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Randy Walker
11-15-2009, 3:05 PM
If I purchase a licensed team product (pro or college) like a patch or pin ect, can I add that to my product and re-sell it without any additional permissions from the team? The only modification I will make to the licensed product is to drill and tap a hole for mounting.

Any thoughts welcome

Randy Walker

Dan Hintz
11-15-2009, 3:19 PM
Very sticky area there. My personal feeling is once you've purchased an item, you're free to do with it as you please. Unfortunately, the law is not in agreement (look at software license agreements... though those are slowly changing for the better). Once you sell it as a product, if you include a team logo on it, it gets sticky fast. Even if you're licensed to use the logo or logo-bearing products, your particular license must spell out any modification you intend to make to the product/logo.

Joe Pelonio
11-15-2009, 4:43 PM
That's correct, it's asking for trouble. Most entities will have their licensing rules on the website, and in order to sell their product in any form, altered or not requires that you pay them a lot of money, hundreds of thousands. Look at the NFL, at the link below as an example:


https://www.nfl.info/NFLConsProd/Welcome/CpPrequalify.htm

Martin Boekers
11-15-2009, 6:00 PM
Major pro sports teams as well as colleges can be real tough on that.

They like to have TOTAL control over marketing items, if you'll read through a licensing agreement you'll get a better understanding of their control over most aspects.

If you do a couple a year and it doesn't put them in bad light you may get by. Typically it starts with a cease and desist letter. If you continue after that it can get real nasty.

Say for example you bought a pin and attached it to a hat you make okay not too bad, but say you take that same pin and incase it in lucite with cow manure. Same pin that you bought and paid for but chances are good you would
hear from that organization a whole lot quicker and with whole lot nastier tone.

I avoid even engraving a logo here or there on a plaque as technically I shouldn't do that with out a license agreement. Would I get caught doing one here or there probably not.

If you never read an agreement you ought to you will be amazed!

I wanted to market MLB photos I shot, I got their licensing "packet"
The scope was incredible! It was to a point if I licensed a photo, and decided to offer it framed and unframed I needed a seperate license for each! If a player was involved I had to go through the player's union also!


Most of licensing goes through the governing body. Baseball, MLB Football, NFL etc and not the individual teams.

Randy Walker
11-15-2009, 8:38 PM
WOW they realy don't want little guy's like me to make and sell thier products. With conditions like that I will never be able to make my products. Thanks Joe for the link and everyone for all of the feedback. I guess that Im back to the drawing board.


Randy Walkerhttp://www.sawmillcreek.org/images/icons/icon9.gif

Dan Hintz
11-16-2009, 6:33 AM
WOW they realy don't want little guy's like me to make and sell thier products.
No, they want the big guys to do it... that way, they can more easily keep track of the product line.

Frank Corker
11-16-2009, 8:03 AM
I doubt very much that they would agree to you doing that. I'd be more inclined to think that if they found out that they would come down on you like a ton of bricks.

Mike Null
11-16-2009, 8:58 AM
My opinion is that you wouldn't likely have a problem as you purchased a legal item for your own use. You didn't copy it, nor recreate it, nor in any way attempt to deprive the owner nor the re-seller of their just due.

I know I have just opened the door to the naysayers but.....

Dan Hintz
11-16-2009, 9:35 AM
Mike,

If you purchased a team pin and embedded it into a solid block of opaque plastic so you couldn't see the pin, that's probably okay (though if you advertised the specific team being used, they might go after you). The moment the item is visible, however, you fall under the rules of logo use. It's not just the pin as a physical item (I agree with you, I purchased it, they made their money, I should be able to use it however I wish). They would argue dilution of value with their logo...and win.

Doug Griffith
11-16-2009, 9:48 AM
I agree that you are asking for trouble unless you pay licensing fees.

How about you modify your product to include the branded patch, pin or whatever you want to use so it does not need to be altered (ie. a hole in it). Then sell your item side-by-side with the branded item and let the consumer do the attachment (include some double-sided tape). Then your product stands on it's own and there should be no problem. You will also benefit by having less inventory of your product this way.

Doug Griffith
11-16-2009, 10:08 AM
Here's another one. I used to manufacture hard shell skins for Apple laptops. Consumers requested that I cut an apple shaped hole in them to expose the lighted logo on the machine. Sounded doable. It was just a hole. The problem would have been when the skins were not on the computer, the hole would have been perceived as an Apple logo. I would have benefited from the "use" of their logo (as a hole) and Apple would not have been happy.

Lee DeRaud
11-16-2009, 10:32 AM
How about you modify your product to include the branded patch, pin or whatever you want to use so it does not need to be altered (ie. a hole in it). Then sell your item side-by-side with the branded item and let the consumer do the attachment (include some double-sided tape). Then your product stands on it's own and there should be no problem. You will also benefit by having less inventory of your product this way.Don't you need to be a licensed reseller of the item for that to work? You may have just moved the problem from one document full of fine print to another.

Rodne Gold
11-16-2009, 11:40 AM
Not the right thing to do at all -- but this discussion brings this question to mind

What's easier..asking your SO for permission to have an affair or just having one and groveling after if you found out?

Doug Griffith
11-16-2009, 11:51 AM
Don't you need to be a licensed reseller of the item for that to work? You may have just moved the problem from one document full of fine print to another.

From my understanding, the items would be purchased from a licensed manufacturer or distributor. Just like any retail store that sells branded T-shirts or hats. If it's not altered in any way and not a component of your product there shouldn't be any issues. Your product is essentially converted to a frame or display for the branded item.

Mike Null
11-16-2009, 11:57 AM
Dan


They would argue dilution of value with their logo...and win.

Surely your point would apply to some of those who wear NASCAR shirts and Raiders shirts as well.;)

Martin Boekers
11-16-2009, 12:42 PM
When I contacted MLB about licensing I was told by them that if I had a picture that I licensed for resale and I decided I wanted to sell it framed also that I needed a second licensed to sell it framed. Even then there was some confusion because if I was a frame shop. I could sell the photo and then frame it for them. I just couldn't sell the photo framed as a package.

Confusing, yes!

One ups that you sell out of your shop may be treated differently than if you wholesale items to other shops.

Each governing body may have different agreements.

Dan Hintz
11-16-2009, 1:02 PM
What's easier..asking your SO for permission to have an affair or just having one and groveling after if you found out?
Do you want your pain now or later? Either way, you'll probably find out the scr**ing you're getting is not worth the scr**ing your going to get.



Surely your point would apply to some of those who wear NASCAR shirts and Raiders shirts as well.
I think you'll find that's due more to dilution of blood alcohol level and good taste.

James Jaragosky
11-16-2009, 1:32 PM
When I contacted MLB about licensing I was told by them that if I had a picture that I licensed for resale and I decided I wanted to sell it framed also that I needed a second licensed to sell it framed. Even then there was some confusion because if I was a frame shop. I could sell the photo and then frame it for them. I just couldn't sell the photo framed as a package.

Confusing, yes!

One ups that you sell out of your shop may be treated differently than if you wholesale items to other shops.

Each governing body may have different agreements.
Just sell your product, give away the item in-question with the sale.

Simon Arthur
11-16-2009, 3:16 PM
It's probably best to ask an intellectual property lawyer rather than some engravers about this. Here's a page which summarizes some of the relevant cases through 2004:
http://www.gindylaw.com/publications/alterationissue.html

The 2008 Quanta vs LG Electronics case changed things a bit in this area of law (though this was over patents, not trademark).

Dan Hintz
11-16-2009, 6:02 PM
I've split the following two quotes from different sections of the article posted by Simon:

In Enesco Corp. v. Price/Costco Inc., 146 F.3d 1083 (9th Cir. 1998), the court determined that the repackaging by Costco of the plaintiffs fragile porcelain figurines called "Precious Moments", which name was protected by a registered trademark, would cause a likelihood of confusion. The failure of the defendants to give as much care to the items as the manufacturer had harmed the good will that Enesco had painfully developed

Enesco had gone to great lengths to sell only to selected merchants, who would provide a special space for the figurines, and Price!Costco was not among the selected. Thus, when the porcelain was purchased in a damaged state, it was only natural that consumers blame Enesco. The court was faced with deciding whether the repackaged, but less secure, wrapping constituted a "material difference" effecting quality control. The tribunal struck a compromise. The court held that adequately informing the public of repackaging negated any suggestion that Enesco was responsible. Thus, Enesco's reputation for quality porcelain figures and good will would remain intact. In this way, the public would not be not misled, and there would be no likelihood of confusion

The court held that Costco could continue to sell the items with these additional responsibilities. This practical, middle-ground resolution was the result of the Coty exception to the "quality control" concept, which derives from Prestonettes Inc. v. Coty, 264 U.S. 359 (1924)This says there is potential to modify and sell a previously purchased item as long as you specify the item has been modified from its original form.

But wait, there's more...

What remains of the first-sale doctrine? Once sold, the holder of the mark can no longer restrict further transfers of the goods or of commerce generally. But when circumstances dictate that protection of the good will developed by the mark is in jeopardy, the owner may choose to intervene. The test for "material difference" is exceedingly low. Nearly any act by a reseller may invite litigation.

---

It seems fair to conclude that the first-sale doctrine, as applied to trademark infringement, is in tatters. Courts across the country have lowered the bar to such an extent than nearly anything will re-introduce the trademark owner into the stream of commerce. Since the owner "has spent time, energy and money in presenting a product to the public and building a reputation for that product" (Mishawaka Rubber v. SS Kresge Go., 316 U.S. 203 (1942)), it seems only logical that the holder of the mark should be able to prevent its ruin.Which essentially says any modification you do opens you up to litigation.

Thank you American court system :rolleyes:

Darren Null
11-16-2009, 6:06 PM
The answer is obvious. Produce and sell in short bursts...craft fairs and the like. Then -when the "cease and desist" arrives- you can comply & you're not left holding a lot of stock. Everybody happy.

Randy Walker
11-16-2009, 11:50 PM
I was originally planning on doing just what Darren suggested, make a few and hit some of the smaller flea markets. Problem is if they do get wind of me and find out about this thread they will most likely come down as Frank suggested "like a ton of bricks". And since I have to drill and tap the back for it to be strong enough I'm sure they would call that modification. At least thatís what I get from Simons link. There is one other thought here. The part that I am using is shipped with its own little plastic display case. With my modifications it will still be a display item, just more useful.
I am constantly amazed at insight of the people on this forum. You have all been a great help to me.

Thank you all

Randy Walker

Rodne Gold
11-17-2009, 12:40 AM
I think the acid test in your case is whether using the logo enables you to sell your product. Would your item sell without using the teams patches and pins?
We have World Cup soccer here in South Africa next year with extreme policing of the logo etc - so far in fact that even the uses of 2010 in advertising is onerously controlled. Businesses like Cafes that are within a 1-2km radius of stadiums are forced to close when matches are being played if they are not stockists or purveyors of the "official sponsors" products....
Some protection goes too far however - google Monster Cable and have a look at how they "protect" the word monster...

Darren Null
11-17-2009, 1:10 AM
You mean being forced to close your cafe because you're within 2Km of a footy match isn't going too far? I can't say I'd be impressed if it was my cafe.

Lee DeRaud
11-17-2009, 1:18 AM
Some protection goes too far however - google Monster Cable and have a look at how they "protect" the word monster...Pfft, they're total amateurs. Google "olympic trademark infringement" to see what happens when somebody takes it seriously.

John Frazee
11-17-2009, 5:40 AM
I was told a few years back that there was a man buying licensed mini posters of race car drivers and making clocks etc and setting up at NASCAR races. I think it was Dale Earnhardts wife came up and saw this guy set up selling Dale clocks and etc and had the stuff confiscated. The guy sued her for big bucks. He paid for the posters and that company paid the licensing fee so he was free to use them however he wanted. He won. Just like a baseball card. People put them on plaque boards and do different things with them and re sale. The fee has been paid. I wouldn't be afraid to do it.

Rodne Gold
11-17-2009, 7:00 AM
Yeh , but the cafes and businesses are being compensated at triple their turnover for the days closed ...so it's not THAT bad...

Randy Walker
11-17-2009, 8:57 AM
The product that I want to sell is sold by the thousands with all sorts of wood, glass, plastic, and metal trinkets attached to it. There are also many of the same type of unbranded items available that I will be adding to my product. My main concern is the use of the branded/logo’ed item.

Yeh , but the cafes and businesses are being compensated at triple their turnover for the days closed ...so it's not THAT bad...

Sounds like a sweet deal to me. Forced to close but you get triple compensation = day off with pay. How often does a shop owner get that kind of offer.

Randy Walker

Scott Shepherd
11-17-2009, 9:19 AM
The information I read about it says clearly that if the item adds value to the product you are selling, then you're in trouble. Basically, you have increased it's value by putting that item on there. That's not covered under "fair use". That's consider commercial use and it falls under copyright protection.

That's the way I read it.

Mike Null
11-17-2009, 10:48 AM
Steve

I just don't see how charging a license fee twice can be defensible.

Dan Hintz
11-17-2009, 10:58 AM
I just don't see how charging a license fee twice can be defensible.
I suppose the argument would be the original license fee paid was based upon certain criteria. When that criteria changes (repackaging to increase value of another item), the license (and fee) needs to reflect that. Is it fair? Meh, partly, I think... but any extra fee deemed necessary should take into account the prior licensing fee already paid. And we know that's never gonna happen.

Darren Null
11-17-2009, 11:26 AM
Ah. Compensation. That's all right then.


I just don't see how charging a license fee twice can be defensible.
That's capitalism for you matey. All the traffic will bear. If you think that's taking the mickey, have you ever analysed how many times/ways you're taxed on the same capital sum? I'd rather spend time with highwaymen and muggers...they don't use your money to convince you that they're doing you a favour and they don't give themselves the legal right to monitor your comms.

Scott Shepherd
11-17-2009, 12:05 PM
Steve

I just don't see how charging a license fee twice can be defensible.

Because it's their brand. Most of us here are thinking about it from a logical standpoint with good intentions being used. However, think about it from what COULD go wrong.

Think about someone taking a Disney character and packaging it with something in the adult entertainment industry (hope that's cleaned up enough). Think about someone taking a New York Yankees logo and putting it into a product that says how horrible they are. If you ignored the approval, then you could do anything you want and it could appear as if they were legally licensed.

I know of one story, locally, where Harley went after the people. They bankrupted them and they never mentioned Harley or used their logo. Those people are ruthless about anything that can impact their brand without their consent.

Scott Shepherd
11-17-2009, 12:07 PM
That's capitalism for you matey. All the traffic will bear. If you think that's taking the mickey, have you ever analysed how many times/ways you're taxed on the same capital sum? I'd rather spend time with highwaymen and muggers...they don't use your money to convince you that they're doing you a favour and they don't give themselves the legal right to monitor your comms.

We never said Capitalism was perfect, just better than being communist :D

Ken Smith
11-17-2009, 2:00 PM
Many colleges and universities make their licensing available via the Collegiate Licensing Company.

http://www.clc.com/clcweb/publishing.nsf/Content/Home.html

I know the schools near me charge 8-9% royalty for signage type products. First they have to approve you, then you have to pay an advance annually on the royalty. Hats and clothing are all licensed separately. Womens apparel is licensed separately from Mens, etc.

K

John W Richards
11-18-2009, 8:58 AM
If I buy material from a fabric store with John Deere design, I cannot make pot holders to sell at the craft shows? There is a lot of logo material for sale at the local fabric store for the purpose of making things, do we need a license for each type of thing we make? Sure would put a lot of crafters out of business.

Dan Hintz
11-18-2009, 9:29 AM
If I buy material from a fabric store with John Deere design, I cannot make pot holders to sell at the craft shows?
Legally, no.

Scott Shepherd
11-18-2009, 9:43 AM
If I buy material from a fabric store with John Deere design, I cannot make pot holders to sell at the craft shows? There is a lot of logo material for sale at the local fabric store for the purpose of making things, do we need a license for each type of thing we make? Sure would put a lot of crafters out of business.

I agree with Dan, legally, no.

I believe it's called fair use. If you make a potholder for yourself, you have not gained from it. However, if you sell it, you have. So any use where it's not sold or anyone gets a financial gain from it, would be considered fair use. You can make a Harley Logo on a piece and put it up as a sample. You're not selling it and you do not gain from it, it's a sample to show your capabilities. However, but a price on it and it's over.

Printed patterns on fabric can be used to make your own things, but you, legally, cannot sell them without permission.

I've been to a number of craft shows and clearly some people don't care. I've seen guys doing hand painted signs that have football logos on them. Clearly without the permission of the NFL. Saw the same guy at the following year show, selling them same things.

Personally, I think it's a very stupid business decision to make if you use the logos without permission. Most small business owners aren't LLC's and don't have the legal protection you might think you do. So what happens when you're at a craft show and John Deere shows up? They can sue you and say you have damaged their image. The settlements in those cases are not small. If you aren't Inc, or LLC, then you could very easily lose everything. Bank accounts, cars, homes, everything. There is a local case here where it happened. They ended up cleaning the guy out, and to be honest, he never copied a single thing. But, it was one of the "big" players out there and they said his mere presence tarnished their image and they won in court. He lost it all. Business, home, bank accounts. Everything.

Just because other people are doing it doesn't make it right. I'd never put my company in a position like that. That's just a very poor business decision, and one that could easily cost you everything you own and know.

One of the guys at Universal was telling us about one of their customers that was doing something with a logo on it without permission. He had multiple lasers as well. He's now sitting in prison and all his assets have been sold.

Is it really worth that? Not to me.

Rodne Gold
11-18-2009, 10:05 AM
If you can beggar a a person for merely using a logo a couple of times or just having a presence and then send em to prison .. the justice system concerned is severly flawed. Maybe being a commie ain't that bad :)

Scott Shepherd
11-18-2009, 10:12 AM
I didn't say I agree with it, just that it's the law. We have the ability to change the law, something being a commie wouldn't allow ;)

Dan Hintz
11-18-2009, 11:15 AM
I didn't say I agree with it, just that it's the law.
Definitely agree.

We have the ability (however miniscule) to change the law, something being a commie wouldn't allow ;)
Changed that quote for ya there, Steve :D

Lee DeRaud
11-18-2009, 11:30 AM
You can make a Harley Logo on a piece and put it up as a sample. You're not selling it and you do not gain from it, it's a sample to show your capabilities.Bad example. You do gain from it: "showing your capabilities" is just an overly verbose term for "advertising".
Moreover, I suspect a Harley lawyer could claim that your "sample" indicates an intent to sell...and he'd probably win.

Dave Johnson29
11-18-2009, 1:15 PM
I think the original issuer of the license would see it as their "image" was enhancing your product and therefore enabling you to sell more of them and at a higher price. Making sales on their coat tails and they were not getting a share of that.

The original license fee was based on the base product that you purchased with the "image," and they would rightly expect a cut of the improved value of your products. Obviously you wanting the "image" on your product is to enhance the value of your product.

Scott Shepherd
11-18-2009, 3:55 PM
Bad example. You do gain from it: "showing your capabilities" is just an overly verbose term for "advertising".
Moreover, I suspect a Harley lawyer could claim that your "sample" indicates an intent to sell...and he'd probably win.

Lee, it's my understanding you can do it as examples. I guess it would depend on how far you took that. If you were a printing company and you took out billboards with Harley's logo on it, then it would be a problem.

There's a difference in doing something to show as an example and actively marketing it with their logo. Can I do a harley logo on a piece of wood and put it in my showroom? Yes. Can I make 100 coasters with the harley logo and give them out to people? No.

That's my understanding of it. I could be wrong, but that's my understanding of "fair use".

Mike Null
11-18-2009, 5:14 PM
Harley is an especially good example in that all their dealers and employees act as logo police for them as they too have a vested interest in protecting the use of the logo.

Dan Hintz
11-19-2009, 6:35 AM
Steve/Lee,

I personally think you're both correct. The Harley Logo on a potholder as a showroom example may be acceptable... putting it on a sex toy, even as a showroom example, may quickly end in the courtroom. The first is harmless, the second will offend a lot of people, and that's what Harley will use as a point of contention in the lawsuit.

Scott Shepherd
11-19-2009, 8:41 AM
Yeah, my plan is to just not use it for anything, ever. It's worked well so far, kept me in business and out of jail. I think I'll stick to that plan :)

Yitah Wu
11-19-2009, 9:09 AM
FIRST SALE DOCTRINE

If you buy a NFL pin from a valid source and embed it into a desk set, for example, First Sale would say that you can resell it as a "desk set with inset authorized NFL pin" I would include the original tags from the pin as proof. A disclaimer would also help.

However, you wouldn't be able to sell it as a "Authorized NFL desk set"

This is the legal opinion as rendered in a number of cases, however despite this, the lawyers may still send you C&D letters or try to come after you. Disney is notorious for this. Disney, Nascar, and the NFL have sued (and lost) people who bough "officially licensed" fabric and sewed them into kleenex box covers or pajamas, etc.

See http://www.tabberone.com/Trademarks/CourtCases/courtcases.shtml

Precious moments vs. la Infantil is probably the landmark here.

Also http://www.tabberone.com/Trademarks/HallOfShame/HallOfShame.shtml

Dan Hintz
11-19-2009, 9:56 AM
Awesome site, Yitah... thanks!

Randy Walker
11-20-2009, 10:53 PM
Great site Yitah
I am sure my answer is in there some where. It may take a day or two to sift through. I have no intention of claiming my product to be an authorized version. It is only one version of many similar products that I am planning to offer in the spring and summer selling season. You have been a great help to me (and many others I'm sure).

Thank you verry much.

Randy Walker