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Subj: Unauthorized Use of NFL Trademarks Date: 7/10/2003 From: scrungee1 To: DaniasA@NFL.com
To: NFL PROPERTIES LLC Re: terminated auctions I would like to correct a misconception you may have. I did not "manufacture" anything with an NFL trademark on it. The fabric used was lawfully purchased, licensed fabric, from a retail outlet. A cursory examination of the items pictured being offered at auction would have revealed that to you. A license is not required to use lawfully acquired licensed fabric. The use of licensed fabric to make fabric items and then to sell them is covered under copyright law under the First Sale Doctrine. You might want to reference Precious Moments vs La Infantil, 1997, (D.P.R.) 971 F.Supp. 66, where the First Circuit Court specifically rejected the copyright claim where La Infantil was being accused with unauthorized use of copyrighted fabric, saying that “bedding items manufactured with lawfully acquired, authentic fabric with copyrighted design were not infringing derivative works.” In Lee v. Deck the Walls Inc., 925 F.Supp. 576 (N.D.Ill. 1996), the court in Lee rejected the holding of Mirage Editions and Munoz, observing that to be an infringing derivative work an object must be original enough that, if lawful, it would qualify for protection as a derivative work. The Lee court cited Woods v. Bourne Co., 60 F.3d 978 (2nd Cir. 1995), for the rule that to be a derivative work a thing must be "independently copyrightable." The court found no "creative spark" in the "mundane act of placing notecards onto a ceramic tile." In Lee v. Deck the Walls Inc, The court noted that its conclusion hinged on whether the alleged new “work” contains sufficient originality, as required by the Constitution and 1976 Copyright Act, for it merit “derivative work” status. (Id. at 580-81, 40 U.S.P.Q.2d at 1116-17) To this end, the court was persuaded that the Copyright Office refused the defendant’s copyright application for the ceramic tile mounted note card because the “work does not contain any original artistic expression … .” ( Id. at 581, 40 U.S.P.Q.2d at 1117 (quoting the Copyright Office’s rejection of defendant’s copyright application)) 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 terminology "unauthorized use" comes from the Lanham Act and refers to trademark issues. This is a copyright issue. The Second Circuit Court of Appeals has stated in EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos, 228 F.3d 56 (2d Cir. 2000): “The Supreme Court has stressed that there are "fundamental differences between copyright law and trademark law." Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 439 n.19 (1984). Copyright law has its roots in the Constitution. U.S. Const. art. I, sect. 8 (8). It protects "fruits of intellectual labor," such as literary or dramatic works, musical compositions, motion pictures, sound recordings, architectural works, and other similar original works of authorship. Trade-Mark Cases, 100 U.S. 82, 94 (1879); see 17 U.S.C. §102. A trademark, by way of contrast, grows out of the adoption and use of a distinctive symbol by the party using it. Its function "is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his." United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918). The fact that trademarked images appear on the fabric 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. 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. You will note, that at the immediate end of the listing was a disclaimer that notified any potential purchaser that "The Doo Rags depicting the (NFL team name) logos offered for sale and sold on this site are not authorized, sponsored or licensed by the NFL. (NFL team name) and all related characters and elements are either registered trademarks and service marks or trademarks and service marks of the NFL in the United States and foreign countries. (NFL team name) character designs and elements All rights reserved." To be considered effective, a disclaimer must be conspicuous, easy to read, and easy to understand. My disclaimer meets all of these requirements. Under copyright law I have a right to make and sell these fabric items. Under trademark law I have the right to use the team names 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. Sincerely yours, Sue |