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From: The Vintage Doctor
Sent: Friday, October 19, 2007 2:08 PM
To: Henslee, Judy
Subject: Re: Trademark Violation Inquiry (Ebay Item #270177033210)

Dear Judy,

Thank you for your clarification! I would like to correct a misconception you may have. I did not "manufacture" anything with a Harley Davidson trademark on it. The shirt used was a lawfully purchased, licensed shirt, from a retail outlet (even if it was only half the shirt). As such, a separate license is not required to use an already lawfully acquired licensed shirt.

The use of a licensed shirt to make fabric items and then to sell them is covered under copyright law under the First Sale Doctrine. In Quality King Distributors, Inc. v. L'Anzaresearch Int'l, Inc (98 F.3d 1109, reversed), Justice Stevens noted for a unanimous court: "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."

The fact that trademarked images appear on the shirt does not make it a trademark case. However, even if this fell within the scope of trademark law, the Fair Use Doctrine allows the fair use of a trademark, or trademarked name, to describe a product. As long as the user does not do anything to create the impression of sponsorship or endorsement. Please take the time to read my auction description; it states that the item for sale is a "top/shirt MADE FROM A licensed Harley Davidson t-shirt", NOT simply a Harley Davidson t-shirt. This clears up any confusion that any person may have about what is listed in the auction and acutely defines what the initial product used was.

In New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992), Judge Kozinski stated:

"one might refer to "the two-time world champions" or "the professional basketball team from Chicago," but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source."

Judge Kozinski further stated:

"Indeed, we may generalize a class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one. Such nominative use of a mark--where the only word reasonably available to describe a particular thing is pressed into service--lies outside the strictures of trademark law: Because it does not implicate the source- identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder. "When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth." Prestonettes, Inc. v. Coty, 264 U.S. 359, 368, 44 S.Ct. 350, 351, 68 L.Ed. 731 (1924) (Holmes, J.),"

New Kids on the Block held that a commercial user is entitled to a nominative fair use defense provided the following three requirements are met: first, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

I have abided by ALL THREE of these points.

Under copyright law I have a right to make and sell these fabric items. Under trademark law I have the right to use the Harley Davidson name and a picture of the item to sell them. I did nothing infringing. Please inform Ebay to immediately reinstate my auctions and remove any black marks against my record.