FedEx Furious Over Hand-Crafted Furniture

FedEx Furious Over Hand-Crafted Furniture

by Michelle Kaminsky, Esq., December 2009

A couple months ago, Jose Avila was an ordinary, pink-haired software developer with plans to relocate to Tempe, Arizona from California. A stand-up guy who didn't stiff his old roomies with the rent, Avila soon found himself paying for an apartment in both places, which left him with little cash for all the splurges of youth, like, ahem, furniture.

So, drawing from some college architecture classes and using up a heck of a lot of free time, the twenty-one year old built his own bed, couch, table, chairs, and desks. Wood, hammer, and nails? Couldn't afford them, so Avila used the next best thing—FedEx boxes, provided free to FedEx clients. Within a few days of posting pictures of his new digs on his website, he received word from FedEx—and that word was not "gnarly," reportedly one of Avila's favorites.

Was FedEx impressed with this ingenious use of its shipping materials? After all, what better advertisement for the boxes' sturdiness and reliability than Avila's handmade household creations? The bed supports a 5-foot-6-inch, 165-pound-jumping-up-and-down man, and the couch reclines at a 60-degree angle and has storage space underneath.

Impressive as all that sounds, praise from the multimillion dollar shipping company never arrived—but a cease and desist letter from its lawyers did.

Citing infringements of trademark and copyright laws as well as violations of the Digital Millennium Copyright Act ("DMCA"), FedEx lawyers wanted Avila's site taken down immediately. They claimed that Avila's use of the FedEx logo on his website would confuse the public as to the source of the goods, thus violating FedEx's trademark.

Avila's furniture and their pictures, wrote the lawyers, constituted displays of derivative works of FedEx's packaging materials—the exclusive right to which belong to FedEx under its copyright. The alleged DMCA violations were less clearly defined, as the letter only cursorily noted that at least some of FedEx's claims are governed by the Act.

FedEx lawyers also maintained that Avila did not gain the boxes "lawfully," and that he was in violation of the terms of use, which provide that the website "is provided solely for the use of current and potential FedEx customers to interact with FedEx and may not be used by any other person or entity, or for any other purpose."

According to the letter, though, the damage won't end with just Avila: he was also accused of "inducing, causing or materially contributing to the infringing conduct of others" who "could be held liable as a contributory infringer."

Enter Jennifer Granick, the Executive Director of the Stanford Law School Center for Internet and Society Cyber Law Clinic, who took Avila's case pro bono, and we had an Internet-age David and Goliath tale—big corporate FedEx against little ole' Avila who was just trying to make a difficult situation liveable, and, according to his website, show others that "It's OK To Be Ghetto."

Granick responded with case law backing up Avila's arguments that he was within his rights to make furniture with the boxes, citing a Ninth Circuit case in which the court denied Mattel's copyright and trademark infringement claims regarding an artist's sculptures and photos of Barbie dolls in suggestive positions. Moreover, Granick noted that Avila was not trying to sell anything related to his furniture, and that no one searching for FedEx would possibly confuse Avila's site with the actual FedEx site (in fact, Avila's site now provides a link to on its homepage).

Now, after a couple rounds of public letter-exchanging, FedEx seems to have backed off from its initial stance, and Avila's furniture hasn't been seeing nearly as much publicity lately. The height of the furniture fracas, though, featured interviews with Avila on the "Today Show" and "Countdown with Keith Olbermann."

Ironically, Avila had always been a supporter of FedEx, which is why he had the boxes lying around in the first place: "From day one I wanted to be pro-FedEx and give some support to FedEx while at the same time displaying the artwork."

But now, Avila feels that taking down the site "will give large companies the idea that they can push the little guy around." The site continues, and, as an aside, Granick has also refused to delete a post on her blog, as requested by FedEx lawyers.

So who is right? On the surface, which is the only level we have at this point, Granick's legal response to the FedEx threats seems solid. It would seem that FedEx has, as they say, thrown everything at the wall to see what sticks—and perhaps a judge would side with the corporation if the case eventually entered a courtroom.

But even if, legally, FedEx has valid points buried deep within their heavy-handed letters, it's clear where the views of the Court of Public Opinion lie. Many agree that FedEx missed out on a huge public relations opportunity by taking Avila's furniture a bit too seriously.

Showing that perhaps the company has taken a lighter course of action, a FedEx spokesman has said that the company has not filed a lawsuit and quipped "Are we going to repossess [Avila's] furniture? No."

So, more than likely, FedEx's stance has eased, and Avila can go back to business as usual, maybe with the Big Brown Truck instead. Regardless of his chosen shipping company, though, Avila can rest well on his new memory foam mattress—provided free of charge by the Dormia Mattress Company when they caught wind of Avila's plight.