The term “upcycling” was first used in 1994 by Reiner Pilz, a mechanical engineer, in the architecture magazine Salvo. Specifically, Pilz contrasted the practice of upcycling with recycling, referring to the latter as “down-cycling” and noting that recycled products often lose their value when recycled. On the contrary, Pilz pointed out that upcycling generally improves existing products and product parts in ways that add value and make them more appealing to consumers. Since then, the term upcycling has been used to define activities that involve repurposing discarded materials or old items and transforming them into new or rejuvenated products. Staple examples in this respect are Louis Vuitton bags revamped with fringe or rhinestones or Nike sneakers personalized with fabric, paint, or different decorations. Upcycling also refers to taking the remaining good parts of old products – such as buttons, buckles, and fabric – to create new items. In all instances, upcycling promotes sustainability by reducing the need for new materials and increasing the life cycle of existing products or parts of them.
In recent years, upcycling has seen a surge in popularity thanks to its positive impact on sustainability and the circular economy due to consumers’ increasing attention to the environment. As a result, individuals, artisans, and small companies have enthusiastically embraced the practice as a central part of their activities and a way to reduce waste. Large companies (like Ikea, Patagonia, and The North Face, to name a few) have also begun to upcycle their products to reduce their environmental impact. However, with fame often comes unwanted attention, and the growth of upcycling practices has led to various legal challenges against independent upcyclers based on the argument that their products violate intellectual property (IP) rights.
In particular, since upcycling generally leads to the creation of modified or altogether new products, it has been argued that using IP-protected materials can lead, amongst others, to trademark infringement and dilution. Supporters of this argument have argued that the traditional defense of trademark first sale (or trademark exhaustion as it is known on the other side of the Atlantic) does not apply because upcycled products are materially different than the goods on which the marks were used initially. In turn, this could lead to consumer confusion and damage to the reputation of the original trademark owners (for a discussion of similar trademark law-related arguments and opposition to upcycling in Europe, see Martin Senftleben’s previous blog here). It certainly does not help that upcycled products frequently include original parts of luxury goods and prominently display their trademarks – such as earrings or pendants made with buttons from old luxury clothes or cut-up pieces of designer bags displaying the logos of the original trademark owner. Not surprisingly, this has led to widespread displeasure (and fear of competition) on the part of the trademark owners, who have vocally supported that these products may create confusion as to their commercial source and lead the public into believing they originate with or are authorized by the original owners. A related complaint is that, even when they do not confuse the public, upcycled products are still likely to be associated with the famous marks they display, thereby constituting trademark dilution.
Against this background, it is no surprise that upcycling has been the subject of several lawsuits in recent years. Yet, since all claims have been settled out-of-court so far, the practice’s legal boundaries remain uncertain both for upcyclers and trademark owners.
The still murky litigation on upcycling
In particular, one of the first relevant cases on upcycling filed in the U.S. was the 2021 lawsuit between Louis Vuitton (LV) and Sandra Ling Designs, Inc. (SLD), in which LV alleged trademark infringement and dilution for the unauthorized creation and sales of apparel, handbags, and accessories made from authentic pre-owned LV goods. The dispute focused on the upcycled bags SLD made by adding fringe and stones to old LV bags and accessories – such as earrings, bracelets, and keychains – made with fabric from old LV products. In its complaint, LV argued that these products not only prominently and unlawfully bore LV marks but also fundamentally altered and no longer met LV’s quality standards, which could both lead consumers into confusion and negatively affect LV’s reputation. SLD responded to the claims by arguing that customers were unlikely to be confused because the upcycled products included language disclaiming that the products were not affiliated with LV on each upcycled product. Ultimately, the parties recently reached a confidential settlement agreement, but $603,000 and a permanent injunction were issued against SLD, with the company also agreeing to drop all counterclaims against Louis Vuitton.
The same year, Chanel filed a similar suit against Shiver + Duke, a small company known for its upcycled jewelry made from pieces from luxury brands, including repurposed authentic Chanel buttons from old Chanel clothing. Similarly to the LV dispute against SLD, Chanel claimed that the upcycled products could create a likelihood of customer confusion with authentic Chanel jewelry. Chanel additionally claimed that Shiver + Duke’s use of the buttons was materially different from the use of the original Chanel products, and in turn, the company could not rely on the first sale defense. Here again, the parties reached a confidential settlement in 2022. Moreover, the Shiver + Duke website no longer displays any upcycled jewelry, and the landing page displays a large “Non-Affiliation” disclaimer regarding their “Repurposed/Upcycled Collection,” which states that “In no way is Shiver + Duke affiliated with Chanel, Louis Vuitton, Dior or Gucci. S+D creates unique designs using Authentic buttons and bags to preserve their beauty while reducing waste and its impact on the planet. The names of the above companies are registered trademarks of their respective owners.”
Upcycled products were also the subject of a complaint filed in 2023 by Levi Strauss (Levi’s) against Coperni UK Limited. In this case, Levi’s argued that Coperni’s use of small white fabric logo tabs on the back pockets of its denim pants and button-up shirts was confusingly similar to the well-known labels or tabs found on Levi’s products. Levi’s additionally argued that the stitching used on the pockets of Coperni’s denim pants infringed on Levi’s protections for the “Arcuate” stitching design. Levi’s owns multiple registrations for both the Tab trademark and the Arcuate Stitching design and supported that Coperni’s use of these designs was likely to confuse consumers and the relationship between Coperni and Levi’s. Levi’s further argued that Coperni sold unauthorized “reworked” versions of Levi’s authentic apparel – this part of the complaint being the most relevant to the practice of upcycling. Like LV and Chanel in the previous cases, Levi’s asserted claims for trademark infringement, unfair competition, and trademark dilution. Again like the previous cases, this case settled less than two months later, with Levi’s filing a voluntary dismissal with prejudice.
As a result of all these settlements, no court opinion has been issued to date in the U.S. to guide businesses and designers involved with upcycling, even though opponents of the practice have tried to point to the favorable award Chanel received in a 2024 case against What Goes Around Comes Around (WGACA) as a positive development for trademark owners. However, this case did not refer to upcycling, but rather to the resale of used Chanel products, some of which were found to be counterfeited. Notably, Chanel was awarded $4 million after a jury trial that found WGACA liable for trademark infringement, false advertising, unfair competition, and deceptive trade acts or practices because some of WGACA’s products were found carrying serial numbers matching stolen Chanel numbers. Since then, WGACA added a disclaimer that they are “not an authorized reseller nor affiliated with any [sic] the brands we sell.” Of course, the outcome of this case has reinforced the narrative that upcycling may overlap with counterfeiting, leading to additional confusion and possible chilling effects in the upcycling market by independent entities. Yet, does this mean that the practice of upcycling is necessarily doomed in the U.S. at this point? As elaborated below, this author hopes this is still not the case.
Can upcycling be rescued?
Of course, given the recent U.S. litigation, it would be hard to support the idea that the traditional IP framework enthusiastically encourages upcycling when the practice is not controlled by trademark (and other IP) owners, particularly when upcycled products use elements displaying famous marks as part of the upcycled design. Still, U.S. courts have not ruled on the merit of the issue yet, and based on past decisions in other areas, such as trademark fair use or parody, it cannot be excluded that they may decide to uphold the validity of upcycling. In fact, we could even speculate that the rush to reach confidential settlements in all the cases at issue was partially driven by trademark owners’ concerns for a negative judicial outcome siding with the upcyclers. Considering the growing importance of sustainability, U.S. courts certainly realize the importance of upcycling as a means to facilitate a robust circular economy as a fundamental societal interest (or perhaps even as a human right, as several previous blog posts in the first part of this symposium have demonstrated: see here, here, and here) no less relevant than enforcing trademark rights.
In this respect, what could be some valuable suggestions that U.S. courts could take into account based on the current trademark law to support upcycling when they are finally given the opportunity to rule on the validity of the practice?
First, courts should consider rebutting the current prevailing notion that upcycling does not fit under the defense of trademark first sale because upcycled products are materially different than the goods originally identified by the marks at issue, now used as parts of the upcycled products. Specifically, even though the final upcycled products may use upcycled components differently than the original products – for example, old buttons from a dress are now used as earrings, or a piece of fabric originally used for a dress is now used for a bag – courts could support that these components, in and of themselves, are not materially different, meaning that the button is still the same button and the fabric is still the same fabric that was used in the original goods. So long as upcyclers obtained those components lawfully, they should be entitled to use them in their products. Courts should remember that the principle of first sale aims to balance the property rights of the products’ physical owners with the control granted to IP owners. The principle is also necessary for businesses to prevent IP rights from becoming obstacles to the free movement of goods, including product parts, in an economy where products are generally complex and made with multiple parts. In this respect, the use of IP-protected parts in upcycled products is no different than in other complex products, such as laptops and automobiles, whose manufacturers routinely use parts lawfully acquired in the marketplace.
U.S. courts should also consider the possibility of requiring disclaimers on upcycled products, clearly stating that the products use parts from original goods and there is no commercial affiliation between the business engaged in the activity and the IP owners (exploring this option as a possible solution for upcyclers within the context of European trademark law, see the previous post in this symposium by Martin Senftleben). As in several cases mentioned above, the use of disclaimers can help exclude trademark infringement and dilution and function as notice for consumers about the product’s origin and upcycled quality, thus explicitly dispelling the risk of confusion and commercial affiliation with the original trademark owners. Disclaimers can also function as contractual agreements between the sellers and purchasers of the upcycled goods and shield trademark owners from any possible liability from problems related to the upcycled products – like a faulty zipper in an upcycled bag made with old fabric from famous designers or a loose earring made with the buttons from famous designer clothes. As this author has noted in her scholarship, U.S. courts are already moving in this direction and have allowed disclaimers, for example, for aftermarket sales of spare parts. Why not require the same for upcycled products?
Last, but not least, U.S. courts could consider applying the doctrine of trademark fair use as a ground to justify upcycling unauthorized use of trademarked products. Based on the First Amendment, trademark fair use seeks to balance the interests of trademark owners with those of third parties to use a mark in an expression-related context. Specifically, while it may be difficult to argue that upcycled products represent parodies, they may very well fall under the notion of nominative fair use, according to which unrelated parties can use a mark to identify or refer to the trademarked product so long as the reference does not suggest endorsement or affiliation. Nominative fair use can provide an effective defense against a claim of infringement, even when some confusion may be present. This position was also supported by the U.S. Supreme Court in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. Moreover, by taking pieces of another product and using them to create something new and desirable, upcyclers make a clear statement in support of circularity and sustainability. They transform used, worn, or vintage products into something that has a new life as part of the circular economy. As U.S. courts supported in the past, the unauthorized use of a mark beyond a simple commercial transaction is protected speech under the First Amendment. In this respect, U.S. courts should support that upcycling represents a form of speech and protect it as such. The U.S. courts could go even further by relying not only on the free speech argument but also on the human right to a healthy environment. As Otto Spijkers demonstrated in the first blog post of this symposium, this right is universally recognized as essential for fully enjoying human rights – whether as a new autonomous right or as a basis for a “green” interpretation of existing human rights, such as upcyclers’ freedom of expression or trademark holders’ right to property.
Recent litigation involving Nike could be used to further support these arguments. In 2021, popular rapper Lil Nas X collaborated with MSCHF to create 666 limited edition upcycled Nike Air Max 97s decorated with pentagrams, a Bible verse about Satan, and real blood. Although Nike was not a part of the collaboration, consumers believed Nike was somehow involved since their shoes were being satanically decorated and sold en masse. Because of consumer pressure, Nike brought a suit against MSCHF for trademark infringement, false designation of origin, trademark dilution, and unfair competition. Here again, the case settled shortly after, largely due to the likelihood the court would rule in MSCHF’s favor on First Amendment grounds. More recently, in 2024, Nike filed a complaint against shoe customization giant Dominic Chambrone, known as the “Shoe Surgeon,” claiming he was creating and selling fake Nike sneakers, teaching customers how to create their own fake Nike sneakers, and falsely leading consumers to believe he is affiliated with Nike. Shoe Surgeon denied these allegations and counterclaimed defamation and/or trade libel and unjust enrichment and requested a declaratory judgment of invalidity. While this case may also settle, it is another example of how customization and upcycling are not necessarily unlawful at this time.
In conclusion, while upcycling is currently on unstable ground in the U.S., courts and legal practitioners can find reasonable legal spaces for it to exist against the pressure by trademark owners to ban the practice or allow it only when they fully control it. Ultimately, there is no doubt that the practice serves the public interest (or, as already mentioned, even as an exercise of the human right to a healthy environment) by promoting sustainability and circularity, and these interests are no less important than trademark rights in today’s society.
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