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From: cruisesbyjoe Just wanted to see what you think and how you would respond to this letter. Any advise would be appreciated. Joe (Sharon"s husband)
----- Original Message -----
From: "Day, Bryan" bryan.day@mlb.com Dear Mr. Ogni, MLBP stands firmly behind its March 3, 2003 letter to your attention. First of all, your prior sale of unlicensed products featuring Major League Baseball-related intellectual property assets (the "MLB Marks") violated MLBP's rights. In addition, your plan to re-list your infringing products on ebay.com ("eBay") will further violate MLBP's intellectual property rights. I. Trademark Infringement A. Past Infringement There is no doubt that your offering for sale and sale of curtains and dog collar covers featuring MLB Marks (the "products") without authorization violated trademark law. As noted in your very own research materials, the appropriate test for trademark infringement is the likelihood of consumer confusion. In the past you used eBay item titles that featured MLB Marks such as "MLB Baltimore Orioles Curtain Valance" and "Boston Red Sox New Dog Collar Cover." Furthermore, in your prior eBay item descriptions you did not include any type of disclaimer. Your use of MLB Marks in item titles and lack of a disclaimer in item descriptions, when combined with the fact that your products featured no graphics other than MLB Marks, certainly created consumer confusion and thus constituted trademark infringement. Furthermore, your previous infringements are not protected by a "fair use" defense since your sale of the products incorrectly suggested some type of sponsorship or endorsement by MLBP. B. Re-listing You have indicated that you plan on re-listing your products and will use the following disclaimer in the item description: "This is not a licensed MLB product. It is however crafted from licensed MLB fabric. JOECRUISE52 is not affiliated with MLB. JOECRUISE52 is not affiliated with the manufacturer of this fabric or any other fabrics used unless otherwise stated." Your use of such a disclaimer would not exempt you from liability for trademark infringement. eBay users who view the pictures or titles associated with the products may click through to one of your item descriptions based on the reasonable assumption that your products are in fact official Major League Baseball ("MLB") products. Were you to insert such a disclaimer into your item descriptions it would become apparent to most consumers that your product is not licensed. Nevertheless, consumers looking for products featuring MLB Marks may decide to purchase your product anyway (despite knowing it is not an official MLB product). Thus, by attracting customers through the use of MLB Marks in the pictures and/or titles associated with your products you would have the chance to advertise your product to a consumer base that would not have existed but for your unauthorized use of the MLB Marks. By averting sales from MLBP and injuring MLBP's business goodwill, under the doctrine of "initial interest confusion" you would still be liable for trademark infringement despite the presence of a disclaimer. It is also important to remember that your disclaimer would not run with the products themselves. If, for example, observers were to see a dog wearing one of your dog collar covers, those observers would reasonably assume that the dog collar cover was an official MLB product. If your dog collar covers are poorly made such observers might think less of MLB generally and become less inclined to purchase official MLB products in the future. As a result, MLBP's goodwill would be injured by your products, and you would be liable to MLBP under trademark law's "post-sale confusion" doctrine. II. Copyright Infringement A. First Sale Doctrine The "first sale" doctrine, 17 U.S.C. § 109(a), provides that when a copyright owner parts with the title to a particular copy of his copyrighted work he divests himself of his exclusive right to vend that particular copy. Applied to the facts at hand, when MLBP sold its copyright-protected fabric to you it surrendered its authority over the future sale of that particular roll of fabric. Accordingly, if you were to attempt to sell this roll of licensed fabric on eBay, under the first sale doctrine we would have no grounds to object. However, this is not what you have done. As discussed below, your products are derivative works and MLBP retains the exclusive right to create and sell derivative works of its copyright. B. Derivative Work Analysis Under copyright law the owner of a copyright is given the exclusive right to copy the protected work as well as prepare derivative works that are based upon the protected work. 17 U.S.C. § 101 states that the work that results after a preexisting work is "recast, transformed or adapted" is considered a derivative work. Your creation of the products from MLBP's copyright-protected fabric certainly recast, transformed or adapted the fabric by incorporating that fabric into the products. See Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F. 2d 1341. Even under those rare cases which require that a derivative work be an "original work of authorship," by having mutilated MLBP's copyright-protected fabric in order to manufacture novel products you have created derivative works that are sufficiently original. III. Next Steps Based on our analysis of this matter, MLBP once again demands that you cease and desist from manufacturing, offering for sale, selling, advertising, marketing and/or promoting any unauthorized products bearing MLB Marks. We also demand that you immediately disclose in writing the extent of your sales of these infringing products, including the number of goods sold and the prices at which they were sold, the remaining inventory of the infringing merchandise, and any other information regarding your unauthorized commercial use of the MLB Marks. We ask that we receive written assurance by no later than 5 p.m., New York time, April 1, 2003 that you will comply with these demands. We would like to resolve this matter amicably, but in the absence of a favorable, timely response, we are prepared to take all steps necessary to preserve and protect our rights without further notice to you. The statement of facts set forth in this e-mail is not intended to be, nor shall it be deemed to be, a full and complete statement of the facts in this matter. This e-mail is not intended to be a complete statement of our rights and shall not be construed as a waiver of any legal or equitable rights or remedies, all of which are expressly reserved. Should you have any questions, please do not hesitate to contact me. Sincerely,
Bryan Day |