Does first sale doctrine apply if I upcycle clothing from a thrift store and sell it? T-shirt may have popular character or team
4 attorney answers
You received good responses. In general, you are not prohibited from buying a branded item, lending your own creative contribution to that item then reselling it. What you can't do is create any market confusion regards to the source of the product. As noted, the fact that you would be playing off the popularity of the character or team depicted on the item tells us that you run a real risk of trademark infringement.
Before you jump in here, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
The trademark first sale doctrine provides that a brand owner may not prevent purchasers of one of its genuine, branded products from re-selling or otherwise disposing of that particular product.
The brand owner may, however, prevent purchasers of one of its genuine, branded products from re-selling or otherwise disposing of that particular product if it remains branded but is modified such that it's "essentially a new product" or if the re-seller or the modified product otherwise deceives third party potential purchasers into falsely believing the brand owner is the source of the product or sponsors or endorses the product or stands by the quality of the product.
Your plan to sell "upcycled" flannel shirts by adorning each with a well-known trademark [a "popular character or team"] not only infringes the trademark rights owned by the flannel shirt manufacturer but also the trademark rights owned by the company whose trademark is attached to the shirt.
Speak with your own Minnesota-licensed intellectual property attorney. Good luck.
The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
If you are cutting someone else's trademarked design off a T-shirt and adding it to something else, then there is a trademark infringement concern, and you should discuss with an intellectual property attorney in a private consultation.
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This sounds like a law-school exam question!
The circuits are, I believe, split on this issue. Under similar facts, Lee v A.R.T. (7th Cir) allowed a defendant to reuse artwork on another 'form' (medium), while under Mirage Editions (9th Cir) having similar facts found for the Plaintiff.
So, if you try, you're taking a real and substantial business risk.
You should certainly seek an experienced, local attorney who specializes in Trademarks.