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"The only thing necessary for the triumph of evil is for good men to do nothing"
Edmund Burke


On 10/20/07, Henslee, Judy (Judy.Henslee@harley-davidson.com) wrote:

Sarah:

This conversation is fast becoming unproductive. Literally every case citing in your most recent message comes from copyright law. The problem is, there is NO copyright aspect to this matter, so please stop trying to beat me over the head with copyright case law. Just as you can't use a water-based fire extinguisher on an electrical fire, you cannot defend yourself in a trademark matter by using copyright law. The T-shirt you purchased was not copyrighted. It bears federally-registered trademarks, and there is no such legal animal as "derivative works" in trademark law. You are entitled to represent yourself, but then you need to research the appropriate body of law.

Trademark law governs the use of trademarks on goods offered for sale in commerce. Among other things, trademark law says that one of the most basic rights of a trademark owner is to determine for itself what kinds of products will bear its trademarks; what those products will look like; and by whom they are made, using what materials and methods, and the quality of them. In fact, this is more than a right for trademark owners. It's an outright obligation. Trademark owners who fail to exercise complete quality control over products offered in commerce and bearing their trademarks can be deemed to have abandoned their rights. Harley-Davidson has no intention of allowing that to happen.

So, Harley-Davidson decided to put its trademark on T-shirts. As is our right and obligation, we dictate the material used in their construction; we dictate the construction methods used; and we inspect samples of the products before we permit them to go into production. We also inspect the factories in which they are made to ensure that all applicable laws, including human rights laws, are being conformed with. Once we sell them, we may not be able to control their further distribution in their original state, but we most certainly can control its appearance and quality for as long as it continues to bear our trademarks. Third parties are not entitled to change its nature (type of product and appearance) or its overall quality (by the addition of materials unknown to and unapproved by us, added in a manner and using methods of which we have no knowledge and over which we have had none of our legally-entitled control) while retaining the branded nature of the article. In other words, if you want to cut up a Harley-Davidson T-shirt and use any part of it that does NOT have our trademark on it as material in the construction of another article to sell, fine. But, when you keep our gigantic logo front and center on your product, you forfeit that right.

Trademarks are not mere decorations. Their primary legal function is to identify the source of the products on which they appear. Baldly stated, your shirt is NOT our product, and we don't wish it to be perceived as our product, which is inevitable. Anyone seeing your creation will NOT think "Sarah made that shirt." They will think "Harley-Davidson made that shirt," which is completely false. It may be true that once upon a time a PART of your garment came from a Harley-Davidson® shirt, but your garment is NOT a Harley-Davidson® product, which is why keeping our logo on it is deceptive and confusing, two things trademark law is designed to prevent. That logo on the front of what you've made speaks for itself, and it announces loudly and clearly that what you're selling is our product, in its entirety.

Since you obviously take pride in what you do, I would ask that you fairly and honest ask yourself the question at the end of this scenario: Say that your dream comes true and SARAH becomes an internationally-famous name for clothing because you've spent decades and hundreds of millions of dollars advertising your products and raising the recognition level of your name. Say also that you've gained a reputation (because trademark law is also about reputation) for products of a very particular quality level. You're very fussy about fabric and trimmings, you insist on seams being finished in a very particular way, and you've made a conscious decision that you will not put your now-internationally-famous name on certain styles because they just don't reflect well on you or add value to your brand. Now say that someone else, who hasn't spent five minutes or five dollars contributing to your success, comes along and says, "I think I can do a much better job than Sarah of designing Sarah's clothing. So, I'm going to cut up her stuff, make it look completely different (according to my own taste, of course; not Sarah's), throw away parts of it and add completely different materials (that Sarah may or may not approve of, but who cares?) using completely different construction methods (Sarah likes overcast seams, but I like that homemade look of unfinished seams with little threads coming off of them). Oh, and as soon as I get any momentum going, I'm going to hire illegal immigrants to make my stuff and pay them starvation wages to work in a dangerous fire trap, because that way I can maximize my profits. And, when my piece is done, it's going to have SARAH in seven-inch letters across the front of it so that everyone who sees it will think it's Sarah's product, so I'll be able to get more money for it.

Here's the question I want you to answer fairly and honestly: how would you feel about that?

Now, before you go getting all insulted because you think I'm saying you make lousy stuff using cheap materials and illegal labor, I'm NOT. The whole point is this: You would have no idea whatsoever how good or bad the products I've described above are or how they're made, because this is all going on behind your back. It's your name and your reputation, and someone else is playing fast and loose with it completely outside your knowledge and control, not unlike what happens in identity theft. Not a very desirable situation, is it? Especially when you do find out, try to put a stop to it, and are told it's none of your business what I do with your name and reputation. Oh, and don't forget that if you DON'T put a stop to it, the U.S. Patent and Trademark Office could eventually say that you've abandoned all rights in your name. Now everyone in the known universe who wants to make clothing can put your name on it because it no longer means anything, and all the years and millions of dollars you've spent building your brand up go down the toilet. So, I'll ask you again: how would you feel about it?

As I think I've said before, you, as a clothing designer, have an entire universe of fabrics from which to choose for your creations. So, answer this question honestly as well: Why would you insist on using something with someone else's name on it? Why, instead of making a name for yourself, are you relying on someone else's name to sell your stuff? Has Harley-Davidson hired you -- or even asked you -- to redesign its T-shirts? I don't believe so. So, where on earth do you get the idea that it's a God-given (or law-given) right for you to do so? This is not dissimilar to the people who buy our licensed tin signs to use as the faces of neon clocks they build themselves. They know a "Harley-Davidson clock" will sell more easily and for a higher price than if they create something original, and hey ... they bought the signs legally. What do they care if the cheap electrical components they use burn down a customer's house? The customer will just think it's Harley-Davidson's fault! (This actually happened, by the way.)

You are, after a fashion, applying our trademark to a product of your own creation and that you intend to sell. That's called "trademark use in commerce." If you really want to resolve this issue, then research that.

With respect to your intention to continue listing items like this on eBay, I can only reiterate what I told you before: you put them up, and we'll take them down. eBay cannot and will not interfere in that, because it's entire future and well-being hinges on them being able to claim that they CANNOT make these determinations, which is the only way they've been able to fend off the many lawsuits brought against them for the sale of counterfeits on their site.

Judy Henslee