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November 5, 2010
Sent via Email
name deleted
company deleted
Re: Unauthorized Use of the CAPS Members’ Trademarks
Mr. LeVan,
We are in receipt of your email on October 25, 2010. We appreciate your quick response; however, we must maintain our position
that you are infringing the CAPS Members’ rights. We again request that you cease and desist the sale of cornhole boards and related
merchandise bearing marks licensed by the CAPS Members.
First, it is essential to understand that we are claiming violations of trademark law, not copyright law. The two are separate and distinct
bodies of law, each of which has its own rights and associated remedies. As such, the copyright arguments, as opposed to trademark
arguments, you assert in your letter are largely irrelevant. Each claim that you make is addressed below.
First Sale Doctrine Under § 109 of the Copyright Act
As previously explained, the CAPS Members are not asserting rights under the Copyright Act, 17 U.S.C., but instead are claiming
violations of their trademark rights, 15 U.S.C. (the “Lanham Act”). Therefore, your argument that your business’ use of the CAPS
Members’ marks in connection with your cornhole boards is protected by section 109 of the Copyright Act is irrelevant.
1. Quality King Distributors, Inc. v. L’Anzareasearch Int’l, Inc.
In particular, you suggest that the Supreme Court decision in Quality King Distributors, Inc. v. L’Anzareasearch Int’l, Inc. supports
such a conclusion. However, the Court’s decision in Quality King Distributors is specific to the use of a copyright “first sale”
defense in the context of imports and exports. Since we are not claiming that you are importing goods contrary to the Copyright Act,
Quality King Distributors is irrelevant to the facts of this situation.
2. Precious Moments v. La Infantil
Next you suggest that the case of Precious Moments v. La Infantil supports your claim that your use of the CAPS Members’
marks is protected by the first sale doctrine. However, you again confuse copyright and trademark law. In fact, the court in
Precious Moments found that the use of the fabric by La Infantil violated Precious Moments’ trademark rights because it
caused a likelihood of consumer confusion. The court then granted an injunction to prevent La Infantil from using the licensed
fabric to make other products. Like the plaintiff in the Precious Moments case, we are claiming that your use of the CAPS
Members’ marks creates a likelihood of confusion, in that consumers who view your products—not only on your website
but in the marketplace—are likely to believe that they are sponsored or authorized by the CAPS Members. Accordingly,
Precious Moments v. La Infantil supports our conclusion that your cornhole boards and related products bearing the marks
licensed by the CAPS Members violate the CAPS Members’ trademark rights.
Similarly, you state that “the notion that [the CAPS Members] can sell paint and then dictate how it is used is ridiculous.”
The CAPS Members have licensed Glidden to use team colors in various paints it offers for sale. This license does not
give the public a carte blanche right to use the team colors or other team indicia for commercial purposes, including the
creation or promotion of a separate commercial product. As noted above, if the use of the officially licensed paint creates
a likelihood of consumer confusion as to sponsorship or affiliation, then that use infringes upon the CAPS Members’ rights
and is prohibited. Because you are making unauthorized commercial use of the team colors and other CAPS Member marks
in such a way that causes consumer confusion, you are in violation of the CAPS Members’ rights.
Fair Use of the Team Names
You also claim that your use of the CAPS Members’ team names constitutes fair use. We disagree. In this instance, you are
using team colors along with the team names to identify and market a product that is not licensed or approved by the CAPS
Members. Specifically, you are using the team names and team colors to market your product, promote the product to the fans
of the CAPS Members, and are unfairly trading off the goodwill of the CAPS Members.
Applicability of Au-Tomotive Gold Inc. v. Volkswagen of Am., Inc.
Finally, you state that Au-Tomotive Gold Inc. v. Volkswagen of Am., Inc., is not applicable because your clients do not duct-tape
your cornhole bags to their bumpers and drive around town. However, such an analysis of Auto Gold is flawed, as it omits the
basis upon which the court made its decision. The court in Auto Gold determined that Auto Gold was infringing Volkswagen’s
trademark rights even though Auto Gold had disclaimers on its packages stating that Volkswagen was not affiliated with
Auto Gold because use of the marks created a likelihood of post-purchase confusion that had not been remedied by Auto Gold.
The holding in Auto Gold is not as limited as you seem to believe. If there is the chance that consumers will somehow be confused
as to the CAPS Members’ sponsorship or affiliation with your products, then your use of that mark is prohibited. It is our position
that despite your disclaimers, there is still a real possibility of likelihood of confusion because, like in Auto Gold, people that view
your products, including in the market after their purchase, will still erroneously believe that those products are somehow affiliated
or sponsored by the CAPS Members.
We have reviewed your website and noted that you have not removed any of the CAPS Members’ marks as requested. We
assume this is because you were awaiting a response from our office. Accordingly, pursuant to this response and the conversation
that you had with Lisa Armstrong, we maintain our position that you are infringing the CAPS Members’ trademark rights and again
demand that you cease and desist using the CAPS Members’ marks, including team colors and any other indicia of the CAPS
Members’ trademarks in connection with your cornhole boards and related products. Please remove all of the CAPS Members’
trademarks from your website, including all team names, logos, and colors by November 12, 2010. Failure to comply with our
requests will leave the CAPS Members no choice but to take further action against you.
Please note, the statement of facts set forth in this letter is not intended to be, nor shall it be deemed to be, a full and complete
statement of the facts in this matter. This letter is not intended to be a complete statement of the CAPS Members’ rights and
shall not be construed as a waiver of any legal or equitable rights or remedies, all of which are expressly reserved.
Sincerely,
/s/ Rhett Barney
Rhett Barney
cc: CAPS Members
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Rebuttal
Note the authoritative tone and instructive manner. Rhett Barney is a law student trying to act and sound like a lawyer.
He is an arrogant asshole who should go far in the wonderful world of corporate lawyers. But he is still an asshole.
The Idaho Supreme Court addressed what constitutes the practice of law in In re Matthews, 58 Idaho 772, 79 P.2d 535 (1938). There, the court stated:
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The practice of law as generally understood is the doing or performing services in a court of justice, in any matter depending therein,
throughout its various stages, and in conformity with the adopted rules of procedure. But in a larger sense, it includes legal advice and counsel, and
the preparation of instruments and contracts by which legal rights are secured, although such matter may or may not be depending in a court.
......
Where the rendering of such services involves the use of legal knowledge or skill, or where legal advice is required and is availed of or
rendered in connection with such transactions, this is sufficient to characterize the services as practicing law.
58 Idaho at 776-77 (citations omitted).
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Rhett Barney's reliance on copyright law versus trademark law shows his ignorance. He opened his mouth before he did his homework.
One basic flaw that arrogant attorneys have, and apparently third-year law students also have, is in believing that the First Sale Doctrine only applies to copyrights.
Any lawyer who tells you that is a fool.
Rhett Barney's statement that "section 109 of the Copyright Act is irrelevant" completely ignores the reality that federal courts have long
applied the First Sale Doctrine to trademarks. The question is whether
or not the product has been adulterated in some manner.
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It is well settled that sale of genuine goods without authorization by the trademark holder generally will not constitute trademark infringement.... [U]nder the
exhaustion doctrine, "a markholder may no longer control branded goods after releasing them into the stream of commerce...."
Liz Claiborne, Inc. v. Mademoiselle Knitwear, Inc., 979 F.Supp. 224,230 (S.D.N.Y.1997), (quoting Osawa & Co. v. B & H Photo,
589 F.Supp. 1163, 1173 (S.D.N.Y.1984).
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Nimrod Rhett Barney completely mischaracterizes the essential quotation from Quality King. Justice Stevens, writing for a unanimous Supreme
Court, stated, "The whole point of the first sale doctrine is that once the copyright owner places a copyrighted item in the stream of commerce by selling it,
he has exhausted his exclusive statutory right to control its distribution". Since we have already established that federal courts apply the First Sale
Doctrine to trademark cases, the statement by Justice Stevens is relevant. Importation of goods was not mentioned. FYI to Nimrod Rhett Barney -
"unanimous" means a 9 to 0 vote.
Nimrod Rhett Barney then lapses into complete stupidity in his very bad appraisal of
Precious Moments v. La Infantil. About the only thing he got
correct was the confusion aspect. The Court did not enjoin La Infantil from using the fabrics as Nimrod Rhett Barney contends but rather the court ordered the
defendant to include a plainly visible [notice] to the purchaser, "the notice should specify that, apart from the fabric, the items manufactured by T.M. Sewing Service for
La Infantil are not in any way connected to Precious Moments, Inc." Does Nimrod Rhett Barney know how to read? No where does the court
grant "an injunction to prevent La Infantil from using the licensed fabric to make other products" as claimed by Idiot Wannabe Counsel. It was a short order.
Barney couldn't read and comprehend it?
In Hasbro, Inc., vs Clue Computing, Inc.,
the court concluded some confusion was acceptable, and somewhat unavoidable, and not an absolute. The Supreme Court has ruled that some confusion
in trademark issues is unavoidable. Idiot Wannabe Counsel's claims are flimsy and unsupported, except perhaps by his drinking buddies.
Dipshit Barney again slips up on the subject of the licensed paint. First, the licensing agreement between the teams and the paint company, Glidden,
has nothing to do with third parties, like the public. That is pure first-year weasel-wording and in the words of Nimrod Rhett Barney, not relevant.
The purchase of licensed paint colors includes the right to use the names of the very same team that were used to market the paint to the public.
And, there is absolutely nothing in copyright law or trademark law that limits the use of any purchase to non-commercial uses as so strongly
suggested by Idiot Barney.
Going by the argument promoted by Barney (isn't Barney a widely recognized name for a purple dinosaur?), purchasing Glidden paint that is advertised,
promoted and licensed as the colors of the Dallas Cowboys, and then saying that the purchaser of this licensed paint
cannot refer to the Dallas Cowboys
in any manner, is wholly inconsistent with logic and the law. But it is consistent with the fact that corporate lawyers are, for the most part,
whores. They will promote any argument for any client for that paycheck.
Fair Use of the team names is allowed under trademark law.
The team colors are licensed paint lawfully acquired through purchase from
Glidden, The team logos are licensed fabrics lawfully acquired through purchase from authorized distributors.
Trademark law allows one to use
trademarked names to accurately describe the product. The product does not have to be approved by CAPS members because it was made from
licensed product itself. The CAPS Members are not required to market supplies such as paint and fabrics that can be used to make and sell
items, but they do. The CAPS Members voluntarily released these products into commerce and cannot control their use as long as the public
is not deceived into believing the products made from them are licensed rather than having been made from licensed materials.
The issue of Au-Tomotive Gold Inc. v. Volkswagen of America was raised by CAPS and CLC, not the other way around. The
corporate lawyers for CLC seem to think the very flawed decision by the
Ninth Circus can be bandied about as absolute proof that they are correct.
But the decision is only relevant to the Ninth Circuit and does not apply to the other federal circuits. The decision has been heavily criticized
as wrong and is an example of a court making a determination as to the desired outcome and then twisting their reasoning to fit the outcome
instead of allowing the facts and the law to determine the outcome.
The Ninth Circuit has had a long dislike of the First Sale Doctrine and has done back flips to avoid codifying it in its decisions.
In Au-Tomotive Gold, the plaintiff was using and selling authentic Volkswagen emblems, purchased from the defendant,
and attaching them to license plate holders. No other circuit has found this sort of activity to be infringing.
Au-Tomotive Gold not withstanding, we have already pointed out that the federal courts, including the Supreme Court, have indicated
that some confusion is allowable. "I am not a lawyer yet" Barney sticks to the absolutes that support the positions of his clients from
whom he gets his meal money. So he has been instructed to lie, lie, and then lie some more to adversaries because there is no lying
when it comes to legal maneuvering, is there? Unless perhaps it is about your legal qualifications, Barney-boy?
Now we come to the cease and desist portion of the farce. Nimrod Rhett Barney begins the obligatory statements of
alleged infringement, coupled with the demands that the alleged activity cease by a certain date, followed by the highly unlikely
threat of legal action should the recipient not comply. Just in case Barney does not get it, we will repeat that statements of this
nature give the impression that the letter writer is an attorney acting on behalf of the clients named and making legal conclusions and
legal demands on behalf of the clients named. That Barney-dear, is
practicing law without a license.
Perhaps one Rhett Barney will argue that because he is physically situated in the State of Washington that he not subject to the legal interpretations
of the State of Idaho when it comes to practicing law without a license? According to the Washington Court Rules, Part I GR 24
Definition of the Practice of Law (a) General Definition:
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(1) Giving advice or counsel to others as to their legal rights or the legal rights or responsibilities of others for fees or other consideration.
(2) Selection, drafting, or completion of legal documents or agreements which affect the legal rights of an entity or person(s).
(3) Representation of another entity or person(s) in a court, or in a formal administrative adjudicative proceeding or other formal dispute resolution
process or in an administrative adjudicative proceeding in which legal pleadings are filed or a record is established as the basis for judicial review.
(4) Negotiation of legal rights or responsibilities on behalf of another entity or person(s).
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Barney-baby, this letter violates #1, #2 and #4. Does the Gonzaga School of Law know you are moonlighting as a pseudo-attorney?
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