Tabberone is pronounced tab ber won
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Added October 21, 2007
Last Updated December 28, 2009
We have located two federal courts cases concerning the use of fabric to make items to sell:
In Precious Moments vs La Infantil, 1997, the federal court invoked the first sale doctrine in denying Precious Moments attempts to block the use of its licensed fabrics to make bedding for sale. The 1st Circuit Court said making a fabric item from fabric lacked any originality so it was not copyright infringement. Since then, M&M/Mars, Disney Enterprises, Major League Baseball, United Media (Peanuts fabric), Sanrio (Hello Kitty fabrics), and Debbie Mumm, have been sued when these companies tried to block the eBay sales of items hand-crafted from their licensed fabrics. Every one of them settled rather than risk losing the issue in court.
In Scarves By Vera, Inc. v. American Handbags, Inc, 188 F. Supp. 255 - US: Dist. Court, SD New York 1960, American Handbags was using towels manufactured by Vera to make handbags for sale. On some of these handbags made with plaintiff's towels there could be seen, at the bottom, the name Vera coupled with the figure of a Scarab or Ladybug, all three of which were registered trademarks of Vera. The judge rejected Vera's copyright claims.
It should be noted that in both cases the judges required the defendants to provide disclaimers attached to the items because the items were being sold in stores. The disclaimers were to plainly disavow any relationship between the manufacturer of the item and the trademark owner. This was done so "an ordinary, intelligent purchaser" would not be misled that there was any connection. When selling on-line, a prominent, highly visible and well-placed disclaimer, such as our recommended Tabberone Disclaimer, would likely serve the same purpose and legal need as the disclaimers required by the courts. Precious Moments disclaimer court quotation and Scarves By Vera disclaimer court quotation.
Just to clarify a misconception by some wags. Harley-Davidson is a member of the eBay VeRO Program. It is the VeRO member
Harley-Davidson who orders auctions terminated. While eBay and its moronic under-trained staffers do sometimes pull actions, the great majority
are pulled by the VeRO Members. The auctions described here were attacked, wrongly, by Harley-Davidson and their idiot resident ding-dong,
Judy Henslee who is clueless about IP law.
It's not a matter of protecting one's trademark. It's a matter of misusing the trademark laws to improperly interfere with perfectly legitimate sellers. This is called trademark abuse and it is increasingly becoing a weapon of choice by bottom-feeding corporate lawyers.
|In 2004, we had a run-in with Harley-Davidson Motor Cycles concerning a pillow we had listed on eBay. We had purchased a Harley-Davidson Motor Cycles bandana from a Harley-Davidson Motor Cycles dealer in Denver and made a pillow out it. We were emailed by Harley-Davidson Motor Cycles inquiring about the source of the fabric since Harley-Davidson Motor Cycles had never authorized to production or sale of any fabric bearing the trademarks of Harley-Davidson Motor Cycles. Once we told them, they told us OK. We considered that to be the appropriate manner in which a trademark holder should conduct themselves when in doubt.|
|We regret to announce that as of October 2007, Harley-Davidson and its trademark manager, Judy Henslee, have crossed over to the Dark Side. They have joined the many and, in our never-to-be-humble opinion, deliberately unethical companies and law firms engaged in controlling the secondary market. By perverting the wording of trademark and copyright law, they spend their happy time terminating perfectly lawful eBay auctions along with the many auctions listing counterfeits. With their logic they don't have to pay any attention to reality or carefully examine the auctions. Another really good example of why there needs to be civil penalties for companies and company employees who wrongly use trademark and copyright laws to hurt innocent sellers.|
An eBay seller named The Vintage Doctor had an auction terminated on orders from Judy Henslee,
trademark manager of Harley-Davidson. Judy Henslee's first email to The Vintage Doctor was rather confusing especially since it did not appear that
Judy Henslee wasn't talking about the same auction. Judy. Judy. Judy rattled on about things that did not apply. Maybe she had not had enough coffee.
The Vintage Doctor fired back another inquiry based upon the first email, asking for clarification.
After figuring out what auction was at issue, Judy Henslee, trademark manager of Harley-Davidson, replied to The Vintage Doctor in an email October 19, 2007:
I'm sorry for the confusion. I realize now that I was confusing your shirt with what another seller was offering.
Now there is a really definitive answer for you. Judy, how about just a titch more detail in the future? That is, if it doesn't cut into your coffee break time.
How about something we could all understand? FYI Judy - the auction listing stated that the item was
"made from a LICENSED Harley Davidson Motor Cycles t-shirt". So with that in mind, why not tell The Vintage Doctor what makes you,
Judy Henslee, trademark manager of Harley-Davidson, believe that she started with "an unauthorized shirt"?
Or were you just lying through your teeth and could not make up a better lie than that?
The Vintage Doctor sent another email citing legal arguments supporting her position that she had done nothing wrong. We agree with her arguments. Under copyright and trademark law she did nothing wrong. Granted, we think her title could have been a bit more specific and she could have had a better disclaimer, but these are not the real issues here. Her right to use a Harley-Davidson t-shirt and soup it up and then sell it, is legal. In Scarves By Vera, Inc. v. American Handbags, Inc, the handbags being made from towels sold by Vera had Vera's well-known trademarked logo on them and the federal court said it was perfectly legal. Where is your legal citation stating otherwise?
|So, what happens, you ask? Judy Henslee, trademark manager of Harley-Davidson, fires back a snotty and mistake-laden email in which she admits one very telling point, that she is not a lawyer. She starts with a completely off-base accusation claiming that Sarah (The Vintage Doctor) was practicing law without a license . It's apparent that Judy Henslee, trademark manager of Harley-Davidson, isn't a lawyer but she qualifies as a yo-yo because even an idiot knows you don't have to be a lawyer (or be accused of practicing law without a license) to defend yourself. Why would she say something so insipid? Is it your superiority complex or just bad manners, Judy? Perhaps you've been sniffing too many Harley tailpipes?|
|Judy Henslee, herself not a lawyer, then takes it upon herself to lecture Sarah about the law, incorrectly:|
In the short version, it is Harley-Davidson's position that you cannot legally do what you are trying to do. For your information, this is not a copyright matter. Trademarks and copyrights are two very different forms of intellectual property governed by two completely different bodies of law. The First Sale principle is relevant only to the distribution of goods, not to the material transformation of goods, which is a completely different issue. Since the shirt you bought no longer exists in the form in which Harley-Davidson approved, this principle does not apply. Similarly, this is not a fair use issue. Although it is our view that your listing title was, in fact, misdescriptive, deceptive, and infringing, the matter at hand is not how the article is described, but the article itself, and fair use has nothing to do with actual goods.
|But Sarah can legally do what she was trying to do and we, unlike snotty Judy Henslee, we cite court cases that support our position. The first sale "principle" was cited by the courts in both federal cases we quote and trademarks were at issue as was the transformation of goods. So Judy, you are lying and you are not doing it well.|
|But, we digress. There was no "material transformation of goods" as claimed by Judy Henslee, trademark manager of Harley-Davidson. The Vintage Doctor used the back of a licensed Harley-Davidson t-shirt for the front of her shirt. The only "goods" at question is the back of the Harley-Davidson t-shirt which has not been altered. The image was not transformed. Judy attempts to confuse the facts by falsely alleging that cutting up the t-shirt removed it from Harley-Davidson's approval and therefore removes it from standard trademark law. Huh? How? Based upon your argument Judy, buying a Ford truck and then repainting it another color would not only void the warranty but Ford could forever block you from ever again calling it a Ford. It does not compute. Nor is there a single federal case to support your contention.|
But then, does it have to compute? Not in la-la land where Judy Henslee, trademark manager of Harley-Davidson, resides. You see,
companies that have crossed over to the Dark Side have their own rules and own interpretation of the trademark and
copyright laws, as do their corporate lawyers. And, if you don't like it, then get yourself a lawyer and take the matter into
court. Right. The Dark Side Bullies know the small business they attack can't afford to fight back. So the Bullies
get away with their tactics.
For someone who claims not to be a lawyer, Judy Henslee, trademark manager of Harley-Davidson, certainly tosses out a lot of baseless arguments. She remains "stuck on stupid" in her email dated October 20, 2007. She insists that the issue is a trademark issue because the t-shirt bears a "federally-registered" trademark. But Judy, Judy, Judy, you miss the point. For it to be a trademark infringement issue, The Vintage Doctor would have had to either counterfeit the Harley-Davidson logo in question or have had to attach a logo to the t-shirt to give the public the false impression it had been manufactured by Harley-Davidson. And you are wrong; the t-shirt is protected by copyright law. The first sale doctrine does apply to the sale and subsequent use of this t-shirt. And had you bothered to look at any of the legal opinions sent to you, you would have noticed that the first sale doctrine was specifically quoted by a unanimous Supreme Court in Quality King Distributors, Inc. v. L'Anzaresearch Int'l concerning the importation of trademarked goods. Perhaps it is YOU, Judy Henslee, trademark manager of Harley-Davidson, who are "practicing law without a clue"? This most certainly is a copyright case, you nimrod.
In her email dated her email dated October 20, 2007, Judy goes on in paragraph 3 to admit that Harley-Davidson may not be able to control their further distribution in their original state but then contradicts that with we most certainly can control its appearance and quality for as long as it continues to bear our trademarks. That's interesting. Just how, short of using storm trooper tactics, does Harley-Davidson intend to make sure that every owner of every Harley-Davidson product doesn't alter what they bought? Just what exactly is the "legally-entitled control" that Harley-Davidson has over a product once it has been sold? Does any adult in your office proof-read what you send out? Does Harley-Davidson believe there is a trademark police-state where you can control what people do? And what if they are repeat offenders? Run them over with a Fat-Boy? That will teach them.
Then Judy dissolves into emoting. She goes into a long rant about who knows what (the caffeine must have worn off). And rants, and rants. Then she accuses The Vintage Doctor of "applying our trademark to a product of your own creation", which is not what she did. She took a t-shirt bearing the Harley-Davidson logo and manufactured another shirt using the unaltered image. That is not "applying our trademark", that is using a design that incorporates the trademark. There is a difference.
In her second email dated October 20, 2007, Judy glibly says The Vintage Doctor "simply don't want to understand" the issues. No, Judy. She just doesn't understand the far-out position you've assumed. You're the one who either doesn't understand or you are simply spouting the unethical corporate garbage and improperly terminating lawful eBay auctions. This is supported by Judy's assertion that the lawyers for Harley-Davidson that is "well-settled in courts" that disclaimers are generally ineffective. Huh? We notice you did not cite any cases because there are none to support this really flimsy claim. Who are your lawyers? Weil, Screu, Yew & Moore?
For the record, our attorneys advise that it has been well-settled in courts that disclaimers posted at the point of sale are not effective in preventing consumer confusion.
Your lawyers ineptly quote from Charles of the Ritz
when you say "disclaimers posted at the point of sale are not effective in preventing consumer confusion." We had
deconstructed this misapplied lie
used by corporate lawyers who are attempting to discredit disclaimers. The Second Court of Appeals
soundly maintained in Charles of the Ritz
that the "district court judge was well within his discretion in requiring that the disclaimer be prominent and also indicate that the
two companies were competitors". Does this sound like it is "well-settled in courts" to you? The judge in
Precious Moments acknowledged the disclaimers while ordering,
"In addition to being plainly visible 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.". Again, does this sound like it is
"well-settled in courts" to you? Notice how we quote trademark and copyright law while all you do is whine?
And, to paraphrase you, Judy, how would you like it if some self-righteous, uninformed jerk, falsely terminated perfectly legal auctions
of your and then gave you rambling and unprofessional answers while admitting she didn't know anything on the subject? Look in the
mirror, sweetie. That's you.
We also go into great detail about diclaimers citing numerous court cases click here
And, secondary confusion is the last refuge of scoundrels. It's a last gasp toss-in. Clutch away, Judy. except, Judy dearest, it's called subsequent confusion in the legal world and that doesn't apply here. Perhaps you meant secondary meaning but, alas, Judy dearest, that also doesn't apply here. Do you have something else about which you wish to whine? Because that's all you're doing. You present no case law to back your flimsy arguments. Why not?
In her third email dated October 20, 2007, Judy loses it again. Fair use doesn't just apply to "only to text trademarks". If a legitimate picture of the product being sold includes a trademarked logo, that is fair use. But that doesn't fit the fine line that you want others to believe, does it? And where in the hell did you dredge up "Trademarks are adjectives"? A trademark is an object, and therefore a noun. Trademark cannot be descriptors, as you claim, they are described. ("A large tree" contains the object "tree" and the adjective "large"). Are you practicing teaching English without a teacher's certification?
Then Judy sadly goes on to claim "a sign can't be sold as a clock", referring to the use of a sign as the face of a clock. Again, wrong. And, if anyone took you to court on this, you would lose. The real issue would not be the use of the Harley-Davidson sign as a clock face, over which there is no law prohibiting it being done, but whether or not the resulting clock was represented to the public as being a licensed Harley-Davidson product. You falsely claim the former while in fact the issue is the latter.
Oh, and Judy dearest, before you advance to the next stage of phony defenses, which is that you terminated the auction to protect your licensees; been there, heard that, it's crap.
Harley-Davidson Motor Cycles, with and through their pathetic trademark manager Judy Henslee, become a Tabberone "Because We Say So" company with double dodo clusters.
We also find this hilarious. If you try to visit www.harley-davidson-sucks.com, you will find it takes you right to
the regular Harley-Davidson web site. It appears Harley-Davidson snapped up the web address before dissenters could. Hot damn! This
domain name, harley-davidson-sucks.com, is owned by HD in Michigan.
Here's a challenge for you, Judy. If you're really serious about getting Harley-Davidson fakes off of eBay (fakes being counterfeits and items falsely described as Harley-Davidson), we can send you several hundred auctions in less than a day. If you were to spend your time REALLY going after Harley-Davidson fakes on eBay, you wouldn't have time for these small legitimate auctions. eBay seller phun4you had at least eight high-end kid's toys he was falsely calling Harley-Davidson on October 22, 2007. These aren't difficult to locate. But they might interfere with you getting your nails done or perhaps working on your tan. We'll make you an offer: you pay us 50 cents for every fake auction we send you to shut down. How about it, Judy?
|And, for your "material transformation of goods" lame excuse, we hereby create a new award called the PITOOYA, or the "Pulled IT Out Of Your Ass" phony legal excuse award (pronounced puh_too_ya). Much like an Academy Award is called an Oscar, we're going to affectionately call this award a "Henslee".|
|And we also take exception to the lies and misconceptions presented on the Harley Davidson About Me Page that Harley posted as an eBay VeRO member.|
In an effort to provide a balanced view, we make the following offer to anyone who feels they have been wrongly accused on this web site.
If you, or your company, have been referenced on these pages, and you would like the chance to post a rebuttal, we will post your rebuttal (provided it is in good taste) so others can read it. The rebuttal must be submitted in a format that can easily be converted into HTML. We reserve the right to alter the rebuttal to make it more readable. However, we will not alter the content (unless there is offensive material to be removed). We also reserve the right to comment on any rebuttal received. Emails protesting the content of this web site may be treated as rebuttals by us at our discretion.
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