This is not (duh) legal advice, and in fact any discussion of the law is kept to a minimum. And there are no dollar figures (well, not very many). What this post really contains is… common sense. At least, I think it’s common sense — you may have a different sense than I do.

Chat
Sometimes new knitting authors — or rather, those new to being published by others — encounter offers of publication, and find themselves internally asking, “is this a good deal?” or better yet, asking others with more experience, “is this a good deal?”.

Asking other people with more experience in the field is a good idea, because they are probably aware of other issues that the new designer hasn’t thought of at all, and they may raise those issues for further consideration. But do not expect to find the “yes” or “no” answer this way, for a couple of reasons:

First, other people may be sensitive about disclosing their business information, either directly to another person or in a public forum. Would you disclose your financial information to a virtual stranger who happens to share a love of knitting? Would you tell this stranger about your negotiation efforts with a particular publisher, and their outcome? … well, okay, seeing as there are a lot of knitters who blog about personal and employment issues that I would filter myself, maybe you would. But by and large, one doesn’t disclose many particular details about their business unless they have reason to be comfortable doing so — because they know the person to whom they are disclosing it, they know the information won’t be used in competition against them, they know this person won’t blurt out the information to someone else.

Secondly, whether something is a “good deal” is very subjective; it really depends on an author’s priorities, his or her needs, and his or her intentions for the work created. Whether something is a “good deal” also depends on context: “good deal” could mean “am I being taken advantage of?”, or “would I be better off publishing via a different route?”, or “is this publishing contract actually giving me what they promised/what I expect?”… and even if the answer is not the one that the author wanted to hear, there is still the question of, “should I just agree to suck it up anyway, in the hopes that the intangible benefits will outweigh the negatives?”

… And there’s no clear way to answer these questions. People will determine whether a deal is “good” with reference to their own experience. For example, knowing how much might be made from self-publishing and distributing a pattern, one knitting author who derives most of her knitting-related income from publishing patterns only may declare that all publishing contracts from book and magazine publishers have got to be bad deals because they all curtail the author’s rights after first publication, or the value of those rights, in some manner; somebody else, whose income is mainly derived from travelling and teaching across the country and who needs to ensure that his name gets maximum exposure in order to create demand for his services, might think that magazine contracts are not so bad after all because the intangible losses are balanced by intangible gains. (These are just examples pulled out of thin air — I’m not trying to obliquely reference any personalities in particular.)

Answering some of these questions involves actually reading and, more importantly, understanding the contract at issue. Answering some of these questions involves an exploration of publishing alternatives. Answering all of these questions also requires the author to have his or her priorities lined up: the importance of money, the importance of retaining the right to deal with the pattern as he or she sees fit in the future, the importance of intangible benefits like exposure in a print publication. Nobody can get an answer to “is this a good deal?” without already knowing what their objectives are.

In short, there’s nothing wrong with asking other people who you know have more experience in the field. But bear in mind that these other people can’t do all your thinking for you, and their impressions of what you’ve been offered may be skewed by the priorities they apply to their own business, not by the priorities that you have determined (or haven’t) for yours. The answers you’ll get will be helpful, but they’ll often be heavy on generalities, like this post, and light on the gory details (like, “I tried negotiating a such-and-such a change to my contract with that company and they bent over backwards/told me to take a hike” or “I got $350 for my layette design”). In addition, it may even be that the people who are giving you useful advice don’t even completely understand the contracts they’ve signed themselves.

Ask away, but the final decision is yours.

Good intentions
Book and magazine publishers are in the business for their own gain. Yes, a publishing business may have started for the love of the craft, but love does not keep a business afloat, nor does it pay other people’s salaries. This is not to say that publishers are bad; they’re not all trying to get rich off their contributors’ blood, sweat, and tears, but it doesn’t mean that they’re simply trying to give away their own money or to break even, either. Publishers can provide the author with an opportunity to be published on a scale that might not be possible with self-publishing, or that might only be possible with self-publishing with a lot of time and labour that the author might not be able to dedicate to the venture.

The point is, just because a publisher loves knitting as much as you, and is beloved by all readers, doesn’t mean that the deals the publisher offers will ultimately work in your best interest. And that’s okay; you have the power to decide whether to take that deal, decline, or try to negotiate better terms.

Compensation from knitting publications has not matched inflation
Just in case you’re wondering. Have you heard the anecdote that magazine compensation for a knitting pattern hasn’t increased over ten or more years? Ask around.

Here’s a link to U.S. consumer price index information (click on the “Inflation Calculator”): comparing 2006 to 1996, there was a 28% increase. If compensation matched inflation, then somebody who was paid $500 for first publication rights for a pattern in 1996 should receive about $640 now. But anecdotally speaking, at least (remember, people are not going to divulge their financial information to all and sundry), they’re not getting that.

Technically speaking, you could say that over the past ten years, the average compensation across the industry from magazines has decreased, if you include online publications. However, you can’t make a straight comparison this way, because…

Dollar figures aren’t the whole story
Some publishers may compensate contributors on comparable pay scales. However, a full comparison will also take other intangibles into account.

Think about the labour involved. If an article pays something along the same scale as a pattern, then an author may realize more, on an hourly wage basis, for writing an article than writing a pattern. This depends on the subject matter; a technically complex or exhaustively-researched article may take a lot longer to complete than a one-hour hat in a couple of sizes. But if the author of a pattern is expected to supply draft instructions and numbers for a range of sizes, a sample garment, and perhaps to change the pattern to suit a yarn selected by the editor, the number of hours of work can skyrocket. It has been pointed out by others that the development of a pattern, from initial concept, yarn research and swatching, to experimental and test knitting (and ripping), pattern writing and revision, to sample knitting and final draft reduces the standard magazine compensation to something less than minimum wage.

In addition to the labour of generating a pattern in the first place, today the labour simply does not stop there. Ten or twenty years ago, if a reader had a problem with a pattern, most questions would have been fielded by the publisher as the main point of contact. Now, it’s easier for the reader to seek out and contact the author directly, because many authors now have an Internet presence. (And the authors especially need that Internet presence to promote their businesses if the compensation from traditional publishing outlets hasn’t improved.)

Think about the rights involved. It is not enough, really, to be told that the author will “retain copyright”. One can draft a contract that leaves copyright with the author while effectively eviscerating whatever rights the author’s copyright may carry with it. It is possible to draft a contract that purports to allow an author to republish a pattern or article two years (or less) after the first publication in a magazine, but then to throw in a proviso that prevents the author from competing with the publisher in any way… and also gives the publisher the right to republish the pattern or article itself, if it chooses. Are these bad deals? Maybe, maybe not; it really depends on what plans the author might have had for the pattern after its original publication went out of print. Was she planning to distribute for free, package it up in a kit for sale, or sell copies of the pattern itself? Given the level of compensation from a publisher, the author may be counting on the opportunity to exploit the pattern to generate further income, to make up for that less-than-minimum-wage period. If the contract she signs removes that opportunity… well, that’s a problem.

And that bit above about compensation not increasing over the past ten years? There is something that has changed in recent years. Since the advent of digital distribution (whether over the Internet or on physical media), there have been lawsuits over the scope of freelancer’s publishing contracts, and whether publishers had the right to distribute freelancers’ works digitally. Publishers who are now aware that the contracts they put out five or so years ago might not have given them rights to digital distribution, are taking more care to make sure that they retain some of these rights themselves. It’s possible, then, that for the same compensation offered ten years ago, the author is actually retaining fewer rights than previously.

This doesn’t mean that a deal that allows you to retain copyright and be free to exercise your copyright is automatically the best deal. Consider online publications that offer up their archives to readers for free, in perpetuity. You may be paid less, but you may retain copyright without too many limitations on its exploitation; however, if the pattern or article is available for the foreseeable future for free, it takes some creativity to realize more revenue when you’re competing against the free offering. (It’s certainly possible: you can expand a pattern with extra sizes, or you can diversify and sell kits or printed versions to yarn shops, for example.)

Cranking numbers at this point might suggest that self-publishing, or if not self-publishing, entering into a different type of publishing deal that provides a decent royalty (and not just a token amount) is the ticket. Maybe so. On the other hand, self-publishing takes a lot more work on an ongoing basis, because the self-publisher usually interacts with her customers directly and handles her own promotion, and will continue to do so for as long as she has a product to sell. Licensing a pattern for a royalty payment might result in less revenue per sale for the author, but may also require less work; but whether this balances out to be better or worse than self-publishing in the long run depends on the level of sales and the effort that the publisher itself puts into selling the pattern, too.

And in that vein, you need to think about the intangible benefits of exposure, too. For some, getting published in a national or international magazine is a necessary step to getting one’s name “out there”, and whatever loss of rights and/or money is worth it. For others, it’s not, and they haven’t regretted foregoing that exposure. The positive effects of being published in a magazine or a book are not easily quantified. If you self-publish as well, some readers may indeed find you because you were published elsewhere, and maybe those readers will be converted to customers. But there’s no formula that guarantees this. Some knitters have an aversion to paying for single patterns, and may only ever want to purchase magazines on the theory that they may want to knit multiple patterns from a single issue. Some knitters just want free patterns. Still, some knitters do turn into customers.

If you are thinking about entering into a publishing agreement, driven mainly by the promise of exposure or promotion, still consider the risk that it won’t happen. In an offer to be published in somebody else’s compilation of patterns, you may be promised that your website’s URL will be published in a book… but what if the publisher makes a last-minute decision to remove it? If you were counting on that promise, do you have any recourse?

As you can see, for all publishing routes, you need to balance what the publisher can offer (or what you can get the publisher to offer) against what you’re losing by publishing with that publisher. You may calculate that if you self-published a pattern — while this does take more ongoing effort on your part — the modest sales over a year would result in greater revenue than the top rate you could get out of a magazine, and that ongoing sales beyond that year might make up for the magazine publisher’s re-use fees or royalties. On the other hand, sometimes there are intangible benefits that you can’t easily quantify, like the cachet of being published in one of the “big” magazines, and the opportunity to reach out to an audience that might not have heard of you online. But if your target market is web-enabled and not afraid of online transactions, you might not care about that cachet or opportunity quite so much (but concluding that your target market is only web-enabled is a big assumption to make).

You v. Them
Sadly, despite the great and abiding love that all parties concerned may have for two sticks and string, when a knitting publishing contract is negotiated there is usually a power imbalance, for one or more reasons:

First, the author is (usually) a single individual; a sole proprietor or principal of a business. He or she is contemplating entering into a one-off contract to supply one work to a publisher, for what looks like a relatively small sum — “small”, when you compare the dollar value to cars and houses, for example. The author typically does not have a background in publishing or copyright law, but the dollar value involved, when compared to a literary agent’s cut or a lawyer’s fees, makes seeking business or legal advice seem like an extravagance; it might make financial sense to get a lawyer involved when you propose to spend hundreds of thousands of dollars… but a publishing contract for five hundred dollars? (In some areas, you may be able to get cheaper legal advice from associations that provide legal assistance specifically to artists). The publisher, on the other hand, probably paid a lawyer to draft its publishing contracts, and got advice about what kinds of modifications they can safely make without compromising the rights they want to retain.

So far as contract-specific knowledge is concerned, then, the typical author enters the contract negotiation with a disadvantage. And sadly, it is not always wise for the author to believe whatever the publisher’s representative or editor says — they’re not legal experts, either, and what they say about the nature of the contract may be inaccurate (whether deliberately or accidentally so). If a publisher’s rep says one thing, but your reading of the contract says another thing, you should consider getting legal advice.

Secondly, a new author doesn’t have complete information about what is “standard” in the industry for these types of contracts. That’s where calling on other authors with more experience comes in, and that’s addressed above.

Thirdly, there’s the timing issue. Given the number of steps required to generate a magazine, submissions are due at the magazine a year or so in advance of the publication date. Accepted submissions must be finalized well in advance of publication because patterns and articles need to be edited, sample garments need to be photographed, and so on. That’s understandable. But the actual contract governing the publication of the article or pattern is usually not received by the author until she receives the “guess what? we’ve accepted your submission for publication!” notification — or later. (Try asking a magazine publisher for a copy of their standard contract before you make a submission to them. See if you get it, or just a rep’s description of what they say it says.) By this point, the timeline for getting the submission finalized, samples knit, and everything delivered to the publisher has been set. The author is elated, perhaps panicky about meeting deadlines, perhaps excited about the forthcoming payment. The emotional reaction may overwhelm the inclination to evaluate the terms of the contract before signing.

And finally, a newer author might be afraid to negotiate or to walk away from a not-so-good deal. The author may want or need the payment. She’s excited. She knows that the publisher gets lots of submissions. Despite the tight timeline, the publisher probably has time to drop a project and replace it with something else if one deal falls through. So, the author might be afraid that if she makes difficulties about the contractual terms, she might blow the whole deal, or might never get another publishing contract. That may not be true, but a new author doesn’t know that because she may never have negotiated a contract before. If a sample garment needs to be knit, there may not be enough time to negotiate terms without starting the sample knitting… and if the knitting is done and the negotiations have stalled, what then?

What do you do?
There are a lot of related issues not discussed here: the merits of print vs. digital distribution, copyright infringement, actually getting paid (and when), what to do when a potential publisher asks you for a contract, for example. Although most of this post dealt with publication through a magazine (or a book) publisher vs. a bit of self-publishing, those aren’t the only options. A pattern author can enter into a deal with a local shop that wants to print and distribute her patterns; she can sell or licence a design to a yarn manufacturer; she can licence the pattern to a distributor who publishes the patterns digitally and pays a royalty. Whether any one of these options (or a combination of them), will work best depends on the individual author.

You can choose to sign a contract that you actually think is a bad deal — that’s your business, and your choice. Ideally, though, won’t do it repeatedly, and you’ll first think about whether the contract you sign today will curtail your plans for the future. Even though you can’t predict the future, you can figure out your priorities now and treat yourself fairly by agreeing only to those deals that help advance your priorities — not somebody else’s.

Perhaps they’ve arrived at some agreement?

Personally, I still don’t like most twisted singles, much less aran-bulky weight ones containing silk. They still look worn out too quickly for my liking.

In text (the notice is on the KnitPicks website, too):

Special Note: In August, our Sierra yarn line will be renamed to Cadena – the exact same fiber content, construction and weight, just a brand new name, and we’ll be adding new colors!

This doesn’t mean that all resale price maintenance is legal. What the court did (in a 5-4 decision) was abolish the rule that resale price maintenance is per se illegal, because sometimes fixing minimum prices could actually promote competition (this is not the same as conspiring among competitors to fix a minimum price; this is just about a distributor telling its retailers to sell at a fixed price). Instead, each case of resale price maintenance must be evaluated on a case-by-case basis to determine its anticompetitive effects. In the case at bar, the fixed minimum price gave small businesses the opportunity to compete on customer service against discount chains (whom, I assume, did not sell the exact same high-quality product).

You can imagine that distributors will probably be quite pleased with this. At first blush, I can see that the argument makes sense with goods that are carried by large and small retailers alike and that are, as far as the consumer is concerned, non-substitutable. Consider what happened to small, independent book stores. You don’t hear readers saying “I’d like to read the Discworld series, but I don’t want to spend all that money on the books. Can anyone recommend a cheaper substitute that has some sort of special, unseen school for wizards?”* Someone’s going to buy the book, or they’re not; if multiple retailers want to compete, they have to carry the exact same book, not some substitute book about wizards. Considering the number of small shops that have folded, perhaps customers do not attribute a value to customer service that’s equivalent to the price difference between a local bookshop and the local big box store that can afford to discount the retail price. A fixed minimum price might have helped those shops.

One the other hand, it makes less sense when the product is substitutable with goods of similar quality. To bring this back into our context, knitters look for substitute yarns all the time, so even yarns from different suppliers compete on price and quality. Sure, some yarns are unique, but there’s often something just as good, depending on the knitter’s standards. A yarn shop doesn’t need to compete with exactly the same products; it can choose to carry Cascade 220 or Ella Rae Classic, and make its customers understand that the yarns are perfectly substitutable.** If a yarn is competing against other yarns sold by other retailers, then insisting on a minimum retail price arguably harms competition. If a yarn was only competing against itself, because it was the only pure silk yarn spun with pure gold beads shaped like Elvis that was rated for use in -40°C weather,*** then the competition would be between shops selling the same item, and a minimum price may make sense.****

Interestingly, I’m not certain where patterns fit into this. Lots of people will substitute one pattern for another, because they just want a sock with a certain type of heel, or a raglan with some kind of cable decoration, but they don’t want to pay for a pattern, or they have a low ceiling on the price they’re willing to pay. Some patterns, though, are less substitutable than others.

Off to digest.

* Pretend we don’t have libraries.
** Yes, I know some people might threaten a lawsuit over claims that certain yarns are substitutable with certain other yarns. This is the gateway to the fascinating intersection of trademark and antitrust law; trademarks and other intellectual property rights are a form of permissible legal monopoly, contrary to the basic premise that monopolies are bad; businesses are within their rights to legitimately exercise their IP rights to compete against others. Identifying when wielding IP rights becomes an anticompetitive abuse of those rights is a fun question.
*** Don’t get any ideas.
**** I am only making a crazy hypothesis; I am not saying that producing pure silk yarn spun with pure gold beads shaped like Elvis that was rated for use in -40°C weather will keep you on the right side of any country’s antitrust laws.

Artyarns is seeking a declaratory judgment against Tilli Tomas (or rather, the people behind it, since Tilli Tomas is a business name) because of alleged threats that Tilli Tomas made against Artyarns’s business.

The source of the dispute? Yarns with bling. You know, the ones that command high prices.

The lawsuit, filed last month, alleges that Tilli Tomas (purveyor of various beaded yarns, such as Rock Star) started it by sending a letter (via its lawyer) to Artyarns, threatening to commence suit against Artyarns unless Artyarns stopped selling its own beaded silk yarn. (Memo to Artyarns: ditch the frames. Thanks.) The letter claimed that Artyarns had wrongfully duplicated Tilli Tomas beaded silk yarn designs in 2006 and/or 2007, and that Artyarns had committed acts of unfair competition by contacting Tilli Tomas’s supplier of beaded silk yarn and obtaining samples of that yarn in 2005. The letter also apparently claimed that the Artyarns beaded silk yarns were inferior to the Tilli Tomas yarns. These claims, naturally, are denied by Artyarns. Artyarns wants a declaration that Tilli Tomas has no protectable rights in the configuration, construction, or appearance of beaded silk yarns, and that Artyarns has not engaged in unfair competition.

An aside: lawsuits of this nature (seeking relief in the form of a declaration that the plaintiff isn’t doing anything wrong, contrary to allegations made by the defendant outside of a lawsuit) aren’t unheard of; and in countries where declaratory judgment actions are a known risk, like the United States, the wording of a letter to a competitor setting out one’s rights is very important: flatly threatening a lawsuit for infringement of rights may be sufficient basis for the competitor to sue you, first, claiming the opposite. Strategically, this puts the would-be plaintiff on the defensive, and gives the competitor more control over the course of the action. Sometimes it’s difficult to avoid this ultimatum in a cease-and-desist letter; you’d either have to bank on the competitor not starting that declaratory judgment action, or start a lawsuit yourself, but delay serving the complaint and try to negotiate a settlement quickly.

The “beaded silk yarn designs” reference, I think, was meant to refer to the design of the yarn itself rather than pattern designs. In a nutshell, Tilli Tomas appears to think its luxury niche product was being copied, and didn’t like it.

Artyarns’s complaint explains that beaded yarns and fabrics have been known for decades, and notes the existence of yarns from companies such as Anny Blatt and Crystal Palace Yarns. While it doesn’t directly address the allegation that Artyarns had somehow unfairly contacted Tilli Tomas’s supplier (one would think such contact would only be unfair if Artyarns secured the supplier’s identity in circumstances involving confidentiality or non-compete obligations), the complaint does explain that Artyarns had started working on a beaded yarn product by contacting potential suppliers as early as July 2004. I don’t know when Tilli Tomas’s products first launched, but the domain name was registered in December 2004, and the earliest Internet mention of Tilli Tomas at TNNA that I could find was only January 2006, although they were certainly out before then: sometime in 2005, certainly.

Artyarns is not seeking damages in this lawsuit; what they want is a declaration that they didn’t do anything wrong. The allegations of unfair competition and inferior quality were made in a letter from legal counsel, so they were not actually made publicly by Tilli Tomas (as far as I know… I was tipped off to search for a lawsuit because of a passing comment from a retailer who observed that Tilli Tomas was upset about the Artyarns yarn, and had taken it to their attorneys). Naturally, starting this lawsuit causes these allegations to be made public via Artyarns’s complaint, but that’s unavoidable (especially when I get hold of it); absent further information, this doesn’t seem to be a case for unfair competition or some kind of misrepresentation on Tilli Tomas’s part.

I personally wouldn’t expect this lawsuit to go all the way to trial. In Artyarns’s place, I’d be hoping to settle with a written agreement from Tilli Tomas that my business was engaged in legitimate competition, and that Tilli Tomas wouldn’t ever attempt to seek any legal remedy against me involving beaded yarns, or any yarn’s appearance, for that matter. After all, with far more dye artisans and distributors of yarns than there are producers, duplication of yarn types is inevitable: consider Artyarns’s Regal Silk, and the subsequent release of very similar, but not identical, Debbie Bliss Pure Silk.

If plying yarns with beads had been a new concept, never seen before, then beaded yarn itself might have been suitable subject matter for a patent (some new, inventive way of combining the beads with the yarn might be patentable, but I don’t think we’ve seen that here). The yarn’s beaded ornamentation might even be suitable subject matter for a design patent, but again, that ornamentation must have been new. In either case, though, it seems that it would be the actual manufacturer of the yarn — not the dye artist — who would have been the party entitled to seek that protection (although that right could be assigned to someone else).

It’s also conceivable that a range of yarns with a very particular ornamental appearance, in the colour or arrangement of the beads, might become sufficiently distinctive of a particular distributor that it could be the subject of trade dress protection (think of it as having trademark rights in the yarn’s appearance) — although as the Artyarn complaint indicates, the letter it received did not particularize what trade dress rights Tilli Tomas thinks it might have, and besides, the Artyarns yarn has different construction and different-sized beads.

A copy of the complaint, filed May 15, 2007, is available here.

Those of you — whoever you might be, and I doubt you exist — who were waiting on the edge of your seat waiting for the next move in the game of chess that is litigation over SIERRA as a yarn name, I’m happy to state that your days of balancing precariously on your beanbag are over.

Cascade voluntarily dismissed its action, with prejudice, against Crafts Americana on January 26. Yes, that’s all she wrote. There was no need for an explanation; Crafts Americana did not have to file an answer to the complaint. In fact, it’s looking like Crafts Americana may not have been served with the complaint to begin with (as far as the court knows). It was over that fast!

Now we will never know what transpired, or what really motivated the filing of this lawsuit to begin with. And now, I will not have the opportunity to point out that — understanding, of course, that the Internet is not determinative of anything — it was not until 2001 or 2002 that Cascade added the Sierra yarn to its website (with a “new”) icon, according to the WayBack Machine (Nov 30, 2001 vs Jan 18, 2002). If this addition represented a completely new addition to the Cascade line, as opposed to merely an addition to the website, then this might contradict the allegation in the complaint that the mark had been in use on yarn since at least as early as 1997. But, like I say, no opportunity to point this out.

2007 may be the year of resolution and settlement. There were, in fact, two other lawsuits I had wanted to post about last year that were still live, and now they’re either resolved or very nearly. One was between two Oregon yarn shops with similar names. (I’ll give you two guesses as to what words were in these names.) That one has been resolved with a consent judgment — someone’s giving up their previously asserted rights. The other involved KFI(!) and Coats — a brief mention here. That one should have settled by now, but there was a bit of a tiff about returning confidential documents as part of the settlement. Guess who’s being blamed for that hiccup.

But there has been some late-breaking news… or at least, cross-postings.

If your knitting mailing list or forum received a request to take a survey at surveymonkey.com, and you are not taking the survey (or you already have), here is some context, after the jump (so if you haven’t taken the survey but intend to, you can try to avoid tainting your answers to whatever extent possible).

Here’s the context. In a nutshell, Purl, the store in Soho, has filed a number of trademark applications (and has some registrations) for PURL and variants; Purl Diva, the shop in Maine, filed a trademark application that was opposed by Purl. They are, in fact, further advanced in the process than the SnB affair.

The opponent put in evidence of the use of the mark PURL. The applicant put in evidence of the generic meaning of purl, and evidence from “devoted knitters” that they didn’t find two shops using the word “purl” confusing. I will not comment further on this evidence, but you’ll note from the survey you might have just completed that the opposer is focusing on the significance of PURL as a proper noun.

* Yes, I know how to spell Perl.

So, I’d like you to know that I auditioned a number of titles for this post:

The Treasures of the Sierra Trademark
The Trademark of the Sierra Madre
You Sierra, I Sue Ya
Cascade gets KnitPicky
Cascade has a knit to pick with KnitPicks
same as above, but “Crafts Americana” instead of “KnitPicks”
Sierra you later, says Cascade to KnitPicks
A Cascade of Litigation falls on KnitPicks

Have you figured out what this post is about, yet?

Here’s a hint: Cascade Yarns, whom you may know as KFI’s bestest buddy, and who would never, ever dream of starting off an industry-wide controversy alleging that its fellow distributors’ merino/acrylic/cashmere yarns lacked the cashmere content they claimed, right before — oops! introducing its own competing version with exactly the same content, complete with a test report confirming the advertised quantity of cashere, sued Crafts Americana in December for false designation of origin, unfair competition, and trademark dilution because its KnitPicks division has been using SIERRA as a trademark for yarn. Cascade, according to their complaint [PDF], has been selling its SIERRA yarn since 1997. Cascade’s yarn is a pima cotton/wool mix. KnitPicks’s version is wool and superfine alpaca. (Neither company has filed a U.S. trademark application for SIERRA, by the way.)

I’ve been wondering whether yarn companies actually hash these things out. Since only in extreme cases do lawsuits actually get started (and only in the extreme of extreme cases doee the lawsuit not settle and go to trial), I guess that yes, they do squabble about this sort of thing, particularly now that there are so many competitors.

It’s early days, yet. Crafts Americana has not yet filed a defence.

This complaint might have merit, but in view of last year’s (continuing) events, one can’t help but think of instances where companies have tried to protect their market share by negative campaigns and lawsuits against competitors. Because, you know, there are others.

Boing Boing outed the licensed fabric issue yesterday. Read the whole thing before you torch anybody (including Reprodepot’s response and the comments to Amy’s post, which includes comments from the designer in question). If this seems familiar, you’re probably thinking of the Amy Butler thing.

The story seems to be that a textile designer, whose fabric is sold online, once had problems with individuals buying her fabric, making items that may or may not have been at the acme of quality (doesn’t really matter), and invoking the textile designer’s name in describing their products. Of course, we don’t know how that was done, because there are many right ways and wrong ways to do that. There’s a difference between saying “this is a Designer X bag” (when Designer X merely designed the fabric, and had nothing to do with the manufacture of the bag) and “this is a bag I made from Designer X’s fabric”. (When this information becomes compressed in an eBay item title, it generally runs the risk of becoming misleading.) Let’s assume it was done in a wrong way that did adversely affect the designer’s business. In addition, the designer licensed a particular fabric design to another company. Possibly she agreed that she would not allow fabric to be printed and distributed with this design elsewhere. Overstock of the fabric was sold through online retailers, who posted restrictions on the purchase pages for that fabric; not certain who was responsible for selling the overstock to the retailers. Edit: I wrote this before I figured out that the licensee company… was the designer’s, as well, isn’t it? So if the licensee was a separate legal entity from the designer, then maybe there was indeed a licence, but this does make it seem that ultimately, it was the designer who caused the fabric to be sold to the retailers. But didn’t want purchasers to compete against her company with that fabric.

One online retailer (Reprodepot) had a pretty brief statement advising customers prohibiting commercial use of the fabric that seemed unfairly broad (and was the one attacked by Boing Boing). The other retailer had a more expansive policy statement that was not so daunting. You can see both in Amy’s post.

Thanks, I think, to the broad prohibitive statement on Reprodepot’s website — which, by the way, was not written by the textile designer — Boing Boing cast this as an abuse of copyright (without actually using the word “abuse”). But that’s not how it started out: the problem the designer had, at the outset, was apparently a trademark-related problem with vendors on eBay. And then possibly she had some kind of contractual restriction with a licensee, which may have been a contract relating in part to copyright, although any contractual term regarding the disposal of overstock fabric wouldn’t actually be a copyright issue (Edit: but see what I added, above). But because of the choice of verbiage on the Reprodepot site, it turned into some kind of omg-they’re-using-copyright-to-stop-people-from-making-legitimate-use-of-fabric! outrage. (Actually, the prohibition had been on the Reprodepot site for ages; it just happened to get boinged now.)

And the wording used by Reprodepot is unfortunate, because it caused grief for the retailers and the designer in question. Technically, yes, it is possible to craft an agreement with customers prohibiting certain uses of any given fabric — not on a copyright basis, but on a purely contractual basis. (That would be up to the retailer to enforce against customers, since the customer enters into the contract with the retailer; but if the customers trespassed on the designer’s trademark or other rights, then it would be up to the designer to enforce those rights.) An example of this would be the current Amy Butler policy: if you buy the fabric wholesale, you must comply with certain terms. If you buy the fabric at retail, you’re not bound by those terms. (Butler’s policy wasn’t always like this.) That’s similar but not identical to this situation, because the retailers were selling both “restricted” and “non-restricted” fabrics at the same time.

The good thing is that as a result of the blowup, the Reprodepot statement and the designer’s position was clarified, just as Amy Butler’s was after consumers of her fabric became outraged at her earlier policy that limited sale of products from fabric purchased at retail. Fortunately for her, she didn’t have to be boinged before she made changes. Ouch.

If you’re a designer who is planning to file and prosecute your own trademark application, especially in the US, you really should think about what you supply as a specimen of use in support of your application. Not only should you ask yourself, “will this specimen prove that I’m using the trademark?” — which is something your specimen needs to do — but you should also ask yourself “do I want to put this on the public record?”

When you seek registered intellectual property rights — patent or trademark — what you submit to an intellectual property office becomes part of the public record, at some time or other, and it becomes accessible to the public, somehow. In the case of a US trademark application submitted electronically, that’s immediately and online.

(In the case of a patent application, with a few exceptions your application is published eighteen months after filing. Many patent offices publish the patent application online; the US and the European Patent Office now make the entire up-to-date patent file history, including the applicant’s submissions, easily accessible online. This is a terrific tool. Not only can you track your own patent applications as they wend their way through the system, but you can keep very close tabs on competitors, too.)

So, if your example of trademark use is a knitting pattern bearing your trademark, and you choose to provide the USPTO with a full copy of that pattern bearing your trademark as a specimen, then your complete pattern will be uploaded to the USPTO website and made available for download, for free, to anybody who knows where to look. Perhaps a knitting pattern might be your only appropriate specimen, but if that’s the case and it’s a multi-page publication, consider carefully whether you actually need to supply all pages as a specimen. It may well be that the first page or the cover page will be sufficient. And that way, you would avoid turning a document that you normally offer for sale into a free download.

If it turns out that you did do just that, I’m not certain there is a way to withdraw the specimen of use so that it no longer appears online. Conceivably parts of a file could be sealed by a confidentiality order, but a specimen of use cannot, and in a case like this a confidentiality order would have to be after the fact and if you’ve let the cat out of the bag yourself, it’s often hard to lock the barn door. (Please don’t cry over spilt milk. Just deplore my mixed metaphors.)

By engaging the patent or trademark system, you are at least implicitly giving the government permission to deal with your submitted work, even if protected by copyright, in a manner consistent with its legal obligations to the public.

Standard warning: just in case you start getting ideas, the fact that you, a user, manage to download a file with the apparent blessing of a government entity doesn’t mean that you have the right to start distributing the file to whomever you please. Copyright doesn’t explode into nothingness just because something’s on the net. Thank you.

Yes, I am being deliberately coy.