I intended to provide an update on the status of the unauthorized book seller who plagiarized my works and reused and modified my images without permission, along with thousands of other authors’ titles, but my brother tragically passed away two weeks ago. I feel guilty even writing this, but life must go on. It seems that applying for a trademark and using it to register with Amazon Brand Registry has helped prevent unauthorized sellers from modifying my titles without my permission.
Initially, I had received a counterclaim from Personalized JoyCraft regarding my copyright. Amazon stated that the unauthorized book would go live once again within 10 days if I hadn’t provided additional court-related information which I was prepared to do. But I had to explore all other avenues first, and that involved Amazon Brand Registry. I reached out to them twice to ask if they could prevent this unauthorized title from being listed again. Both replies were extremely vague and short, simply stating the unauthorized titles were removed. It wasn’t clear at all if they were referring to them being previously being removed or being prevented from being listed moving forward. I’ll post their response later below when I have more time to do so.
I wasn’t aware, but the legality of these unauthorized third parties modifying our titles was already in the courts. The current case is Steeplechase Arts & Prods. vs. Wisdom Paths, Inc. d/b/a Spiralverse. This case involves a company producing a top-selling book for pianists versus a similar outfit that took their books without permission and turned them into spiral-bound works for resale.
I should note that a different company (as far as I can tell) is behind these actions than Personalized JoyCrafts, which was repurposing my coloring books. I don’t know if they reused/plagiarized the original listings or covers either. However, Personalized JoyCrafts reused my cover without permission, slightly modified it, and plagiarized my text description from Amazon.
For those who don’t want to read a lengthy description of the court proceedings, the defendant argued a “First Sale” doctrine but failed to provide prior court rulings to support their claim. The court, on the other hand, seems concerned about whether Spiralverse’s modifications are distinct enough from Steeplechase’s original work to avoid confusing buyers about who the original author is. Another interesting point is Amazon’s role, as they allowed these modifications to be listed as “new” instead of “used” or “like new.”
I’m not a lawyer, but I believe this issue is ongoing, and the positions and responsible parties haven’t been fully clarified. Initially, I speculated that the financial impact of modifying existing works was in the thousands of dollars annually. However, this case demonstrates that there is much more money involved—possibly tens of millions of dollars in annual revenue.
Here’s is a breakdown of the overall case.
Below is a partial copy of the case below regarding the “First Sale” doctrine:
iii. “First sale” defense
The “first sale” doctrine is an affirmative defense to trademark infringement claims, and Spiralverse argues that it applies in this case. (Opp. 7.) Under that doctrine, “a trademark owner’s authorized initial sale of its product into the stream of commerce extinguishes the trademark owner’s rights to maintain control over who buys, sells, and uses the product in its authorized form.” Iberia Foods Corp. v. Romeo, 150 F.3d 29, 301 n.4 (3d Cir. 1998). “The rationale for the rule ‘is that trademark law is designed to prevent sellers from confusing or deceiving consumers about the origin or make of a product, which confusion ordinarily does not exist when a genuine article bearing a true mark is sold.’” Brilliance Audio, Inc. v. Haights Cross Communications, Inc., 474 F.3d 365, 369 (6th Cir. 2007) (quoting NEC Electronics v. CAL Circuit Abco, 810 F.2d 1506, 1509 (9th Cir. 1987)). Thus, the critical question is whether a product resold by an alleged infringer is “genuine.” If so, no infringement has occurred. See, e.g. Weil Ceramics & Glass, Inc. v. Dash,878 F.2d 659, 671 (3d Cir. 1989) (quoting NEC Elecs., supra) (“Trademark law generally does not reach the sale of genuine goods bearing a true mark even though such sale is without the owner’s consent.”) (emphasis in original); Iberia Foods, supra, at 302 (“[A] trademark owner attempting to use § 32 to prevent an infringement must establish that the products sold by the alleged infringer are not ‘genuine.’”)
A product is “genuine” if there are no “material differences” between products sold by the trademark owner and those sold by the alleged infringer. Iberia Foods, 150 F.3d at 302-303. “When the products sold by the alleged infringer and the trademark owner contain identical marks but are materially different, consumers are likely to be confused about the quality and nature of the trademarked goods.” Id. at 303. On the other hand, if the difference between the products is so minimal that “consumers who purchase the alleged infringer’s goods get precisely what they believed that they were purchasing, consumers’ perceptions of the trademarked goods are not likely to be affected by the alleged infringer’s sales.” Id. (Citation omitted.) The “material differences” test is thus a means to “determine whether the allegedly infringing products are likely to injure the goodwill developed by the trademark owner in the trademark goods.” Id.
Spiralverse does not appear to dispute that there are “material differences” between its spiralbound books and the paperback originals sold by Steeplechase. (Sp. Opp. 7.) Rather, Spiralverse contends that the “first sale” doctrine shields a reseller from liability where the reseller clearly communicates to consumers any material alterations that the seller has made to the product. (Id.) Although Spiralverse did not cite any cases in support of this argument, it has intuitive appeal. If a consumer understands that the reseller is responsible for any material differences between the resold and genuine product, then the owner’s goodwill in the trademarked product is unlikely to be damaged.
However, as discussed above, it is not at all clear that Spiralverse’s label alleviates all confusion about which entity is responsible for the rebinding, particularly in light of the fact that Spiralverse advertises its version of the Piano Book as “new.” If consumers understand that Spiralverse modified the binding but believe that it did so with the permission of or in association with Steeplechase, the goodwill of the Steeplechase Mark could still be affected. Accordingly, Spiralverse has not established that the “first sale” doctrine applies to its sale of the spiralbound Piano Books.
V. Conclusion
Spiralverse’s motion for summary judgment (DE 22) is GRANTED IN PART and DENIED IN PART. Specifically, the motion is granted as to the copyright infringement claim asserted in Count 1 and denied as to the trademark claims asserted in Count 2. Steeplechase’s motion for summary judgment (DE 24) is DENIED. An appropriate Order will issue.
