How to avoid IP claims when selling T-shirts and other creative promotional products

INTRODUCTION

Our modern e-commerce world is just beautiful. Anyone can launch a t-shirt sales empire literally overnight with print-on-demand services such as Amazon Merch on Demand, Redbubble or other related sites. However, having the ability to upload designs and profit is not without its legal risks. Creators are advised to be very careful about infringing the copyrights and trademarks of third parties (and possibly implicating publicity rights of people showcased on your t-shirts). This blog discusses some general things to think about to PROFIT and stay OUT OF LEGAL TROUBLE. Believe me when I say there are many IP rights holders policing the social media platforms such as eBay, Amazon seller accounts, Etsy, and other sites looking for infringements and ready to issue cease and desist letters, IP DMCA takedown notices, and, in some cases, even file a civil lawsuit seeking damages under the United States copyright, trademark, and state right of publicity laws.

HOW TO LEGALLY CREATE YOUR T-SHIRTS TO AVOID IP ISSUES

Here is a general overview of how you MIGHT go about becoming an Amazon print-on-demand merchant, and it highlights the key legal issues. This is just one scenario.

1. Sign up for Merch Informer to look for hidden subniches (areas not being addressed) so you can try to get visibility and sell some merch. Look for the keywords (using the keyword finder tab) and see where there is "LOW" level competition (this will be highlighted in GREEN).

Okay, cool, so I want to create a defense lawyer t-shirt. But I want something a bit funnier to add. I knew a criminal lawyer once who told me all his clients are "innocent until proven broke."So, let's check on something like this.

We need to make sure we can come up with a funny and clever phrase and/or design and make sure this will not create any trademark issues. Trademark owners who are serious about their IP scour the web by themselves or via the help of a third party such as MarkMonitor and Red Points. They look for infringements online and send cease and desist letters to protect their client brands. No, they're not always perfect; I had to fight RedPoints to get them to pound sand on one of my videos.

Merch Informer has a trademark search feature that can help you stay clear of IP legal issues and lawsuits. Do a thorough search for niche t-shirt ideas on Merch Informer. It's hard to compete in a crowded market, so find a niche, and come up with some fun and funny t-shirt designs and slogans that will compel people to pay $20 or more for your merch.

2. Search Etsy.com for ideas to see what's out there. Once you have a general idea on niche ideas, do a Google search to see what's out there already (you want to be unique) and I would search Etsy, Amazon, Google, and eBay to see what's already out there. You want to be original and not copy any others. This can lead to legal problems with both copyright and trademark law. BE A TRUE CREATOR.

Upon checking these sites, I did not find anyone using the above phrase, so I am feeling good about using it. These can also be used for Amazon's amazing seller merch account (you do the ideas, and they do the fulfillment). See more below.

3. Check with Grok/ChatGPT for ideas in your niche:AI tools will also give you great ideas for funny t-shirts that consumers may love; just tell these AI tools what you are trying to accomplish and what you think is funny, and ask for more ideas. You will get them. Once you get them, do more research as noted above to make sure the ideas are original and unique.

2. Go to Placeit.com to get your design template for various products such as:

Once you have figured out what you want to produce on a t-shirt, go to PlaceIt.com to create a unique design for your shirt. There are other sites, but check this one out where you can use your design on:

• Business cards
• Masks
• Hoodies
• Tote bags
• T-shirts
• More

THE SITE SAVES YOUR ARTWORK AS A PNG FILE. CREATE A MOCKUP OF YOUR T-SHIRT!

3. Upload your designs to a print-on-demand service. Set your price, add your keywords and description, and choose your colors. They do the rest (shipping/fulfillment and customer support). This is what we call "mailbox money" (with a little effort on your side, of course). Amazon merch on demand is the perfect destination for your designs and to build a creative business that does not infringe on third-party IP.

POTENTIAL TRADEMARK ISSUES:

Here are a few things to be careful of when submitting and posting your commercial designs. Many companies pay lawyers or third parties to scour the web looking for images and designs that infringe their IP. If this happens, you can expect a DMCA takedown to the platform you are commercializing, and/or you may receive a cease and desist letter from a law firm, typically a huge law firm with hundreds of lawyers. This is what you want to avoid because you can end up spending a lot of time and money only to be shut down and perhaps have your account terminated (this is no fun). Here are some of the key TRADEMARK issues to be aware of in this regard:

• Quoting movie lines on your merchandise can lead to legal problems. These things were created by the studios, and if you are simply copying their concepts, it could result in unintended consequences.

  NOTE: Many movie studios trademark iconic catchphrases (“Hasta la vista, baby,” “May the Force be with you”). If a phrase is trademarked, using it on merchandise could be trademark infringement or dilution (for famous marks), especially if sold commercially. This can create a "Likelihood of consumer confusion" as to who created the t-shirt or item.Even if unregistered, if the phrase is strongly associated with a movie franchise, using it could mislead consumers into thinking your merchandise is authorized.

• Song lyrics (similarly, highlighting song lines such as "Born to Run" or "Purple Rain" on your merch can lead to legal problems). You did not create these, and in some cases, these short slogans may be subject to copyright or trademark protections.
• Company logos (e.g., college and pro sport team logos). Using the logo of a college or pro sports team (e.g., to sell blankets, mugs, or other merch) can also lead to problems. Typically, you want to reach out to these companies and get a legal license to sell and distribute products containing their intellectual property. Don't just rush into this figuring no one will notice; they will likely eventually figure it out and want you to disgorge your profits.
• Company phrases/slogans (ex. "Just do it"). This is another big area; slogans can be subject to United States federal trademark protection. So, before using a third-party slogan on a t-shirt or memorabilia item, it makes the most sense to seek a license so that you can ward off any infringement DMCA takedown notices or be able to respond to a cease and desist letter with the defense of having a license. Without a license, you run the risk of a legal response.

Attorney Steve Tip: Remember, the test for trademark infringement is whether your content is "likely to confuse" other consumers as to the source or affiliation of the product. For example, if someone really thinks the above is from Staples (the creator of "that was easy"), then the result could be a trademark issue. However, this is "poking fun at the original" (which is required to qualify as parody), and a reasonable person would not believe Staples is marketing this. It is a parody; thus, no trademark infringement. Parody applies in copyright infringement allegations as well.

COPYRIGHT ISSUES

Along with trademark infringement issues for using the logos, slogans, and other trademark-protected materials, if you want to get into selling legally, you will also need to be aware of copyright infringement claims. Copyright law protects the original work of authorship fixed in a tangible medium of expression.

While it is fairly easy to search the USPTO (Patent and Trademark Office) for registered names and marks, it is much harder currently to search the USCO to see if someone has registered the image you want to put on a promotional item. Thus, a good web search, or using ChatGPT or Grok to help search online, may be a good first step to seek copyright clearance.

Copyright infringement applies where you have access to copyrighted content and make something "substantially similar" to another person's or company's copyrighted content (whether registered or not). Note, registration with the United States Copyright Office ("USCO") is a prerequisite to filing a federal court infringement lawsuit in the United States.

• Copying someone else's design, logos, or other creative material. (ex., putting the BMW logo on a shirt and seeking to sell it).
• Copying a famous cartoon character on your t-shirt (e.g., Mickey Mouse, Bart Simpson, or SpongeBob).
• Using movie still images on a mug or backpack (e.g., a still image of a scene from Star Wars or The Godfather on a T-shirt).
• Using paragraphs from a novel or script (e.g., Harry Potter quotes).
• Using a professional photographer's picture of a celebrity, landmark, or sports moment on your shirt.
• Taking an image you find on Google and turning it into a product. Just because you do not see a copyright symbol on the picture does not mean it is NOT copyrighted. Copyright protection is automatic. So be careful!!
• Printing paparazzi shots or magazine cover photos onto merchandise.
• Selling shirts with Pokémon drawings made by a fan artist without their or Nintendo's permission.
• Unauthorized fan art (e.g., creating a T-shirt that shows Marvel superheroes in your own style but still recognizable)

  Key point: Even if you change the image a little (add text, change colors, or crop it), if the underlying creative expression is still recognizable, that can be copyright infringement.

ATTORNEY STEVEV® NOTE: Independent creation is a defense to copyright infringement.

So again, be original, conduct a reasonable search before you "go to print," and go for it! If you don't document a solid search, you risk facing infringement actions that could not only shut down your sales channel but also result in a federal lawsuit.

RIGHT OF PUBLICITY ISSUES

Merch-on-demand creators also need to take great care to NOT just blast the image or likeness of celebrities on their t-shirts or other merch. You need to obtain the legal rights to do this, or you can, once again, face a cease and desist letter, a DMCA takedown notice, account suspension or termination, and/or a litigation action under California's right of publicity laws. (Watch video).

For example:

• Selling t-shirts featuring a rock star, band album cover or band image, actor or actress, or a famous athlete like Patrick Mahomes (or anyone else for that matter).

This is risky business. I would not do this unless I had the specific legal licensing rights. Reach out and ask to share profits in exhange for permission; you might be surprised. For an example of doing it "legally," check out the NFL player's association website where you can license a famous athlete's name, image, and likeness (including voice and other identifying characteristics). There are also ways to license goods from college athletes on Openendorse and other NIL endorsement sites.

CONCLUSION

I hope this blog has been helpful in explaining some of the IP legal pitfalls one faces when trying to produce, sell and market t-shirts and other promotional products (merch) in the United States. It's not fun to make money only to have a large brand wanting you to disgorge all your profits and have the platform you are selling on terminate your account. Paying special attention to the rights of other creators and seeking permission or a license are good first steps to take. You also should search your new designs online to make sure no one will send you a cease and desist letter. Although I like my shirt idea (Criminal Defense Lawyers—Clients are innocent until proven broke), it is not what I believe, so I will pass on this one!!

RESOURCES: TOP PRINT-ON-DEMAND MERCHANTS

Here are the top two (in my opinion) merch-on-demand sites to look into. There are others, but I think these are the best players in this space.

1. Amazon merch on demand
2. Redbubble

PER SHOPIFY, HERE ARE SOME OTHERS:

The 11 best print-on-demand companies

1. Printful: Best global POD service
2. Gooten: Best for custom homeware
3. Apliiq: Best for custom clothing
4. Gelato: Best for custom stationery
5. Tapstich: Best for unique products
6. ShineOn: Best for custom jewelry
7. JetPrint: Best for custom watches
8. AOP+: Best in-house printing