By CaroLea Casas

Lin Manuel Miranda’s musical Hamilton is a hit – it’s on Broadway, a national tour, and most likely on your neighbor’s favorite playlist after the soundtrack’s historic debut on music charts.

Even people who have never seen the production know every word to all forty-six songs.  First Lady Michelle Obama herself was quoted by the New York Times as saying “[Hamilton is the] best piece of art in any form that I have ever seen in my life.” With a cast composed predominately of people of color, Hamilton brings a fresh voice, perspective, and representation to an age-old art form. The show is no longer just a production – it is a brand that fans love; and one that its copyright holders are zealously guarding.

As such, Hamilton is also showing up in the courts – including the Federal Court for the Southern District of New York. Earlier this month the show’s production company filed a lawsuit against several defendants, including SunFrog, LLC, and GearLaunch, Inc. The complaint alleged claims including copyright infringement, trademark infringement and unfair competition, and dilution.  The allegations arise from the defendant’s websites, which allow users to design and market custom T-shirts.  Specifically, users created and sold shirts bearing Hamilton’s logo – a star, the top point of which is formed by Lin Manuel Miranda’s silhouette in character as Alexander Hamilton. The production company states it did not give permission for the logo’s use, and seeks preliminary and permanent injunctions, as well as disgorgement of any profits made off of infringing merchandise.

While SunFrog appears to have remained silent on the accusations, a representative from GearLaunch gave a statement to the Hollywood Reporter:  “At GearLaunch, our priority is providing services that best support sellers in building successful e-commerce businesses, and as part of that we work hard to ensure our sellers understand that they must respect the intellectual property rights of others.” The statement directs inquiries for additional information to the site’s policies against infringement. Despite the company’s assurances, it is not the first time that GearLaunch has faced copyright infringement allegations. Just last month, Harley-Davidson filed a multi-million-dollar lawsuit against the company for copyright infringement claims.  Harley-Davidson alleges GearLaunch and other defendants sold over 15,000 items bearing one of three company logos without permission.

So what should companies do to protect themselves from the designers who use their services? GearLaunch itself recently published a blog article with a list of “4 Copyright and Trademark Guidelines for Your T-Shirt Business.”  In it, the company’s director of marketing, Mandy Hong, suggested that designers create original designs and understand the nuances of copyright and trademark law. Yet the onslaught of litigation against companies like GearLaunch suggests that these businesses fail to take their own advice. Though the blog post encourages T-shirt business owners to understand and adhere to the laws regarding copyright, trademark, and fair use, GearLaunch is now accused of ignoring actual and constructive notice of infringing designs and profiting from resultant sales.

However, GearLaunch claims that it does partake in a vetting process. According to Hamilton’s complaint, GearLaunch has a policy of vetting designers who use their services, called “collaborators.” GearLaunch claims the vetting process occurs before sales and manufacturing services are available to designers. Hamilton counters, nonetheless, that “[i]n that vetting, GearLaunch does not require its collaborators to provide confirming information that a given design . . . is being used with the permission of the proprietors of the relevant copyright and/or trademark. Instead, GearLaunch purports to rely simply upon a warranty by the designers that the designs are not infringing, and . . . to have no involvement in the design selection process.”

A simple warranty seems insufficient under the law. Per the Digital Millennium Copyright Act, (DMCA) an Internet service provider may not liable for user content if it lacks knowledge or reason to know about infringing content, or quickly removes such content once made aware. The DMCA also calls for providers to not profit from infringement. Hamilton argues that the show’s notoriety and notices of infringement sent directly to the company created knowledge or reason to know. The fact that designs remained on the site after notice was give, and that defendants profited from sales, do not bode well for their case.

Other online design-your-own merchandise shops such as Zazzle, Inc., potentially have more aggressive vetting processes. Zazzle’s website includes a help center page with multiple articles touching on copyright protection, policy, and the limitations of creating with the site. The company openly reserves the right to remove designs that violate the site’s terms of use, including copyright infringement, “with or without notice.” A glance through community message boards suggests that the company follows through with this policy – multiple threads contain questions from designers whose creations were removed for potential copyright infringement. Zazzle’s system appears to be better at preventing infringement, in line with the DMCA. Even so, Zazzle has experienced its share of intellectual property complaints over the last decade, from the creators of Twilight to the man who trademarked the pi symbol.

With regard to Hamilton Uptown, LLC v. SunFrog, LLC et.al., it is clear why so many people want to be a part of Hamilton’s fame. There is no doubt that fans, artists, and tech industry professionals alike have an interest in watching the case unfold. And so do customizable online gift shops like Zazzle, Cafe Press, Etsy, and the very defendants in this case. Companies must beware of the dangers of their own business, especially trusting that their services won’t be used for infringement. In the meantime, it appears GearLaunch and SunFrog may be learning that lesson the hard way.

image Source: Wikipedia