Is a shop that prints your photos on cakes allowed to print photos including people wearing (licensed) brand t-shirts?

Question

A large supermarket chain in the UK allows you to have photos printed on to cakes (they print it onto a layer of icing, then stick that on a cake). It's someone's special birthday and my wife took in a photo of the family (11 of us) to have it printed.

The store refused because I was wearing an (officially licensed, and maybe even bought from that store!) Mario t-shirt. It's clearly visible, but it's just a t-shirt on one person out of eleven on a photo.

I tweeted them about how ridiculous this is (surely it falls under fair dealing - photo shops don't refuse to print all photos of people wearing licensed t-shirts, or with company names/logos in them?) and got back essentially the same response:

I'm very sorry to hear about this. Unfortunately we are unable to do this for you, I know it is a frustration but we do not own the rights to this image and branding. I'm sorry for the inconvenience caused.

To what extent is the shop right about being able to print this photo on my cake?

1. They're right and this is not allowed
2. It's probably allowed but they're just being cautious
3. It's ridiculous nonsense

Answer 1

The store is, as far as i can see, not using the trademarked image to sell their cake. Your family does not intend to sell anything at all. This photo, from the description, could not reasonably be confused with an official image from the trademark holder. (all of this is based on your description, of course). Therefore, the trademark holder probably won't sue for trademark infringement, even if they somehow heard of this event, and if they did sue, they would quite likely lose.

You would be making a copy of a presumably copyrighted image. You might have an active defense, but that is very hard to be sure of in advance. (Note that "fair use" is a very specifically US legal concept, and would not apply in the UK. The roughly comparable concept is "fair dealing" but that is more restrictive, and follows somewhat different rules.)

In any case, it is possible that the rights holder would sue, and if the situation were a bit different (the was only one person pictured, making the shirt with the protected image very prominent, for example) there might be a larger chance of such a suit being successful.

No business is going to want a bakery department manager deciding whether a particular use of a particular image does or does not infringe IP rights, and whether it does or does not expose the business to significant risk. Just to get an opinion from their lawyer on whether this image infringes would probably cost them several times the price of the cake with image printing. The store has no doubt written its guidelines to err well on the side of caution, because one suit, even if they won, would cost far more than the profits of many cakes, and if they lost, could have a very negative effect on their bottom line indeed.

The store is entitled to restrict what business it does to keep itself safe from lawsuits. It is going to keep well on the cautious side, in all likelihood, and so it should. I fear you will have to find a store with a different policy, or use a different picture.

Answer 2

When you bought the shirt, you bought a single, personal license to display the Mario character. You didn't pay for a license that grants wider distribution, i.e. on a cake, or a poster, or as an image you can upload to somewhere on the internet. You didn't sign a contract when you bought the shirt, but I'm sure there is a tag on it that says the design is licensed by Nintendo and all reproductive rights are reserved by them, or something to that effect.

Your license of image of the Mario character can't be transferred to the supermarket to make the cake, because they are producing the cake and need their own license to use the Mario character in their own product(s).

In the UK, the usage of Mario on your cake is not Fair dealing (Wikipedia), where the use is "for the purposes of research or private study, where it is to allow for criticism or review, and where it is for the purpose of reporting current events." (In the U.S., it's similarly known as Fair Use | U.S. Copyright Office with different stipulations. See also International copyright treaties - (Wikipedia).)

Yes, it's very-by-the book, and I doubt anyone - including Nintendo - will care. But the supermarket, as a business entity, has to be very careful about any type of infringement in any of their products, and no doubt has been instructed by corporate lawyers to respect every instance of licensing and copyright and trademark and to not risk any instance of infringement, even if they lose a customer, as the cost of any infringement, if the market was sued, would probably be far higher than the loss of a few cake orders.

If you looked around at the bakery, there will be a flyer or signage at the bakery stating that they can't reproduce trademarked or copyrighted images, and there may be wordage on anything you sign to confirm an order for a cake that says you are responsible to have copyright permissions or a license for any imagery used on the cake.

And businesses that make prints of your own personal photos do have stipulations as to what they will reprint, concerning either the content of the photos or if you own the copyright to the photo itself. You will see the fine print at the photo shop when you drop off a digital files (or film negatives) for printing that you need copyright permission to reprint photos taken by others, etc.

But of course, like anything, there are exceptions; not all stores or employees or copyright holders are going to care or enforce their own copyright policies all the time.