I do not understand my colleague's concerns about the questioner infringing the trademark rights in the logos. Absent direct infringement there can be no secondary infringement and absent putting the engraved products in commerce there can be no direct infringement. I think trademark law is irrelevant.
Daniel---this would probably be contributory trademark infringement---the customer is directly infringing by retaining the engraver to place the trademark on the customer's property. What am I missing?
The goods upon which the trademark is being engraved are no longer in commerce. Because they're not, the owner of those goods can lawfully engrave anything it wants onto them -- including trademarks. For example, I can lawfully draw the Nike swoosh on any pair of sneakers that I own w/o infringing that mark. So in the questioner's situation the owner of the goods upon which the trademark is being engraved is NOT a direct infringer of the mark. Which leaves the engraver. But he is not a direct infringer either because, again, the goods upon which the mark is being engraved are not in commerce. Because NO ONE is directly infringing there can be no one contributing to that [nonexistent] direct infringement. In short, trademark infringement liability requires there be some transaction [pre-sale, sale, or post-sale (potential transaction)] of the allegedly infringing goods in commerce in order for the Lanham Act to apply at all. Sale of the mark alone [in this case by the engraver together with his services to create the mark] is NOT a basis for infringement liability.
The most relevant trademark claim would be under a statute that it makes it unlawful to traffic in labels used as a mark [but even that's distinguishable because the engraving is not a label].
There are without question trademark infringement claims here to be made even if they are somewhat chewy and there are cases to support that. But i agree with Dan in that a pure copyright infringement claim is a cleaner argument.
The reason I chose to focus on trademark here over the copyright law is in my mind all of the content would be protected under trademark law whereas only some will be protected under copyright law.
There are NO trademark claims here.
Dan, putting all these legal issues aside for a moment, if every lawyer who comments here thought they had to be the "most correct" in every answer no one would want to offer their insights. We are not litigating the issues and Askers here are presumably more concerned with whether certain activity can get them sued than what their counsel will argue in their defense. It is not necessary to comment on top of my answers just to let me know you disagree with my take on it or that you think I am wrong. You can assert your expertise in your own remarks and explain to the Asker why you believe your understanding of the issue is the better one. I was not the only lawyer commenting here that noted the trademark issues.
Excuse me here, I was mistaken as I thought these comments were on top if my answers, which happens all the time, but I am wrong. You were adding to your own answer. I just wanted to make that clear.
I asserted that trademark law was irrelevant in the described situation. You chimed in and declared that "[t]here are without question trademark infringement claims here to be made ... ." You don't say how or why. And now you say that I'm not entitled to dispute your unsupported, and unsupportable, "correction" to my analysis. Hmm.
Frank: These dialogues among counsel have proven very useful. I have learned a great deal over the years from Daniel, Bruce and others and we regularly have engaged in dialogues on each other's comments. I do not mind being corrected---I welcome it if I am wrong (no one is perfect, especially me). I also think that the "askers" benefit from the dialogue among lawyers because it shows that even well-established professionals often disagree on the issues they raise. As to this issue Daniel's commerce analysis is interesting, but I do not think it is right. If the engraver offers his services to people who purchase goods in commerce, and the goods are purchased with the expectation to get them engraved with a trademark, this clearly involves commerce. Moreover, the payment to the engraver for the trademark is commerce. I don't believe courts would accept the limited view of commerce in Daniel's analysis--but Daniel is often right on these issues and I certainly respect his views and welcome his insights. He has helped me on issues that I have ended up litigating, and he has been right more often than not.
You wrote a comment specific to my remarks and it appeared that you chimed in on me. That was not correct. But how come you don't ask all the other lawyers here that noted trademark concerns to "support" their answers? No one has time for that and that is not why we are here. If an asker wants more than general insights they can pay a lawyer for their time to research all the issues. I believe there are contributory infringement claims available among others. If you think I'm going to log on to my Lexis account and do case law research just to try and prove an Avvo colleague wrong I mean that's ridiculous. I have participated in a lot of other forums but this one is by far the most competitive. I have gleaned many great insights here but it also lends itself to a argumentative environment that I find unpleasant.
When you publish to the world that I've incorrectly analyzed a situation but do not support your position in any way then, yes, I find it necessary to reply. If you publicly disagree with a legal position that I've taken then either support your view or discuss the matter with me offline.
Guys I agree with everything Maurice is saying regards to the issues. That is why I said there are certainly claims to be made and Daniel astutely noted the defenses. But I do not understand why any lawyer such as yourself should feel like they need to support that with authority. When I say certainly there are claims that is all I mean. A plaintiff would undoubtedly come at them with any and all possible claims including trademark ones. Do I really need a case on point? Facts depending, maybe the TM claims will not be successful but that will not stop a plaintiff from going there and in my opinion winning the day given the right circumstances. I am not here to compete with colleagues about who is most right it is just not collegial. Moving forward I will make an effort to resist the urge to follow up in comments because I think it invites confrontation and that is not pleasant or productive.
Frank, you're one hell of a lawyer and I think your contribution to friendly disagreements about the law would benefit me, all the other responding attorneys and the questioners. It's cliche but true that we can disagree without being disagreeable [granted, that's sometimes difficult]. As for doing research to support a legal argument I frankly do the research when confronted with an Avvo question that I can't answer or when a colleague's response strikes me as either really good or really bad. I do not use Avvo to acquire clients [and turn down all requests]. I use it to provide pro bono assistance and to learn what I need to know to be a better lawyer. And that's done by thinking through the questions posed, our colleague's responses, and having dialogues with other respnding attorneys. I hope you reconsider not joining those dialogues. Your contributions would be most appreciated.
That was very much appreciated Daniel. Thank you for that follow up.
Well put Daniel, one of the great benefits of participating deeply on Avvo is it makes us better lawyers. It gives an avenue to put legal arguments to the test of colleagues outside of the courtroom. That helps us learn better expression and to learn the law, particularly recent changes. One of the great things is to be proven wrong (good thing that never happens to me - LOL) as that is when you learn the most and then can get it right the next time. Better to learn that lesson here than from a judge in an important case.