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Aftermarket Part Trademark Issue?

Discussion in 'Copyright, Trademark, Patent Law' started by ParaGrafix, Jan 18, 2009.

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  1. ParaGrafix

    ParaGrafix Law Topic Starter New Member

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    Aftermarket Part Trademark and Copyright Issue?


    I produce decals and small metal parts that are used to detail officially licensed plastic models. The parts that I make have no use other than enhancing products that are licensed and have been purchased.

    In and of themselves there is nothing identifiable in the decals or metal parts (logos, names, etc.). I do use the trademarked name but not a logo on my website and instructions to indicate what model kit these products are to be used with.

    I have been sent a letter telling me to cease and desist from making and selling my products and destroy all of my inventory. The letter is not from a lawyer, but just the president of the marketing company that handles the trademarks and copyrights.

    They claim that "these properties and all derivative works based on these properties (including designs, symbols, etc.) are owned by XXX and/or YYY ...".

    They state that I am implying that they endorse my product by using the trademarked names and saying that they own the trademarks and copyrights.

    I believe that I am using the names in fair use and that my aftermarket parts, since they do not use the trademarked name, are also fair use similar to automotive aftermarket parts that are not licensed by (say) Ford Motor Company.

    Am I right? Can I continue making and selling my parts? Should I add a disclaimer to my documents saying that I am in no way connected with the trademark holder and do not imply any endorsement by them?

    Thank you for any advice you can give.
    Last edited: Jan 19, 2009
  2. Michael Wechsler

    Michael Wechsler Administrator Staff Member

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    It's impossible for me to answer this question as you can understand - this is a fact oriented matter. I don't know if your extension kit is a derivative work. I am not sure that this marketing executive is doing anything more than performing a scare tactic. They may wish to release their own modification and you would be competing with them.

    That said, you can write a letter back challenging them that it is a derivative work, although it's best (by far) if you speak to an attorney first. If you're making money from this, it's your business and just what you need to do as a cost of doing business. If you're telling me you purchase the product and then enhance it and resell the product, I don't think there is anything this manufacturer can do given the "First Sale Doctrine." You do need to make sure that it doesn't appear that the company is endorsing your add-on.

    I'll post some additional information - here are some relevant items from Wikipedia which are generally correct:

    Copyright infringement liability for a later work arises only if the later work embodies a substantial amount of protected expression taken from the earlier, underlying work. The later work must take enough protected expression (it does not matter how much unprotected material is taken, for the latter is open to the public) for the later work to be "substantially similar" to the earlier work.

    This issue arises, typically, in the context of the defendant purchasing a copy of a picture or some other work from the copyright owner or a licensee, and then modifying it. For example, pictures from greeting cards might be affixed to tiles or one kind of textile product might be turned into another that can be sold at a higher price. In Lee v. A.R.T. Co. (the Annie Lee case), when the defendant affixed the copyright owner’s copyright-protected note cards and small lithographs to tiles and then resold them, “[t]he art was bonded to a slab of ceramic, but it was not changed in the process.” Therefore the defendant’s conduct did not give rise to copyright infringement liability. The court held that the defendant's tile-plus-card was too unoriginal to rise to the level of a derivative work, and therefore it could not be a derivative work at all, much less an infringing one.

    When the defendant's modification of the plaintiff's work is too insubstantial to "count," there is no infringing preparation of a derivative work. At the same time, the first sale doctrine permits the defendant to operate with immunity, although the affirmative defense is largely redundant in such cases. So long as there is no derivative work, there is no infringement -- since no conduct that the Copyright Act forbids has occurred.

    The First Sale Doctrine

    Copyright, as the name suggests, is the right to copy a work of some form. If one resells or gives as a gift a book (or CD or DVD) that one has bought, a new copy has not been made, therefore it is legal under US copyright law.

    With reference to trade in tangible merchandise, such as the retailing of goods bearing a trademark, the "first sale" rule serves to immunize a reseller from infringement liability. Such protection to the reseller extends to the point where said goods have not been altered so as to be materially different from those originating from the trademark owner.

    In 1909 the codification originally applied to copies that had been sold (hence the "first sale doctrine"), but in the 1976 Act it was made to apply to any "owner" of a lawfully made copy or phonorecord (recorded music) regardless of whether it was first sold. So, for example, if the copyright owner licenses someone to make a copy (such as by downloading), then that copy (meaning the tangible medium of expression onto which it was copied under license, be it a hard drive or removable storage medium) may lawfully be sold, lent, traded, or given away.

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