customer to print some T-shirts with the title of well-known song. I was wondering if there are any copyright issues with this? And would I be the one in trouble if there are copyright issues, or will it be my customer who takes the blame?
Using someone else’s intellectual property (IP) without their consent can land you in hot water. This applies to all types of IP, but in particular to copyright, which includes logos, other graphic works and written works. Song titles and song lyrics would fall under copyright protection as written works if the title or lyric has all the legal requirements of originality. Infringement of the works can occur if a copy or substantial copy is made of the work – printing on a shirt could therefore qualify as copying a whole or substantial part.
But copyright is only part of the problem. In 2015, Rhianna successfully sued Topshop in the UK for selling a range of shirts that had a photo of her on it. Rhianna did not own the copyright in the photo, but she was able to show that Topshop had misrepresented that there was a connection between her and the goods they were selling. What this means in practice is that even if the copyright claim is imperfect, the songwriter may have other legal options available to them.
Your customer would be the most likely target for an IP owner wishing to enforce their copyright (or to sue for ‘passing off’, as Rhianna had done), as it is the sales of the product they are most likely concerned about. However, this does not prevent them from seeking a remedy (such as an injunction or even damages) against you. In the absence of agreement with your customer, it may be unclear who ultimately should be landed with the liability.
This situation is best avoided by ensuring that your standard terms and conditions are rock solid from the start. This is usually done by having terms that ensure: 1) you have consent to use any of the client’s IP for the agreed job; 2) the customer warrants that they have a licence to the material or that there are no known IP issues with any of the materials; and 3) the customer takes responsibility for any infringements. Shifting liability like this in a contract is best done by a legal advisor, preferably with specialist knowledge of IP.
You should also ensure that you include the right to terminate the contract if you have knowledge or reasonable belief that the material infringes someone’s IP. The right to terminate can also include other reasons, such as termination on moral or ethical grounds if the material provided is offensive.
If you have a sales team, it might also be worth briefing them on the basics of IP rights and not to bury their heads in the sand if there is a reasonable suspicion of IP infringement. Referring a customer to the IP provisions in your standard terms before entering the contract could save a considerable headache down the road.
Jake Hayes is a solicitor at Briffa, a firm of specialist IP lawyers providing tailored legal advice to clients of all sizes on the protection, commercialisation and enforcement on the range of their IP rights.