You want me to sell WHAT?

October 13, 2006 11:43 AM

Can a retail store sell products carrying clearly recognisable logos from other corporations, if those logos are not copied but taken from existing products?

Disclaimer: All examples here are hypothetical and not involved in the real situation.

I work for a retail store that is importing products from an overseas country. These products carry clearly recognisable logos from multinational corporations. BUT, they are not manufacturing the logo, they are using logos from existing products. Hypothetical example: a backpack with stitched-on Nike logos TAKEN FROM ACTUAL NIKE SHOES. Note that the logo is not being copied, it comes from an existing source. The country where these products are coming from is a place where re-use of products is part of the culture. The products involved are not any that we would ever normally sell in their original form (i.e. from this hypothetical example we don't sell Nike shoes).

I see this as a massive and unpleasant lawsuit waiting to happen. The powers that be claim that "we are not copying the brand marks, we are only selling products that carry the brand marks" so it's legally ok. I'm not sure if that is their opinion or if it comes from a lawyer. I have asked for clarification and strongly suggested that they seek legal advice before putting these products out for sale, if they have not already done so.

Any copyright experts out there who can tell me whether I should avoid selling these?

posted by valleys to law & government (19 comments total)

Trademark, not copyright. And Nike does have branded backpacks.

Consider this: imagine a cola bottler who removed the labels from empty bottles of Pepsi and glued them onto their own bottles. Would that be kosher? I suspect not.
posted by solid-one-love at 11:48 AM on October 13, 2006

There is no functional schism between "manufacturing" or "copying" the logo and "using" the logo, even if it is materially "acquired" through products manufactured by the license holders. Without their consent, you can't employ it or anything remotely resembling it, even if it's jacked off their merchandise. Your initial assessment is correct, and if I were you it may lead me to question their judgement in (all) other areas of business relationships.
posted by prostyle at 11:55 AM on October 13, 2006

NB: I am most definitely not a lawyer.

Whether you personally should avoid selling them? Good question -- since you know they're counterfeit (and no amount of semantic jigglepokery by your seemingly witless higher-ups will change that fact), I can't help but think that by doing so you'd be making yourself an accessory to distribution of counterfeit merchandise.
posted by Doofus Magoo at 11:56 AM on October 13, 2006

Thanks for the correction solid-one-love.

The corporations in question don't manufacture products similar to what is being imported. Backpack maybe wasn't the best example. Think of something completely unrelated to sports, and that Nike doesn't manufacture.... how about a wastebasket with logos, again taken from Nike shoes, stuck on the outside. Still seems very wrong to me.

To my mind, if it looks like it's produced by the corporation in question (which the products they're importing most certainly do), then you're in questionable legal areas. Just because such practices are accepted in the country where they are produced, and we want to help 'poor people' in those countries, doesn't make it acceptable to sell them here.
posted by valleys at 12:00 PM on October 13, 2006

Are they counterfeit product (e.g. pretending to be a Nike backpack) or pieces of craft work (e.g. they have a collage of things sewn on them, including the Nike logo, but no-one would think it's a Nike product)?

Not that it probably makes a difference in whether the store is likely to get sued, but it would make a difference in whether I was willing to continue working there.
posted by winston at 12:01 PM on October 13, 2006

winston - pieces of craft work is definitely the intent, but instead of a collage they have the logo in question many times. Think of my hypothetical wastebasket with 50 Nike logos cut off shoes and stuck on in a pattern. Nike would never produce something like that, so it's not an intentional counterfeit product. It is more 'art' than a commercial ripoff.

I probably can refuse to sell them without too much fallout ... at least until a clear legal opinion is sought by TPTB.
posted by valleys at 12:08 PM on October 13, 2006

I've seen lots of art made out of sliced up beer or soda cans. Think: Coke cans sliced up and folded into toy airplanes with moving parts. I don't think there's any intellectual property issue there.
posted by croutonsupafreak at 12:32 PM on October 13, 2006

Might it be possible that the manufacturers of these items actually have a license to apply the logos in this way? If the culture of that nation is to re-use items likr this, it would certainly make good marketing sense to license this form of logo re-use. At least I would approve of it if I were in Nike's marketing department. And, lord knows, Nike (among others) run umpteen different branding programs all over the world.

Are there any tags on these items that may have the appropriate trademark disclaimer?
posted by Thorzdad at 12:32 PM on October 13, 2006

Isn't the problem in that you can't sell these things, but they're perfectly legal to own? For example, if you drive a Ford but take a Mercedes-Benz star and stuck it on, you're not breaking the law, are you? If you then try to sell the car as a Mercedes-Benz, you are.
posted by wackybrit at 12:40 PM on October 13, 2006

IANAL, but as I understand it the key question that a court would ponder in determining whether trademark infringement was taking place is "Is likely to confuse a consumer into thinking the product is actually made by the company whose trademark is being used?"

A Nike logo along with many other corporate logos on a wastebasket is probably not likely to confuse consumers into thinking it's a Nike wastebasket.

Many copies of only the Nike logo on the wastebasket? That's a bit more gray, I would think. I can't say one way or the other.

In any case, I don't think taking a physical logo off of legitimate products would give you any more protection than simply making the logo yourself and putting it on there.
posted by DevilsAdvocate at 12:48 PM on October 13, 2006

I used to work for a company that vigorously defended it's logo and trademarks. I am not a lawyer although this type of thing came up in my old business routinely. I can all but gaurantee the above senerio would result in a trademark violation.
posted by orlin at 1:18 PM on October 13, 2006

The first products we produced were tote bags made from Capri-Sonne drink pouches, a product manufactured in 21 countries with headquarters in Germany. I sent the Capri-Sonne company some samples and a proposal for an extensive recycling program featuring their product waste. Met with silence, I sent more samples and letters. Nine months later they threatened to sue me for 'profiteering' from their trademark....
posted by R. Mutt at 2:16 PM on October 13, 2006

R. Mutt - thanks so much for that link. It's interesting and VERY relevant. I'll send it on to TPTB.
posted by valleys at 2:26 PM on October 13, 2006

I should add that I have a pencil case from the XsProject (source of the above quote) that a friend bought in NYC and gave to me as a present. Its made of recycled toothpaste tubes recovered in Jakarta. Its wonderful. I would note that none of the tubes seem to be from the big western corporate brands.
posted by R. Mutt at 2:29 PM on October 13, 2006

DevilsAdvocate has it part right: if the use is likely to confuse consumers into thinking that the trademark owner is affiliated with the goods, then the use is infringing. However, it's also possible to infringe through what is known as trademark dilution, which essentially happens when a use that someone would readily realize is not related to the trademark holder nevertheless helps to diminish the capacity of the mark to identify the trademark owner's goods. So I think a court would be quite unlikely to hold that your use is permissible. In any event, if the owners did decide to sue, litigation would be expensive for the store.

You are likely not personally at risk: only the store itself (or perhaps the importer or manufacturer) would be liable civilly. The criminal laws that apply to trademark infringement are for making or selling counterfeit goods, which these are not.

(I am a lawyer and I have practiced trademark law. I do not represent you and this is not legal advice. Consult competent counsel.)
posted by raf at 2:50 PM on October 13, 2006

A related question on AskMe
posted by RobotHero at 3:29 PM on October 13, 2006

The Xsproject things that I mentioned look like this.
posted by R. Mutt at 3:39 PM on October 13, 2006

That's a cool bag. The differences in my situation are:
a) the product in question is a VERY major international corporation that 100% of people coming into our store would recognise.
b) the article we're being asked to sell is not made from the product packaging, but decorated with it. Think product logox100.

And raf - in my opinion, outside the context of our store (man, I'm trying hard not to get too specific here...) somebody seeing the article in question would think it was somehow affiliated with the 'major international corporation' mentioned in my point a) above. Thanks for the 'risk assessment'. I don't own the store, but I am primarily responsible for it. I'm not going to risk it's survival by selling this product.

We're part of a national group of stores. They'll send us one sample then we're supposed to order more. My feeling is, until HQ gives us a letter from a lawyer saying it's ok, we'll take the one sample, hide it or give it away to a staff member, and not order any more.
posted by valleys at 4:55 PM on October 13, 2006

raf basically has it. The key legal phrase is "trade dress". If there's a resonable chance someone could mistake the products for offical products, there's grounds for a lawsuit right there (varies by jurisdiction of course).
posted by cillit bang at 6:06 PM on October 13, 2006