Company: Taking Pictures of Our Product Is Copyright Infringement

by Greg Beck

One of the many advantages of the Internet for consumers is the competition it creates.  When Internet shoppers can easily compare the prices of hundreds of dealers online, it is difficult for any one dealer to get away with charging more.  Thus, prices fall and consumers benefit.

Not surprisingly, however, some companies don't like their prices being undercut on the Internet and have devised a variety of strategies to squelch unwanted competition.  Some companies claim using their names in an online listing infringes their trademark in the name.  An even more common approach is to claim copyright infringement over unauthorized use of product images.

California resident Jamie Olson ran into this problem when she decided to make some money selling salon hair care products online.  To test the waters, she bought some shampoo made by a company called Aquage and put it up on eBay.  Because consumers generally like to see what they are buying, the eBay listing includes a picture of the bottle that Olson took with her own camera.

The company was not pleased.  Olson soon received an email from a private investigator hired by SalonQuest, the maker of Aquage, demanding that she stop selling the products.  The reason:  "You are displaying copyrighted Aquage containers in your advertisements," which, according to the private investigator, is a "violation of SalonQuest's legal rights under the federal Copyright Act."  Olson was given five days to "immediately remove all Aquage products from your Ebay offerings" and "confirm for us in writing your agreement to permanently discontinue all sales of Aquage products over the internet or through any other form of mail order."  In other words, displaying a picture of the company's product, according to the company, infringes its copyright in the product's packaging.

Companies commonly claim that showing a picture of a product taken off a company's website for the purpose of reselling the product is an infringement of the company's copyright in the photograph.  Google, for example, receives a lot of claims that pictures turned up by its Froogle shopping system infringe various copyrights, and Google adds the demand letters it receives to the database at Chilling Effects Clearinghouse. Many of these claims are not frivolous.  Courts generally hold that a work need only be minimally creative to be copyrightable, and since most photographs involve at least some creative use of angles, lighting, and other compositional elements, they are generally protected.  Only the most uninspired of product photographs would be too unoriginal for copyright protection.

To get around this problem, smart online sellers usually take their own pictures of the product and use those with their listings.  This doesn't always work, however, because companies that think a photograph looks "too professional" will sometimes assume the picture was stolen. And other companies, like Aquage, claim to own a copyright in the underlying product, which would make any photograph of the product a copyright infringement.

Aquge's bottle appears to be a regular shampoo bottle, not particularly distinctive other than the name on the label.  Utilitarian objects like a shampoo bottle generally cannot be copyrighted, nor can purely textual material on a label.  Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068 (9th Cir. 2000).  Even if the bottle were copyrightable, taking a picture of it for purposes of resale would likely be considered fair use under copyright law.  Cf. Ty, Inc. v. Publications Int'l Ltd, 292 F.3d 512 (7th Cir. 2002).

Aquage also raises another claim commonly raised by companies trying to prevent online resale.  It argues that it has contracts with its distributors limiting resale of products only to licensed vendors. Therefore, it claims that reselling its products is a breach of its contracts.  But Olson never entered into a contract with Aquage.  She just bought the shampoo at a store and is now trying to resell it. Aquage's contracts with its distributors doesn't give it the power to control the entire secondary market for its products.

Even if a claim like Aquage's is without legal merit, however, many small online sellers who receive a threat like this would rather cut their losses and back down than risk a lawsuit.  It's usually not worth hiring a lawyer when you are only hoping to make a few bucks off the sale in the first place.  With threats alone, companies are thus able to control the secondary market. 

Olson, however, refused to cancel her sales in response to Aquage's threatening email. This week, she got a second email from the company's private investigator:

As you have been previously advised, this office represents SalonQuest LLC on issues relating to the distribution policies of its professional product
lines.

On September 7, 2006, this office contacted you on behalf of SalonQuest concerning your unauthorized sales of Aquage products on eBay.  Despite being formally notified that you are violating SalonQuest's legal rights, you have continued to list additional Aquage products on eBay.  Also, you have continued to display copyrighted Aquage containers in your advertisements, yet another violation of SalonQuest's legal rights under the federal Copyright Act.

SalonQuest would prefer to resolve this issue amicably.  However, unless you immediately and permanently discontinue your sales of Aquage products on eBay and through any other unauthorized channels, SalonQuest has authorized us to forward this matter and your file to its legal counsel for further action.

For now, Olson has decided to continue to ignore the company's demands. I'll post updates on this blog as the conflict develops.

Comments

[Joe Gratz]

I think it's an even easier case than you indicate -- it seems the seller in such a case wouldn't even have to rely on fair use. The Copyright Act deals specifically with this issue at 17 U.S.C. 113(c):

===
In the case of a work lawfully reproduced in useful articles that have been offered for sale or other distribution to the public, copyright does not include any right to prevent the making, distribution, or display of pictures or photographs of such articles in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports.
===

[dajolt]

I just went to the Aguage homepage.

On this they display a toll-free US phone number
you could call free to tell them that you do not
like this kind of behaviour.

[Cranston Snord]

In any case, a bottle of shampoo does not have the necessary creativity involved in its composition to qualify for copyright in the first place. Copyright is for creative works, not a name on a bottle.

And while trademark law _could_ apply to bottle design, it does not do so in this case because the product itself is genuine so the mark is not being used improperly.

[Kevin Wells]

Aquage's contracts with its distributors doesn't give it the power to control the entire secondary market for its products.

You're absolutely right. This is a classic case of the "first sale doctrine," which states that, after you have sold a copyrighted work, you no longer have the right to control what is done with it.

Unlike computer software and other digital works, where the distributors will claim that you are actually purchasing a "license," (which is ridiculous in itself, but that's another post), physical objects fall firmly within the first sale doctrine. It's the same reason that you can sell books to a friend or a second-hand shop.

[Brian]

Seems like this Blog also made it onto Boing Boing, so good old SalonQuest must be suing a lot of people by now.I can't wait to get my Desist Email Down-Under in Brisbane LOL!

[Bill Clinton]

What a bunch of low life "have nothing better to do" scum. Just leave people alone... telling that you can't take a picture of something and post it ... might as well put it into the same league as porno pictures... sheeesh

[Ashley]

This person has had filled numerous suits against companies making the same copyright and trademark claims.

http://www.tabberone.com/Trademarks/trademarks.html

[ummsabria]

HI, just reading this thread becasue I recently listed some Aquage products on eBay and also got an email,I was told that they only sell to licensed cosmetologists or salons, and that these licsensed professionals enter into contracts not to sell aquage other than in a professional salon, I am a licsensed cosmetologist and bought the product without any mention of a contract..I was told I have five days to remove all products and put in writing that I will never sell Aquage over the internet or through mail-order again and if I don't comply I will be contacted by their legal team,I'm trying to figure out if I am doing something illegal or not.

[bds]

I received that too .. here's a copy of the email:

This office represents SalonQuest LLC on issues relating to the distribution policies of its professional product lines.

As you know, SalonQuest manufactures Aquage products, a high quality line of hair care products that are sold exclusively through licensed beauty salons. SalonQuest has contracts with all of its distributors limiting the resale of its products only to licensed salons and cosmetologists. In turn, salons and cosmetologists purchasing SalonQuest products agree that the products will not be resold or redistributed through non-salon outlets.

It has come to our attention that you are offering Aquage products for sale on Ebay. This activity constitutes a violation of SalonQuest’s distribution policies.

We hereby demand that you immediately remove all Aquage products from your Ebay offerings and that you confirm for us in writing your agreement to permanently discontinue all sales of Aquage products over the internet or through any other form of mail order.

Absent a satisfactory response from you within five days of the date of this letter, the matter will be referred to SalonQuest’s legal counsel for further action.

Sincerely,
Patricia L. Urban

Security Essentials LLC

34 S. Main St.

Chagrin Falls, OH 44022

(xxx) xxx-xxxx

cc: Dennis Lubin—President, SalonQuest LLC

[Angel]

Any updates on this??? I'm having the same correspondence right now myself?????

[Johnnybegood]

Okay, what is the deal? I too am an eBay seller and received this same letter. I think the way around it is to list the item WITHOUT a picture. And if you use a picture, either blur out the Aquage logo/name or turn it to the side so one cannot read the Aguage name. Any suggestions? This product does sell well online but does not sell for CRAP in the beauty salon

[Rosie]

These comments have been invaluable to me as is this whole site. I thank you for your comment.

[Jarod]

quote: "This product does sell well online but does not sell for CRAP in the beauty salon"

Given that bit of information, I wish everyone would comply with their requests / demands and leave the sales (or lack of) to the salons. After having inventory sitting on the shelves for far too long, perhaps even they will stop selling the products and the-shampoo-whose-name-cannot-be-spoken (for fear of "copyright infringement") will disappear from the face of the Earth.

[Ciordia9]

What ever happened with this?

[Greg]

As to the case covered in the blog post, SalonQuest did not pursue the issue beyond sending threatening letters. Since then, others have complained about receiving the same or similar letters, but I have not heard of any cases where SalonQuest has taken any further action.

[Lorenz Harms]

Simplicity, maker of sewing patterns is doing the exact same thing to my wife. She's been contacted repeatedly by a lawyer for Simplicity to cease and desist using pix she took of the patterns; for sale on Ebay. These are patterns she's collected over the years and now is just trying to clean out her closets.

[Australian Gold tanning lotion]

These companies need to quit harassing the little guy. What we need is a huge judgement or 2 slapped on some of these companies that act this way. Since when did filing a lawsuit and intimidation someone become part of a legit business plan. It is time for the Feds to step in.

[Bill]

Couldn't there be a case made for harassment? I would think that if they do not have a legal leg to stand on and you've indicated your position when they filed a suit against you, you could then create a counter suit for harassment and anguish...

[California Beauty Salon Insurance]

There should definitely be some copyright laws for internet sales. I just don't see how you can enforce them with the internet being just about as big as the universe.

[Paul]

A couple of things. First, if it was a legitimate copyright claim, Salonquest could send a Notice of Claimed Infringement under the DMCA and eBay would remove the auctions. This however, carries the liability of a lawsuit for frivolous NOCIs. Its called a useful article. I think Salonquest MAY have a legitimate point about its distributors and its agreements BUT that is a claim AGAINST the persons/entities that sold the item to the eBay sellers and likely only if it can prove the distributors sold the product knowing it would be resold on eBay. Perhaps the licensed cosmotologist might beat even this one.

Please remember, there are many companies that abuse copyright and trademark claims but most do not and are victims of counterfeits and heavy use of their marketing materials (those pro photographers get paid pretty decent and their equipment ain't cheap either). The eBay sellers know the pictures make sales. If these things did not make a differents, Nike would NEVER pay Lebron $90 million to sell shoes.

[amanda Peco]

The only recourse Aquage has is to track the bottles being sold back to the salon they came from and then cut off the sales to the salon. They have not pursued any lawsuits against anyone on ebay....they just keep sending threatening letters to scare any small seller who might be selling their products.
Aquage, I believe does not have the ability to track the products. You can find hundreds of them on Amazon.com and the whole line is being sold on the internet every day at Sleekhair.com. If they could track the product or follow thru with any lawsuits, these products would have long ago been off the internet. They talk the talk, but they do not walk the walk.

[barbarasdaughter]

I just got this same letter to the T, it is amazing how this person can write such letters and threaten people. What can we do about this? I bought multiple botls and cannot use it so i plan to sell it on E-Bay and as a Seller i am doing everything including listing the right way. Is it right that this person do the wrong thing and threaten everyone? is that not grounds for Harassment?I am not going to stop selling this product until it is sold this is SECONDARY product.