Crafty Girl deals with Box Store

December 5, 2007 6:52 PM

I've got a product that has attracted the attention of the big boys - how do I make sure they don't rip me off?

Recently I was contacted by the buyer for a national chain of clothing/interior doo-dads stores. They are interested in buying my product for a test run, and then perhaps buying the rights in the future for the product to be produced elsewhere. They want a sample. I would like to send them said sample. BUT...they have a reputation for blatantly ripping off artists and having their work copied by Chinese manufacturers with no compensation. Do I need a copyright statement? I don't want a miss a potential opportunity, but also don't want to get ripped off. How do I protect myself?

posted by ikahime to work & money (20 comments total)

Are you talking about Urban Outfitters? They seem to have this reputation. I'm no expert but I'd try to document as much of your contact as possible-- archive letters, emails, etc.
posted by sharkfu at 6:57 PM on December 5, 2007

Force them to sign a release document. Have it drawn up by a lawyer in Intellectual Prop Law. w/ Force Arb clause and select an arbiter that will be favorable to you. If they refuse tell them there past reputation means this is the only way you can do business.
posted by Rubbstone at 7:03 PM on December 5, 2007

You need a lawyer.
posted by winston at 7:04 PM on December 5, 2007 [2 favorites]

Seconding winston, you absolutely need to talk to a lawyer experienced in this field.
posted by Dasein at 7:20 PM on December 5, 2007

You need a patent, not a copyright. The fact that you don't know the difference means you really need a lawyer.
posted by o0o0o at 7:34 PM on December 5, 2007

As many will say, more than a copyright statement or more likely a patent you really need a lawyer. Look at it this way; if your work is starting to attract the eyes of major players then you have to pony up and arm yourself or, yes, you will get ripped off for being dumb. Understand that I am not saying you are. You, unlike many others, had the good sense to start asking for opinions.
posted by bkeene12 at 7:36 PM on December 5, 2007

Lawyer up. Now.
posted by The World Famous at 7:40 PM on December 5, 2007

The other way to avoid being ripped off is to not get into bed with them in the first place.

If this company behaves the way you say they do, why would you want to help them make more money?
posted by box at 7:43 PM on December 5, 2007

Are you talking about Urban Outfitters?

Hopefully redundant advice, but it's probably best if you don't answer that question on a public internet forum with slightly less than complimentary implications in your post. Even someone suggesting it was a bit off, to be honest. All linking the correct name to this question does is raise the chances of a random search linking the OP and the impending deal and their opinion of the company.

Hmmm. Not so good for their impending Big Boys deal, methinks.
posted by Brockles at 7:48 PM on December 5, 2007

Letting my wife answer this. She was a rep to a big box store who rips off most of what is placed there (it is an accepted fact of business - the companies just come out with new product).

...Hello, my advice to you is to not pass up this opportunity and to arm yourself with a letter of non-compete, asking the company to agree not to knock you off for at least a year or two. It will be worth the money to have an attorney draw this up for you. If they will not honor the not compete on paper, they most likely will verbally. Record the conversation (in writing) stating names and dates of what was agreed to and send it as a follow up email to the attendants of the meeting. Take caution in not scaring them away with a too strongly worded document. There are other ways that you can help ensure that you don't get knocked off. I don't want to go into detail because the response would be volumes. If you want more info and advice on this from me, or me to help you with any of it, email my husband with your contact info and we will connect.
posted by gnash at 7:55 PM on December 5, 2007 [1 favorite]

Lawyer up. Even the patent won't help you (and yes, it's patent, not copyright which covers written words).

You know those neck things that airport travelers wear, which hold the boarding pass and ID and passport all in one convenient place? I have a friend whose dad invented them 10 years ago; he had a patent and several hundred of the prototype he'd had made up. The low-cost airline who LUVS to LUV their passengers wanted to buy it from him, asked for a dozen as a sample. They wanted to resell it to SkyMall, wanted to buy tens of thousands.

He thought he was protected (because of the patent, you see), and blithely shipped off the samples.

Never heard a word from the airline again.

Two months later, the airline's frequent flyers received the ID lanyards in the mail, which had been printed up in China with the airline's logo. Needless to say, he never saw a dime.

He retained a lawyer and tried to sue, but there wasn't anything they could do after the fact.

Caveat inventor.
posted by pineapple at 7:57 PM on December 5, 2007 [1 favorite]

You do need a lawyer, but the difficult thing here is you need a lawyer who has actually dealt with this industry before. I have seen inexperienced lawyers take hard bitten positions that are just unreasonable in a given industry. They are a pain and they kill deals. If the lawyers you interview don't have experience here ask them to help you find one who does. Also, ask the company, and then ask that lawyer who they would recommend.
posted by caddis at 7:58 PM on December 5, 2007 [1 favorite]

(1) Lawyer (2) accountant (3) call another store also and get them involved in the picture.
posted by Ironmouth at 8:12 PM on December 5, 2007

it's patent, not copyright which covers written words

Huh? Completely backwards.
posted by JimN2TAW at 5:51 AM on December 6, 2007

Two months later, the airline's frequent flyers received the ID lanyards in the mail, which had been printed up in China with the airline's logo. Needless to say, he never saw a dime.

He retained a lawyer and tried to sue, but there wasn't anything they could do after the fact.

I don't know the facts of this lanyard story, and apparenly pineapple doesn't either. Patent infringement damages are available for acts of infringement going back 6 years. The statement that the patentee couldn't recover because it was "after the fact" makes no sense. There are many possible reasons not to go forward with infringement litigation, but it being "after the fact" is not one of them.
posted by JimN2TAW at 5:55 AM on December 6, 2007

Let me re-punctuate for you, since you seem to be unable to glean the meaning as is.

Yes, it's patent, not copyright (which covers written words).

Yes, it's patent, not copyright-which-covers-written words.

Yes, it's PATENT! (not copyright, which covers written words).

"I don't know the facts of this lanyard story, and apparenly pineapple doesn't either. Patent infringement damages are available for acts of infringement going back 6 years. The statement that the patentee couldn't recover because it was "after the fact" makes no sense. There are many possible reasons not to go forward with infringement litigation, but it being "after the fact" is not one of them."

This was incredible dickish. I didn't give every bit of minutiae about the lanyard case because it wasn't relevant to my original point that the OP needs a lawyer upfront.

But here, let me clarify since I can't possibly know what I'm talking about, and you seem committed to posting as often as possible in order to cast rude aspersions on my statements here:

My friend's father DID go in to the airline meeting with a declaration of his patent. The airline DID give lip service to being aware of it and honoring it.

[At this point in the story, a person in a similar situation might easily feel that having a patent was protection enough.]

The inventor left the meeting satisfied that he and his patent had protected his interest, and still the airline stole the idea and used it for themselves.

Their argument after the fact was multi-fold: that the inventor hadn't made it clear that he was the exclusive holder of the patent and therefore they weren't 100% certain they had to get his clearance... despite the patent itself, the inventor hadn't given them the correct paperwork before he gave them the samples, so they took the samples to be implicit permission to run with the idea... and that since they didn't sell the items but gave them away, there was no percentage of profit of sales on the item to be shared.

The patent didn't cover my friend's father because the airline claimed that there was no actual patent infringement but that if there was, there was no money to recover anyway. The IP lawyers looked at the case after and said, "Yep, there's not much you can do here. If you'd gone into your talks with them with different, better paperwork and had them sign the proper documents first, this wouldn't have happened, but your only options now are to drop it and chalk it up to lessons learned, or fight them in court knowing that they can outspend you and knowing that even if you win you won't see a dime."

The patent itself does not protect a big corporation with loads of money and lawyers from screwing over the little guy.

Are you okay now, JimN2TAW? Does that meet all your needs a little more? If not, feel free to email me for the name of the law firm in Houston that handled this and you can grill them with your superior knowledge of patent infringement.

(Fortunately, I think the OP and the rest of the readers here were able to understand me the first time.)
posted by pineapple at 6:22 AM on December 6, 2007 [2 favorites]

OP and Pineapple,

The patent itself does not protect a big corporation with loads of money and lawyers from screwing over the little guy.

... and that's the way it is.

But a few more comments, which I hope will be helpful and not dickish. (I've flagged my 3rd post for deletion.)

The OP may need a patent, or a provisional patent application, or a design patent, or a copyright notice, or an application for a copyright registration--we don't know because we don't know what kind of a product or invention it is. He describes himself as an artist, which suggests there may be some visual subject matter here, not a new physical structure or arrangement or manufacturing method. I guess we all agree he needs legal advice.

As for the lanyard patent in pineapple's example, maybe it covered the airline's product, maybe it didn't. I don't know what kind of license the patentee may have inadvertently given the airline. But his patent is still in force. If his invention is as significant as he seems to feel, there's no reason he can't still be enforcing it against manufacturers and dealers all over the place. Some will fight him and some will pay a license fee to avoid the nuisance of litigation.

On the other hand, maybe the invention was a tiny improvement or detail that the wallet-makers really don't need and really don't use in their wallets. Individual inventors often exaggerate the significance of "having a patent."

Again, you need IP legal advice to determine what you have and how to protect it. Good luck.
posted by JimN2TAW at 7:29 AM on December 6, 2007 [1 favorite]

pineapple does not know that much about patents so take her advice on the subject with a big grain of salt. A patent is available to the inventor of a new and process, machine, manufacture, or composition of matter and new and useful improvements thereto. Copyright covers works of authorship, which includes words. For ikahime it could be either copyright or patent which could provide protection depending upon the nature of the product in question.

As for big corporations being able to screw the little guy, yes it can happen, but all the money in the world will not protect them from a solid case of patent infringement well litigated. I am not sure about the lanyard patent, but these things have been around a lot longer than ten years so I can't imagine anyone getting a broad patent in the area. Patents only cover what is new so to get one over the older security wallet would mean incorporating some new feature. If the airline omitted that feature there would be no infringement. Given the common misunderstanding of patents like pineapple has apparently expressed it is all the more important to have a lawyer who can advise one as to the specific situation. A strong and broad patent can provide significant protection, even against a big corporation with loads of money. A weak or narrow patent provides little protection. Anyway, gnash has probably already provided the best advice for this situation.
posted by caddis at 7:31 AM on December 6, 2007

Having almost two decades in this industry I can tell you that gnash has posted an excellent response. I've been on both ends of this pole I can also tell you that the knock-off WILL happen if they want it bad enough. So try to be part of the deal and make some money off it for a year or two while hopefully spinning something else out of it.

It also goes without saying that if they actually want the rights now (as in NOW) is an exceptionally good time to be canvassing their competitors. Just don't mention names.

As far as lawyers go, if they don't work with your industry every single day they will do you absolutely no good and may even cause some harm. Get someone that your competitors would use.
posted by Umhlangan at 7:48 AM on December 6, 2007 [1 favorite]

Oh my God, more of this? Seriously?

I am sorry that I offered a real-life example. Clearly it's more important for some of you to speculate as to what I do or do not know about patents, the physical nature of what the guy actually invented and whether there is an older patent that predates his, how he could not possibly have had a legitimate patent, and whether or not he had a legitimate case of patent infringement, which he was clearly stupid for not pursuing, again establishing that the only option is that his patent must not have been legitimate...

ikahime, I apologize that my original post was unclear. I only intended to relay anecdotally that the mere possession of a patent isn't the safeguard one might think, especially if you are going to the table with a big box retailer. I'm sorry that it caused a big fat derail.

But if anyone else feels a compulsion to dissect the finer points of the lanyard anecdote, please for the love of God take it to MefiMail.
posted by pineapple at 9:29 AM on December 6, 2007