Insight

Recycling, Upcycling, and Intellectual Property: What Companies Need to Know

Laudable or litigious? What you need to know about potential copyright and trademark infringement when repurposing products.

Repurposed Products and Copyright Infringemen
KG

Karen Kreider Gaunt

June 7, 2022 09:31 AM

GIVEN THE CONTINUED focus on sustainability and scrutiny of environmental, social and governance metrics (ESG) for publicly traded companies, existing and startup entities alike may have a keen interest in recycling and upcycling for both environmental and promotional reasons.

A robust recycling and upcycling program isn’t just good for the environment; if done authentically, it can also be a powerful way to promote a company’s goods and services. When original goods that include preexisting third-party intellectual property are upcycled, however, this can implicate certain trademark and copyright concerns.

Whether a company can freely upcycle such goods depends on the content of the original product and whatever has been added to it. Without a careful analysis, a company selling upcycled goods could be subject to trademark or copyright infringement claims. In some cases, though, neither IP right would be implicated, so seeking the advice of experienced counsel is critical.

Context is key. If a company is upcycling clothing, for example, the original item could include artwork that is protected by copyright. In a traditional recycling scenario, the copyright in the artwork would be exhausted by the first-sale doctrine, and no copyright liability would attach. However, in an upcycling scenario, if content is added to the original material—new art, a branding statement, new graphics—this would likely create a “derivative work,” to which the first-sale doctrine does not apply.

Because the right to make derivative works is one of the exclusive rights reserved to the copyright owner, creating a derivative work from an upcycled article of clothing could constitute copyright infringement. Since the copyright statute provides for statutory damages and fee shifting, the copyright owner may view an infringement lawsuit against the upcycler as a viable way to continue to exploit the monetary value of the original copyright.

The analysis may be further complicated by the manner in which new content is added to the existing material. If, for example, new content is applied to a piece of clothing alongside original artwork, this likely constitutes a derivative work. On the other hand, if the front of the clothing, where the original art appears, remains untouched but new content is added to the back, the first-sale doctrine would arguably apply, since the addition in no way changed or repurposed the original artwork, and the original copyright owner’s rights would be exhausted. (Depending on the new content on the back, this could give rise to liability for trademark infringement, discussed later in this article.)

In other cases, there may be no liability for copyright infringement in adding new material to existing content. For example, if the original content on the clothing is simple text (even if stylized or in color), that is very likely not protected by copyright, as copyright does not protect individual words, short phrases or basic symbols. Even here, though, there isn’t complete certainty, as the more graphic elements and design choices that are involved, the closer the scales tip toward a protectable copyright in the work.

The same analysis would hold true for clothing that simply depicts common symbols such as flags and basic graphic designs. Again though, if the image is stylized and represents specific design choices, those choices may be enough to warrant copyright protection.

Trademarks, rather than copyrights, can protect words, short phrases and symbols if they represent the brand of the original product manufacturer. If a piece of clothing bears the trademark of a third party and an upcycler adds its own brand name or content, there is a potential trademark concern even if there is no copyright issue. Similar to the derivative work/copyright example discussed earlier, the defense of first sale under trademark law would not apply in this case where new content is added to the trademarked words or symbols.

Let’s say an upcycled T-shirt bore the Nike trademark or its Swoosh logo, and another company added its own trademark, content or slogan alongside. Nike could assert that the upcycled product created a false impression of affiliation, association, sponsorship or approval, or that consumers would mistakenly believe that the upcycled version came from Nike itself. A claim alleging trademark dilution by blurring or tarnishment may also be viable if the original brand is a well-known one like Nike.

These concerns are not merely hypothetical. Nike has, in fact, pursued a trademark-infringement claim against a performance art-collective MSCHF, which, in collaboration with musician Lil Nas X, made customized Nike “Satan Shoes.” The case eventually settled, with MSCHF agreeing to pull the shoes from ongoing sales. Similarly, Chanel sued the startup Shiver + Duke for trademark infringement over its repurposing of authentic Chanel buttons into costume jewelry. Rolex sued a small company called laCalifornienne over upcycled watches, asserting both copyright and trademark claims. Rolex won an early victory of some issues; the defendant then settled by agreeing to cease and desist.

In another case involving timepieces, Vortic Watch was sued by Hamilton and Swatch (its parent) after it took vintage Hamiltons and refurbished and repurposed them. In this case, though, the defendant prevailed regarding the confusion claims, in part because of its use of clear disclaimers.

That case demonstrates that the use of prominent disclaimers and full disclosures can help mitigate risk and may even negate the potential for confusion, at least at the point of sale. In the context of environmentalism and the public policy aspects of encouraging recycling and upcycling, this may be a risk a company is willing to take—although it might be forced to litigate to establish such precedent if challenged.

As a general rule, companies should avoid upcycling any products that bear trademarks or copyrighted third-party content without the advice of counsel. Risk from a trademark-infringement lawsuit may be mitigated by clear disclosures and disclaimers, but they won’t alleviate copyright risk.

Finally, content creators often assume that a parody or fair-use defense will insulate against copyright or trademark claims. But the fair-use defense is just that—a defense—and it is not nearly as broad as many assume. Just because new content combined with existing content may convey a humorous message, that doesn’t automatically equate to a successful defense of fair use. In the context of copyright, it remains a difficult question—one the Supreme Court is currently grappling with in the Warhol case involving images of the late musician Prince—whether newly created material based on existing copyrighted content is sufficiently transformative to constitute a viable fair-use defense against a copyright-infringement claim.

Karen Kreider Gaunt has 25 years’ experience in intellectual property, trademark, copyright and advertising counseling and enforcement. She is the immediate past chair of Dinsmore & Shohl’s Trademark & Copyright Practice Group and presently serves as the chair of Dinsmore’s IP Litigation & Enforcement Practice Group. She has represented her clients as both plaintiffs and defendants in nearly 65 federal court cases and has handled nearly 300 matters for clients at the Trademark Trial and Appeal Board. Gaunt is the Attorney of Record on nearly 2,000 trademarks on file with the USPTO and has lent her counsel to in-house trademark departments on thousands more.

Related Articles

Understanding the Benefits of Copyright Registration


by Maria Crimi Speth and Aaron Haar

If you aren't registering your copyrights with the United States Copyright Office, you're missing out on additional protections.

Why Register My Copyrights?

Famous Songs Unprotected by Copyright Could Mean Royalties for Some


by Michael B. Fein

A guide to navigating copyright claims on famous songs.

 Is the Happy Birthday Song

Sarah R. London: Standing Up to Injustice Since Day One


by Justin Smulison

The Girard Sharp partner on steering multi-million-dollar litigation, and what it took to remain in the pilot seat while overcoming her own health challenges.

Sarah R. London head

"Lawyer of the Year"


Lawyer poses for professional firm headshot

Mindi M. Richter

Copyright Law

Tampa, FL

2025

Shifting Risks in Renewable Energy


by Monica Wilson Dozier

Development of renewable energy projects is expanding at an unprecedented pace. But a burgeoning industry brings a host of legal considerations along for the ride. Here’s what counsel needs to keep in mind.

A Money Plug Connecting with an Energy Plug

The New Wild West


by Mary Frances Palisano

Artificial intelligence has only just begun upending industries of all kinds. It stands certain to play an exceedingly important role in criminal law as well.

Old Western Wanted Poster with pictures of four colorful AI robots

This Land Is . . . Someone’s Land: Recent Disputes Involving Energy Transition Projects


by Meghan Dawson McElvy

Recent growth in renewable energy and energy transition projects across the United States has sparked disputes among a variety of interested parties—and augurs plenty of contentious litigation in the years ahead.

Windmills in front of a setting sun

Recruiting, Raising and Retaining the Next Generation


by LaVon M. Johns and Patricia Brown Holmes

With savvy recruiting, great culture and a focus on work/life integration, learn how any law firm can still get the most out of its greenest personnel.

Animated figures putting massive puzzle together

Beyond the Billables


by Michele M. Jochner

In a recently conducted, comprehensive study, data reveals a plethora of hidden realities that parents working full-time in the legal industry face every day.

Woman in business attire pushing stroller takes a phone call

Woman on a Mission


by Rebecca Blackwell

Baker Botts partner and intellectual property chair Christa Brown-Sanford discusses how she juggles work, personal life, being a mentor and leadership duties.

Woman in green dress crossing her arms and posing for headshot

Generation Gaps


by Victoria Brenner

A major case upended aspects of grandparents’ disputed visitation rights regarding their grandchildren. 20 years on, where do laws around the country stand?

Child with hands over older man's eyes

Best Lawyers Celebrates Women in the Law: Ninth Edition


by Alliccia Odeyemi

Released in both print and digital form, Best Lawyers Ninth Edition of Women in the Law features stories of inspiring leadership and timely legal issues.

Lawyer in green dress stands with hands on table and cityscape in background

How Palworld Is Testing the Limits of Nintendo’s Legal Power


by Gregory Sirico

Many are calling the new game Palworld “Pokémon GO with guns,” noting the games striking similarities. Experts speculate how Nintendo could take legal action.

Animated figures with guns stand on top of creatures

The Breadwinner


by Courtney E. Ervin

Two lawyers, one big life decision: How my husband and I are working to eradicate the stigma of putting my career first.

Silhouette of women in suit stands in the middle of equal scale

Top of the Mountain


by LaVon M. Johns and Patricia Brown Holmes

Making partner, ginning up huge business, earning peer respect and industry influence are laudable goals—but it’s important to pursue them methodically and mindfully. One dynamic duo who have reached the mountaintop show how it’s done.

Red flag sitting on the top of a mountain summit

A Beautiful Mind: Motown Beginnings, Top Dealmaker


by Sara Collin

Motown scion Farah Fakir Cook has achieved her own stardom away from the klieg lights, helping clients navigate ever-changing currents in intellectual property and technology. One crucial topic looms especially large for her in the years ahead: How current law will contend with the rise of artificial intelligence.

Woman wearing pink suit standing against desk

Trending Articles

Introducing the 2026 Best Lawyers Awards in Australia, Japan, New Zealand and Singapore


by Jennifer Verta

This year’s awards reflect the strength of the Best Lawyers network and its role in elevating legal talent worldwide.

2026 Best Lawyers Awards in Australia, Japan, New Zealand and Singapore

Revealing the 2026 Best Lawyers Awards in Germany, France, Switzerland and Austria


by Jamilla Tabbara

These honors underscore the reach of the Best Lawyers network and its focus on top legal talent.

map of Germany, France, Switzerland and Austria

Effective Communication: A Conversation with Jefferson Fisher


by Jamilla Tabbara

The power of effective communication beyond the law.

 Image of Jefferson Fisher and Phillip Greer engaged in a conversation about effective communication

The 2025 Legal Outlook Survey Results Are In


by Jennifer Verta

Discover what Best Lawyers honorees see ahead for the legal industry.

Person standing at a crossroads with multiple intersecting paths and a signpost.

The Best Lawyers Network: Global Recognition with Long-term Value


by Jamilla Tabbara

Learn how Best Lawyers' peer-review process helps recognized lawyers attract more clients and referral opportunities.

Lawyers networking

Build Your Legal Practice with Effective Online Networking


by Jamilla Tabbara

How thoughtful online networking supports sustained legal practice growth.

Abstract web of connected figures symbolizing online networking among legal professionals

Blogging for Law Firms: Turning Content into Client Connections


by Jamilla Tabbara

How law firms use blogs to earn trust and win clients.

Lawyer typing blog content on laptop in office

Jefferson Fisher: The Secrets to Influential Legal Marketing


by Jennifer Verta

How lawyers can apply Jefferson Fisher’s communication and marketing strategies to build trust, attract clients and grow their practice.

Portrait of Jefferson Fisher a legal marketing expert

A Guide to Workers' Compensation Law for 2025 and Beyond


by Bryan Driscoll

A woman with a laptop screen reflected in her glasses

Is Your Law Firm’s Website Driving Clients Away?


by Jamilla Tabbara

Identify key website issues that may be affecting client engagement and retention.

Phone displaying 'This site cannot be reached' message

Medical Malpractice Reform Trends in Texas, Utah, Georgia and SC


by Bryan Driscoll

A fresh wave of medical malpractice reform is reshaping the law.

Medical Malpractice Reform Trends hed

Why Jack Dorsey and Elon Musk Want to 'Delete All IP Law'


by Bryan Driscoll

This Isn’t Just a Debate Over How to Pay Creators. It’s a Direct Challenge to Legal Infrastructure.

Elon Musk and Jack Dorsey standing together Infront of the X logo

Best Lawyers Launches CMO Advisory Board


by Jamilla Tabbara

Strategic counsel from legal marketing’s most experienced voices.

Group photo of Best Lawyers CMO Advisory Board members

As Fla. Pushes to Repeal Controversial 'Free Kill' Law, DeSantis Signals Veto


by Bryan Driscoll

The fight to transform state accountability standards may be in trouble

free kill law hed

Changes in California Employment Law for 2025


by Laurie Villanueva

What employers need to know to ensure compliance in the coming year and beyond

A pair of hands holding a checklist featuring a generic profile picture and the state of California

Key Issues to Tackle on Law Firm Landing Pages


by Jamilla Tabbara

Identify key issues on law firm landing pages to improve client engagement and conversion.

Laptop showing law firm landing page analytics