aundron Posted 25 Oct 2011 , 5:26pm
post #1 of

Soooooo, I was contacted by a major company about a cake that I did about 4 years ago. At first, I thought it was some type of scam, but I looked up the names and company where the email came from and it's legit.

They want me to sign some paper saying that I won't use their "logo" anymore, which, I haven't used since that one time!! Do I go ahead and sign or should I speak with a lawyer first?

I am just floored by this because I'm a SUPER small business and I work from my home, just shocked they my small business would be "outed" or that they would even notice the picture.

Edited to add, I am now removing other pictures as well!!

67 replies
TejasRebel Posted 25 Oct 2011 , 5:54pm
post #2 of

Wow. 4 years after the fact? I think personally I would do a little more research. Just because an email purports to come from someone doesn't always means it's legitimate. Something just seems "off."

caked4life Posted 25 Oct 2011 , 5:58pm
post #3 of

my opinion...DON'T sign anything until you have consulted with an attorney! Take the email and form and have it looked at by a legal professional.

jason_kraft Posted 25 Oct 2011 , 6:02pm
post #4 of

If all the paper says is that you agree not to use their logo without their permission, I would go ahead and sign it, but if there's anything else in the paper that you don't understand you may want to have an attorney look at it.

There are businesses that specialize in protecting intellectual property, it's very easy to do a quick search for something like "Buzz Lightyear cake" on Google Images and follow the links to find out who made them. Consider yourself lucky that they didn't ask you to pay anything, other people on CC have had to pay settlements for infringing cakes to avoid a legal battle.

cambo Posted 25 Oct 2011 , 6:18pm
post #5 of
Quote:
Originally Posted by jason_kraft

If all the paper says is that you agree not to use their logo without their permission, I would go ahead and sign it, but if there's anything else in the paper that you don't understand you may want to have an attorney look at it.

There are businesses that specialize in protecting intellectual property, it's very easy to do a quick search for something like "Buzz Lightyear cake" on Google Images and follow the links to find out who made them. Consider yourself lucky that they didn't ask you to pay anything, other people on CC have had to pay settlements for infringing cakes to avoid a legal battle.




Ditto what Jason says. I was also contacted by a major company General Counsel that held copyrights to 3 different companies/logos that I used for cakes. Thank goodness all three of the cakes were done for "free" without monetary gain, but they still insisted that I remove the images from my website, etc., and I even had "not for resale" on the images so folks knew I wouldn't resell them. They didn't care. I answered their questions promptly and honestly, and they responded that they were satisfied with my swift answers and quick reply, and I never heard another thing from them. I was never asked to sign anything, though. And they can fine you for each infringement/occurrence...scary stuff!

aundron Posted 25 Oct 2011 , 6:20pm
post #6 of

@jason_kraft:

I'm just amazed at this particular company because, well, the cake was made for someone who ADORES this particular brand and that's why it was made, plus, this company is HUGE and I would just pass out if they tried to sue me considering they make millions (probably billions) off of consumers every year.

but, I know that doesn't matter, just in shock about it. icon_sad.gif

mayo2222 Posted 25 Oct 2011 , 7:00pm
post #7 of

Even if you are able to get permission to use a company's trademark a lot of them will still say that you can not post them on your website.

kelleym Posted 25 Oct 2011 , 7:05pm
post #8 of

I was contacted by Jack Daniels a few months ago regarding the "Old Fart" cake back from 2007 in my gallery. It was a nice letter - as nice as those things can be, anyway - but they were very clear that they must protect their copyright. My lawyer advised me to remove the photo from my web site, which I did. Jack Daniels did not ask me to sign anything.

It's just not worth fighting over, even though my lawyer and I both felt that the cake in question was clearly a parody. My lawyer advised me that I was lucky they were not demanding monetary damages. She also advised that there are software programs that these companies use to scour the internet for their copyrighted images. It's not a matter of having low-level interns doing it manually any more. Intellectual property theft is rampant on the internet, and these companies have found a way to try to keep up with it.

aundron Posted 25 Oct 2011 , 7:17pm
post #9 of

As soon as I read the email, I IMMEDIATELY removed any images that I had online!!

Don't want any issues with them, as I said before, just needed to know what to do and really in shock by it.

(I will need "retail therapy" after this one or a really good martini, LOL)

luddroth Posted 25 Oct 2011 , 7:19pm

Companies must be able to show that they have taken efforts to protect and enforce their trademarks. Otherwise, the trademark becomes weak in the eyes of the law and may be copied or infringed leaving the original owner without a remedy. It doesn't matter how long ago you used it or whether you took payment for it, they have to enforce it or they can lose it. You should take down the disputed items from your website and agree not to use the logo again....

KathysCC Posted 25 Oct 2011 , 8:59pm

I would be VERY reluctant to sign anything. Ask yourself first and them, what would happen if you didn't sign it. Unless they threaten to take you to court over the original cake then I don't think they can really MAKE you sign anything.

What does your signing something promising not to make another cake do for them anyway? If you did make another cake (which I know you would not even think of doing at this point), then they could take you to court signed paper or not. Signing a promise not to do it again doesn't seem like it has much legal value IMHO.

funtodecorate2 Posted 25 Oct 2011 , 9:17pm

ok ... So all you cakers out there who have used some form of super hero, hello kitty , or toy story or the countless many others, all have copyrights to use them and post them on either your web site or This CC ?
Just asking cause I haven't a clue and surely wouldn't want to get into any hot water. I'm just a hobby baker for family.

jason_kraft Posted 25 Oct 2011 , 9:25pm
Quote:
Originally Posted by KathysCC

What does your signing something promising not to make another cake do for them anyway?



That's why I recommended signing the document if that's all it says...it wouldn't cost OP anything (since it basically says "I agree not to break the law"), and if that's all they want this will all go away for free.

I have a feeling there is a little more to the document though, in which case an attorney should have a look at it.

aundron Posted 25 Oct 2011 , 9:26pm

I haven't signed anything, to scared to make a move, LOL!! However, I am having a lawyer look over it and I'm just waiting for their response.

I guess I should only do cakes where I actually buy the characters and place them on the cake.

aundron Posted 25 Oct 2011 , 9:29pm
Quote:
Originally Posted by jason_kraft

Quote:
Originally Posted by KathysCC

What does your signing something promising not to make another cake do for them anyway?


That's why I recommended signing the document if that's all it says...it wouldn't cost OP anything (since it basically says "I agree not to break the law"), and if that's all they want this will all go away for free.

I have a feeling there is a little more to the document though, in which case an attorney should have a look at it.




Yes, there's a lot of "lawyer terminology" in the letter, so, before I make a move, I'm having someone look at it first.

ycknits Posted 25 Oct 2011 , 9:34pm

In order for one big company to protect itself from infrigement by another big company, they have to be able to prove in court that they have consistently and repeatably defended their protected property from infringement. So routine searches for infringement are not only common but required as part of their vigilence. When they encounter infringement, they must have a discoverable record that they followed up and dealt with the infringement. Otherwise, their case against another "big guy" would not be as strong in court, if they ever need to go there. They're not out there looking for a fight with a small, inconsequential player.... but it is one necessary part of protecting their property - and an expensive on-going effort for them.

kaat Posted 25 Oct 2011 , 10:06pm
Quote:
Originally Posted by aundron


I guess I should only do cakes where I actually buy the characters and place them on the cake.




That still violates copyright from what I understand. Unless it's the customer that purchases and places them on. Using the pictures of that cake to promote your business also falls into the "no-no" category, again from what I understand....

jason_kraft Posted 25 Oct 2011 , 10:12pm
Quote:
Originally Posted by kaat

Quote:
Originally Posted by aundron


I guess I should only do cakes where I actually buy the characters and place them on the cake.



That still violates copyright from what I understand. Unless it's the customer that purchases and places them on. Using the pictures of that cake to promote your business also falls into the "no-no" category, again from what I understand....



As long as the cake toppers are licensed (and not third-party knockoffs) you are not infringing by purchasing the toppers and putting them on the cake yourself, even if you sell the cake. US copyright law includes the "doctrine of first sale", which specifically allows someone to resell a legally-made copy of a copyrighted work without permission.

There is also no problem with using the pictures to promote your business, again as long as the toppers are licensed.

Vista Posted 26 Oct 2011 , 1:06am

This article is very interesting and pertains specifically to copyright/trademark and baking.

http://happysugarbakingland.typepad.com/happy-sugar-baking-land/2011/08/merci-beaucoup-shop-talk-cakes-and-copyrights.html

BizCoCos Posted 26 Oct 2011 , 1:30am

Sorry this happened to you, recently on another post this issue was discussed, I advised about the copyright issue, I was totally ignored, Nonetheless, I would have a lawyer look at the paper before you sign, I would do it quickly. These companies actually pay employees to search the internet for copyright issues. Hope this is resolved quickly for you.

enchantedcreations Posted 26 Oct 2011 , 2:07am
Quote:
Originally Posted by Vista

This article is very interesting and pertains specifically to copyright/trademark and baking.

http://happysugarbakingland.typepad.com/happy-sugar-baking-land/2011/08/merci-beaucoup-shop-talk-cakes-and-copyrights.html




Excellant post...........Thanks thumbs_up.gif

costumeczar Posted 26 Oct 2011 , 2:15am

Interesting about Jack Daniels...I called them and their legal dept said that they didn't give permission to use the logos per se, but that they didn't mind if people used it if it was a cake for a fan. I guess it depends on who you talk to and how you use the design.

scp1127 Posted 26 Oct 2011 , 1:25pm

If you study the law, copyright/trademark infringement does not depend on the actual sale. Free cakes are also an infringement. The case of selling and the amount of times it was reproduced is a factor in the amount of the judgement. In other words, they can get a judgement against you for a free cake, but the amount may be higher in a case of selling or repeated copies.

I'm glad to see that members are sharing their experiences with infringement. Maybe people will start to listen.

aundron Posted 26 Oct 2011 , 2:23pm
Quote:
Originally Posted by jason_kraft

Quote:
Originally Posted by kaat

Quote:
Originally Posted by aundron


I guess I should only do cakes where I actually buy the characters and place them on the cake.



That still violates copyright from what I understand. Unless it's the customer that purchases and places them on. Using the pictures of that cake to promote your business also falls into the "no-no" category, again from what I understand....


As long as the cake toppers are licensed (and not third-party knockoffs) you are not infringing by purchasing the toppers and putting them on the cake yourself, even if you sell the cake. US copyright law includes the "doctrine of first sale", which specifically allows someone to resell a legally-made copy of a copyrighted work without permission.

There is also no problem with using the pictures to promote your business, again as long as the toppers are licensed.




Okay, I figured that was the case, I mean, if it wasn't, what would be the purpose of cake supply stores or bakeries even, selling character cake toppers.

This has been a nerve wrecking experience, but, a lesson learned.

I wonder if they have gone after all the folks with their logo on cakes because there are a lot of them out there!!

gatorcake Posted 26 Oct 2011 , 3:36pm
Quote:
Originally Posted by Vista

This article is very interesting and pertains specifically to copyright/trademark and baking.

http://happysugarbakingland.typepad.com/happy-sugar-baking-land/2011/08/merci-beaucoup-shop-talk-cakes-and-copyrights.html




A terrible article. The comparison to fan art is problematic at best. Fan art is not protected, it is a violation of copyright. That no one cares does not mean it is protected. That fan art is not targeted most likely is due to copyright holders not wanting to anger fans. The same could not be said of decorators. Going after a decorator is not the same as shutting down conventions. In addition a decorator would be hard pressed to say their cakes, which in many cases are based on client requests, represent their fandom.

As for it being a derivative work--that is irrelevant as copyright holders hold the rights to prepare derivative work. Only they can authorize someone to prepare a derivative work.

Which leaves fair use -- good luck with that one. Fair use is coming under increasing scrutiny. Institutions of higher education are dealing with challenges to course packs, material on reserve etc--and that is a recognized exception. Any decorator would be hard pressed to prove their cakes were for criticism, comment, news reporting, teaching, scholarship, or research which are the recognized exceptions to under fair use.

Of course there is parody again good luck. It is not hard to tell that most cakes that use copyrighted images would not qualify as parody. You cannot simply make Hello Kitty and then say it is a parody. A cake would have to meet particular identifiable standards for it to qualify as parody. It is not parody because the decorator says it is.

enchantedcreations Posted 26 Oct 2011 , 5:22pm
Quote:
Originally Posted by gatorcake

Quote:
Originally Posted by Vista

This article is very interesting and pertains specifically to copyright/trademark and baking.

http://happysugarbakingland.typepad.com/happy-sugar-baking-land/2011/08/merci-beaucoup-shop-talk-cakes-and-copyrights.html



A terrible article. The comparison to fan art is problematic at best. Fan art is not protected, it is a violation of copyright. That no one cares does not mean it is protected. That fan art is not targeted most likely is due to copyright holders not wanting to anger fans. The same could not be said of decorators. Going after a decorator is not the same as shutting down conventions. In addition a decorator would be hard pressed to say their cakes, which in many cases are based on client requests, represent their fandom.

As for it being a derivative work--that is irrelevant as copyright holders hold the rights to prepare derivative work. Only they can authorize someone to prepare a derivative work.

Which leaves fair use -- good luck with that one. Fair use is coming under increasing scrutiny. Institutions of higher education are dealing with challenges to course packs, material on reserve etc--and that is a recognized exception. Any decorator would be hard pressed to prove their cakes were for criticism, comment, news reporting, teaching, scholarship, or research which are the recognized exceptions to under fair use.

Of course there is parody again good luck. It is not hard to tell that most cakes that use copyrighted images would not qualify as parody. You cannot simply make Hello Kitty and then say it is a parody. A cake would have to meet particular identifiable standards for it to qualify as parody. It is not parody because the decorator says it is.



I thought she raised some valid points; perhaps you could try being more liberal.. icon_lol.gif .....just a thought. I certainly didn't get this out of the article. Perhaps she was just arguing some of the other sides of this hot topic?

DSmo Posted 26 Oct 2011 , 5:29pm

Just wanted to share -- in case anyone is interested in Nintendo's official policy. I recently wrote them to inquire about permission to use Mario on a cake. This is their reply:

Thank you for writing.  I appreciate your interest in Nintendo and all our video game products.  To us, it represents a great sign of success and recognition of the Nintendo brand.

We are grateful for all the requests we receive for permission to use Nintendo properties; however, we receive thousands of requests and do not have adequate staffing to review them all.  Therefore, our general policy is to decline all such requests, no exceptions.  I realize this isnt what you wanted to hear and thank you for understanding.

Although we are unable to grant permission, use of Nintendo properties without our formal permission may still be allowed depending on the circumstances.  You are encouraged to seek your own legal counsel if you have any questions about whether your particular proposed use is permitted without Nintendo's authorization.  This is not a comment on whether we believe your particular proposed use is permissibleNintendo cannot provide legal advice.

jason_kraft Posted 26 Oct 2011 , 5:31pm

I also think the article raises some good points, but those points could have been better organized and outlined more succinctly. For example, the issues of fan art and parody probably should have been covered in a few sentences instead of several paragraphs.

enchantedcreations Posted 26 Oct 2011 , 5:47pm
Quote:
Originally Posted by jason_kraft

I also think the article raises some good points, but those points could have been better organized and outlined more succinctly. For example, the issues of fan art and parody probably should have been covered in a few sentences instead of several paragraphs.




Well, you know what they say about hindsight.....

I would also like to point out: If you are running a legal bakery, be it a store front or home front and you feel you ARE legal, then why get on a forum and be so shocked and dismayed over these situations? It should be a non-issue.

gatorcake Posted 26 Oct 2011 , 6:10pm
Quote:
Originally Posted by enchantedcreations


I thought she raised some valid points; perhaps you could try being more liberal.. icon_lol.gif .....just a thought.




Maybe you could actually address the point rather than attempting to address my criticisms by making it about me thumbsdown.gif. But hey why answer the objections when it so much easier to mock the author.

What in particular do you find useful in this article? The analogy to fan art is pointless. That companies do not go after those who produce fan fiction does not mean the fan fiction is not a violation of copyright. Absence of interest does not prove there is no infringement. So claiming decorating is like fan art is irrelevant. It very well might be. That is of no consolation to decorators who will find themselves the target of a cease and desist letter.

The discussion of derivative work is also irrelevant. Yes a cake could be seen as a derivative work. And? Does the decorator hold the copyright? No, so it is a violation of copyright as the owner of the copyright owns the rights to derivative work as well. So once again what is the point? Claiming a cake as derivative is not an exception to copyright. Unless you try fair use.

Thus, the fair use claim. Again what is the point? Fair use does not cover any work, it covers work under limited circumstances. At best a decorator can use parody under fair use. Too bad most cakes do not qualify as parody. Your ethics I guess if you make a cake for someone and then attempt to claim it is a parody in order to avoid copyright infringement. There are standards for parody and few of the cakes published on this site meet those standards.

So what exactly are the valid points that are raised?

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