I saw the following article (excerpt provided) below tweeted by my Fashion Law colleague Charles Colman and thought it worth sharing with you all. It is an article authored by a fellow Fashion Law West Coast based colleague, Robert Ezra. It covers, concisely, some of the pitfalls to avoid when purchasing prints so you avoid the Kate Spade type copyright infringement lawsuits, among others. I also appreciate the candid discussions on the applicability of Copyright Law in a modern age. It is a conversation we continue to have in legal circles, as the business and technology climate evolves at a very rapid pace.
7 Steps to Avoid an Infringement Lawsuit
1. Confirm with the mill that it owns the copyright. Start with asking the mill if it has a copyright registration of the print it’s offering. If it does have a copyright registration and you rely on that registration, that may be sufficient to sidestep the willful-damages claim.
2. Ask the mill to see evidence of the original-work authorship to review the documents which are the source of the design. In some cases, the mill itself may have bought the design. If so, you may request a bill of sale. Make sure it includes a statement that the seller (the person from whom the mill bought the design) in fact had a copyright registration and is transferring that copyright to the buyer. The mill should also have an assignment of the copyright.
3. Get an indemnity from the mill that covers both you and anyone to whom you sell product. This indemnity can be included in your purchase-order documents. The signature of the mill on that particular order is always recommended. However, the indemnity of the mill may be fleeting. First, the mill may not have sufficient assets to cover the claims for damages. Second, they may be offshore suppliers, where jurisdiction of the federal court may be limited. If the mill is local or offshore, find out if the mill has its own insurance which covers you for alleged copyright-infringement claims.