I asked my attorney, Katie Long, for an opinion on selling cakes made with licensed character pans. She is an excellent trademark attorney, and I take her advice very seriously. Hopefully this article will provide some closure to this issue!

http://klonglaw.com/?p=403

Selling Copyrighted Character Cakes- Should you do it?

The short answer to this question is NO. To sell a cake made using a copyrighted character pan would infringe on the cake pan copyright owners rights. Read on if you would like a more in depth explanation as to why this practice is risky business.

For purposes of this article, cake pans refer to copyrighted character pans (for example Mickey Mouse or Sponge Bob Square Pants) like this Pan.

THE LAW

The law of copyrights was created to encourage creativity. Copyrights protect original creations that are affixed to any tangible form of expression. Examples of creations that are eligible for copyright protection include books, poems, drawings, musical works, pictures, sculptures, sound recordings, and architectural works. Copyright owners have the exclusive right to reproduce their work, prepare derivative works based on their original copyrighted work, distribute copies of their work to the public, publically perform the work if applicable, and publically display their copyrighted work. In general, it is illegal for someone to intrude on any of these exclusive rights without the permission of the copyright owner. There are however some exclusions, including the First Sale Doctrine and the Fair Use Doctrine.

EXCEPTIONS TO THE LAW

The First Sale Doctrine is a concept which says after the first sale of a particular object that embodies a copyrighted work, the copyright owners rights are exhausted and the copyrighted object is free to flow in the stream of commerce. The doctrine essentially allows for resale of the copyrighted object. It is important to note, that the First Sale Doctrine does not get around the copyright owners exclusive right make reproductions or derivative works. When applying the First Sale Doctrine to the cake world, we learn that a baker can purchase a cake pan from a copyright owner (or authorized distributor) and then later sell that same cake pan to another person without violating the copyright owners exclusive rights. However, the First Sale Doctrine does not allow a baker to purchase a cake pan from a copyright owner (or authorized distributor), use the pan to create the copyrighted characters likeness, then sell that character cake to a third party. The sale of the character cake deprives the copyright holder of its exclusive right to reproduce and prepare derivative works of the copyrighted object, as well as their exclusive right to distribute the work to the public.

Another exclusion to the basic principal that a copyright owner maintains certain exclusive rights to their work is called the Fair Use Doctrine. The Fair Use Doctrine allows the public to make reasonable use of copyrighted material without first obtaining permission from the copyright owner. The copyright laws recognize that fair use of copyrighted material may be used for purposes of criticism, comment, news reporting, teaching, scholarship, or research. When applying the Fair Use Doctrine to the cake world, we learn that a cake baker who uses a character pan to create a character cake cannot hide behind the Fair Use Doctrine to sell the cake, because the purpose of the cake sale is profit or pecuniary gain, not any of the fair use exceptions.

CONCLUSION AND SOLUTION

After reviewing the law of copyrights, including exclusions to the law, it is clear that the use of a licensed character cake pan for character cakes sold to the public would constitute copyright infringement. Penalties for copyright infringement can range from $200 to $150,000+, so knowing the law in this area is important.

What can a cake baker who wants to sell character cakes do? The safest route would be to seek copyright permission or license from the copyright owner. This can be a time consuming and expensive proposition, but it is the safest way to avoid being accused of copyright infringement.

For more information on copyrights, visit www.copyright.gov or talk to an intellectual property attorney.

Excellent summary, the only follow-up question I would ask is regarding the use of figurines and toppers featuring copyrighted characters. Since the item itself (not a reproduction) would be included as part of the cake, it would seem that the First Sale Doctrine would apply in that case.

Can you buy the pan and make the cake, then charge the customer for the pan and cake and give them the pan and cake, so you would not be re-using it? Would this be a legal way to do this? I don't sell cakes but when I read this post this popped into my head as a possible option.

Aah, I see. Thanks Jasonkraft.

CC should make this a sticky note, so we can finally quit discussing the pros and cons (yeses and no's?) of this topic.

Great summary! Thanks!

Oh, ChefStef, you're right, but you're around here long enough to know that people rarely look at the stickys, or articles, or take the time to search the forums archive before asking the same darn questions over and over.

Theresa

"Oh, ChefStef, you're right, but you're around here long enough to know that people rarely look at the stickys, or articles, or take the time to search the forums archive before asking the same darn questions over and over. "

The topic of the question is clearly stated. If you're bored with it, don't click on it. Not everyone has been here for 100 years and knows all the answers.

I've asked JanH to pin this topic. I've also reassured her that I have permission from my attorney to post the article in its entirety.

You rock Kelley! Awesome post!

I had a woman call me yesterday wanting me to do a 3d carved cake of "How to Train Your Dragon" She wanted the main character dragon done, Oh and she wanted it for this coming Sunday. I told her not only was I fully booked for this coming weekend (which it clearly states on my calendar on my site), but that it was illegal for me to reproduce the likeness of a copyrighted character to sell to her. I wished her luck on finding what she wanted.

My only regret is that I didn't even get to tell her a price for such a cake...LOL! The rush fee alone for this cake would have been at least $50, My carved cake minimum is $250 and those usually only serve about 25-30 people. I am sure she probably only wanted to pay about $30 for the cake...LOL!

Think of it this way....as a general rule, it is illegal to use anyone's copyrighted material to make money for yourself in any way at all without permission. Period.

I'm a photographer, so I deal with copyrights ALL the time.

This covers anything from the most egregious - taking an image that isn't yours and branding it as your own - pretty blatant....right down to playing the radio in your restaurant without an ASCAP lic -not so blatant, but still a violation because you are using someone else's work to set the mood in your commercial establishment for the purpose of getting people to buy things.

I wish the cake shows on TV would discuss this issue.

Hi, I'm Victoria I am 15 and I was wondering I am holding a "Cupcakes for a Cause" to raise money for Children's Miracle Network I will be selling cupcakes and wanted to know if it is legal for me to sell cupcakes that have characters on them? ( I will be selling them outside stores, and etc. ) If it is not, could I say "Make a donation of _$ or more and get a cupcake!"? because then I am not truly selling them, but I would be technically giving them away to people who donate?

A

I have it stated on my web site licensed characters must be approved cake kits or items sold to be used on cakes such as pre-printed edible images. I still get calls every week to reproduce a character and when I tell then it's illegal to do that I always get "well how come I see them all over the internet". Unfortunately every other bakery and home decorator around me has no problem doing them, it is fustrating to have customers going to a another person and having no problem getting their cake done. Even the "big boys" in my state have Disney cakes right on their web sites, so no wonder people think it's ok...

im still confused on this. im just starting out on making cakes and i just want to be sure...is it okay to use cake characters figurines on the cake and sell it? if i buy character figurines online, and put them on the cake, i can sell it? does it have to be cake figurines or can be any toys from wal-mart? Please let me know! thanks!

yeah i know, thats true. i have had some people asking to make minnie mouse cake and i had to turn them down cuz of copyrights and i have seen hundreds of them on the internet, which sucks. i made one for my own daughter which should be okay cuz its not for sale. but if a customer wants me to make one for them, i have to say no
 

A

As long as you aren't copying the character and the figurine is licensed, you have the legal right to resell the figurine without permission from the copyright owner.

AOkay great! Does the cake have to be square like Walmart cakes or it can be any shape or form as long as I use to figurines on it?

A

The cake can be of any shape, assuming no copyrighted elements have been copied.

If you buy a DecoPac, the license agreement may require you to duplicate the layout of the DecoPac exactly. It's unclear whether or not that is actually enforceable but if you use a DecoPac I would abide by the agreement unless you are willing to be a test case.

AJust for clarification, that doesn't mean you can buy anything marked as a cake topper online and its legal, there are plenty of people selling unlicensed cake accessories on eBay and etsy etc. if its not sold as being under license from Disney etc, its probably not.

Do you guys think that the licensed edible premade sugar decorations (from Luck's or DecoPac) would legally be the same type of thing as a figurine?  I like to use them on cupcakes and cake pops I sell.

A

I believe the companies that make these sugar decorations have license agreements with the copyright owners, you can contact them to confirm this. If they are licensed they are OK to resell.

I just find it amusing that this thread is a zombie resurrected from three years ago, and it was supposed to "put an end to the discussion." This topic will never be ended because people will continue to try to find a way around trademarks and copyrights until the end of time.

Thanks Jason!