Skip to main content

Can I use licensed fabric bought a the fabric store in items I sew and sell at farmers markets in So. Cal.?

Temecula, CA |

I have seen other vendors do this and was told there is a second sale law in Cal. that allows this under copyright/infringement laws. I would like to buy and sew pet products from these fabrics and sell them but I want to make sure it is legal. I have a DBA and resale permits, and want to do the right thing. I also purchase embroidery software that has pro teams and school as well as licensed characters that I'd like to embroider and see on pet tee shirts,

the last line should read, "licensed characters that I'd like to embroider and sew on pet tee shirts." What about Precious moments vs La Infantil whereby the court ruled in La Infantil's favor? What if i add a disclaimer ie. that I'm selling an outfit made with Rangers or Hello Kitty printed fabric and not that I'm selling a Rangers tee or a Hello Kitty dress? That my product is not licensed by any group. What I want to do is cut an applique from the aforementioned fabric and sew it on a pet tee shirt but I'm not claiming it to be licensed Sanrio, NFL or otherwise, my market is small, I do 2 farmers markets.

Attorney Answers 4

Posted

I know of no such second sale law. There is such thing in copyright law as the first sale doctrine, which allows the purchaser to sell or give away a particular lawfully made copy of the copyrighted work without permission once it has been obtained. This means that the copyright holder's rights to control the change of ownership of a particular copy end once that copy is sold, as long as no additional copies are made. This doctrine is also referred to as the "first sale rule" or "exhaustion rule."

I've never heard of licensed fabric, but I'll assume there is such a thing. Maybe for example you could go to Warner Bros. studio store and maybe they sell bolts of fabric printed with their Looney Tunes characters on it. In that case, they've apparently licensed their trademarked cartoon characters for you, the buyer, to make pet t-shirts or whatever, out of it. That would seem to be an authorized use. Same would go for software if the trademarks are actually licensed from the trademark owners.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.

Mark as helpful

1 found this helpful

Posted

This comes up a lot in quilting - fabric is usually licensed and you may not use such fabric for articles you intend to sell. Therefore, if you intend to make pet tee shirts you cannot use licensed fabric. This also holds true for embroidery software of pro teams, schools, and licensed characters.

Mark as helpful

Posted

I apparently have a lot to learn about quilting. To amend my prior answer, licensed fabrics are in fact licensed from the trademark owners but are meant for individual use only and NOT for resale in any products of any kind.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.

Mark as helpful

Posted

There is, I think, much confusion about how the law treats the use of fabric that displays another's copyright or trademark-protected image. The image could be a "character" (Disney's Donald Duck) or any other image (Nike's swoosh).

As already ably noted, it's unlawful to sell a product that displays someone else's image without the image owner's permission -- even if the maker of the product lawfully purchased the fabric (or any other material) that contains the image.

The rationale is simple: consumers would likely falsely believe that the image owner either made the product or sponsors, endorses, or is somehow associated with the maker of the product made from the fabric (in violation of trademark law). In addition, the image owner (more precisely, the owner of the copyright in the image) owns the exclusive right to reproduce and distribute images of the image and to make derivative works based on the image -- such as a product made from fabric that displays the image (in violation of copyright law).

There is no confusion or dispute over this rule or its rationales. The confusion arises when considering the purported "license" that attaches to the fabric. Here's my take:

By purchasing the fabric, the purchaser bought the right to do with the fabric what the fabric was designed for -- i.e., to make something. No "license" is needed for the fabric owner to make that something for his or her personal use. The fabric owner's personal use right falls within his or her (tangible) property right in the fabric. This is much like the right to read a book aloud or to perform music in your home or to display a painting -- each of which is simply the owner of the physical copy of the work using the work for which it was intended (even though each such use would invade the copyright owner's rights if that personal use was not permitted by statute).

In short, no "license" is needed to make something from the fabric so long as that something is not put in the stream of commerce. Any "license" that purports to convey that personal use right is unnecessary and UNENFORCEABLE because that right was, in fact, purchased -- it is owned by the person who bought the fabric. Any such personal use "license" is bogus.

The reason manufacturers attach a personal use "license" to the fabric is so they can make clear to the buyer that no commercial use of the image-displaying fabric is permitted. But that is NOT a "license" to do anything -- it is simply a preemptive, and strong-arm, attempt to stop the fabric owner from making a commercial use of their copyright or trademark-protected image. It is not a license, it is a warning.

In my view, these purported "licenses" do a great disservice to the public because they confuse consumers into believing that the images on the fabrics are "licensed." They are not.

If the owner of an image did, however, grant the fabric owner the right to make commercial use of the image as part of the consumer's transaction when purchasing the fabric then that grant WOULD be a license. But I doubt any such licenses exist (the owner of the character having no motive to grant one).

Mark as helpful

3 found this helpful