Upcycling, saving the planet 1 trademark infringement at a time?

Upcycling is a popular trend that can offer people the chance to not only bag an item from their usually expensive favourite brand, but it also benefits the environment. Andreas Trondsen takes a look at upcycling and discusses if the upcycled product is made using well-known brands and the association with said famous brand contributes greatly to the increased value of the upcycled product? Is this then trademark infringement?

Have you heard about upcycling?

It is to recycle something in a way that gives the product a higher value than the original product. So basically, reusing an existing product to make a new one that is more valuable, or at least conceived to be more valuable.

In a world where the demand for sustainability and environmentally friendly solutions is growing, upcycling seems to be a perfect fit. So why are some trademark owners looking at upcycling with some concern?

Firstly, it is worth noting that if you legally purchase a product, you are free to use and to resell it as you wish, and the trademark owner has no right to stop you from doing this.

However, the trademark owner may oppose further commercialization of the goods if they have a legitimate reason to do so, which may be the case if the product has been changed or altered into something that is materially different. In upcycling, the products are sometimes significantly changed or altered in some way, and this might lead to a conflict with the trademark owners.

But are there any reasons why trademark owners should oppose the upcycling of their products? It is good for the environment; it is sustainable and gives new life to old and in some cases discarded products. Seems like a win-win.

However, many upcycled products use the original trademark, and this may in fact lead consumers to think that the company behind the original product are also the ones behind the upcycled product. Losing control of the trademarks and how they are used in the market could mean losing control over the reputation and value of the trademark, which could in turn be damaging for the company.

One observation in the upcycling industry is that many upcycled products are those originating from large, well-known brands, or is this just a coincidence?

Some of the recent legal cases regarding upcycling involve big brands such as Nike, Chanel, and Luis Vuitton:

• Chanel, Inc. vs. Shiver and Duke, LLC (2020) regarded upcycled Chanel buttons carrying the famous Chanel CC logo. Chanel sued for trademark infringement, unfair competition, and trademark dilution (case settled).
• Louis Vuitton Malletier S.A.S. vs. Sandra Ling Designs,Inc. (2021): where repurposed elements of Louis Vuitton products that were turned into accessories and jewellery led to several claims including counterfeiting, trademark infringement, trademark dilution and unfair competition (case settled).
• There have been several cases of upcycled Nike shoes, for example: Nike, Inc. vs. Customs By Ilene, Inc. (2021) where Nike sued for counterfeiting, trademark infringement, unfair competition, and trademark dilution (Case ongoing).
• And more famously, in the NIKE vs. MSCHF, Nike sued for trademark infringement after the release of a modified Nike Air Max 97 shoe called “Satan shoes” that were decorated with a bronze pentagram, an inverted cross and a drop of human blood in the sole (case settled).

It may of course be the case that only the bigger brands have the resources and budget to monitor the market and take action, while smaller brands can’t or do not see it as a problem. This is a view reinforcing the stereotype that big companies use their power to crush the “little guys”; but consider this – what if it is the brand name that actually adds and increases the value to upcycled products?

Let’s look at the clothing industry as an example. There is surely quite the selection of old or discarded clothes that would be prime candidates for an upcycle. If all the added value simply came from stitching a pair of broken jeans together, then it would not matter what trademarks were on the jeans in the first place.

If you instead took a pair of jeans from a famous brand, let’s say LEVI’S, you could argue that the trademark on the upcycled jeans, and the association to the famous brand, contribute greatly to the increased value of the upcycled product.

It cannot be a mere coincidence that a lot of upcycled products are made using products with well-known brands and famous trademarks. In the same way that a trademark can add value to a product, the same trademark can add value to the upcycled product. The value, at least in part will transfer to the upcycled product.

Most of us would agree that sustainability is important, but we should also not ignore the less environmentally friendly parties sailing under a “false flag” of sustainability while taking unfair advantage and infringing on a brand’s trademark rights.

For trademark owners, upcycling raises a difficult issue. Trying to enforce trademark rights and stop infringements may easily be portrayed as being greedy and putting profit above the environment. However, not doing anything may harm their trademark, company, and its reputation.

If sustainability and environmental arguments give a carte blanche to use trademarks and IP freely without fear of any consequences, it is not unlikely that fake upcycled counterfeit goods would also be a growing problem.

For example, let’s take a pair of old discarded jeans from an unknown brand, upcycling them and then adding a fake trademark. This could not only attract the attention of an unwitting consumer but also trick the consumer into paying more for the product.

The boundaries between what is considered fair use and legal upcycling and what constitutes a trademark infringement is something that should concern upcyclers, trademark owners and IP-professionals alike.

On one end of the spectrum, we have resale without making any changes or alterations. On the other end, we have upcycled products using a trademark in a way that could lead to confusion as to the source of the product. Everything in between is currently a bit of a grey area and case specific.

If you are upcycling or thinking about getting into this business, then assessing the risk and doing it in a way that does not infringe on intellectual property is advisable.

As already mentioned, reselling a product without making alterations poses little risk. Entering a collaboration with the company behind the original products is also a good way of upcycling and avoiding litigation.

Upcycling multiple brands and using disclosures and disclaimers might reduce some risk; however, this is moving into a riskier territory.

Upcycling single brands, items that include trademarks, copyrightable artwork/ patterns or upcycling products from famous brands poses the greatest risk for the upcycler.

The diagram to the left illustrates some of the risk factors, however it is worth noting that these are general considerations and that every case is different:

Upcycling is a great concept, but some upcycling may be less environmentally motivated. Protecting a trademark against unfair use and infringement is not the same as advocating for less sustainable solutions.

For the serious upcyclers knowing what constitutes fair use and legal upcycling will mean more time spent saving the environment and less time spent battling trademark owners.

There is a demand for sustainable and environmentally friendly solutions and many trademark owners are already engaging in upcycling, either by themselves or in collaboration with others.

Upcycling could be a step towards saving the environment but does not need to involve trademark infringements.

Author: Andreas Trondsen, Associate Attorney, BRANDIT