If I designed a baseball jersey----just for myself; not to sell---- that said ‘KANSAS CITY’ on the front, ‘KC’ on the sleeve, with a number on the back, using the same yellow/kelly green/white color combination and design style of the 1960's era KC Athletics, would this infringe on MLB licensing? It's for my personal use only and it's a one-off project. Note: this style and combination is not offered by MLB or any of its licensees worldwide.
One of a kind personal items not for use in commerce do not give rise to a claim for trademark infringement. 15 USC 1114 http://www.law.cornell.edu/uscode/text/15/1114 requires use in commerce or intention to use in commerce. If you are telling us the truth, you are legal. I am not sure I buy your story of purely personal use, so I feel the need to warn you that if you really intend to sell these, or even just distribute them, you are infringing when you apply the trademarks with that intent.
Just like I use to work on ex parte seizures of HARD ROCK CAFE fakes before they were sold, the MLB knows how to arrange ex parte seizures if they get wind of you making fakes and distributing them.
Q: "Can I make an MLB jersey just for myself and not to sell for profit?"
In order to infringe an existing mark, the counterfeit must be affixed to goods that are either sold or transported in commerce. See 15 U.S.C sections 1114(1), 1125(a) and 1127(definition of "use in commerce." Affixing another's mark on an item that only you will use or wear is not a use of that mark in commerce. So, yes, you can lawfully create and wear the shirt.
This conclusion runs up against the judge-made law that "post sale" confusion is still confusion actionable as infringement. The rationale is that if someone sees a product branded with a counterfeit mark, even if that person has no intention of buying the genuine product, the goodwill that the manufacturer created in its mark is nonetheless damaged by the non-purchaser viewing the counterfeit product. The same rationale applies to your self-made counterfeit shirt. That is, if anyone sees you wearing it in public then the goodwill that the Kansas City Royals have created in their mark will be harmed. In the final analysis, however, the statute trumps the judge-made law and so, as long as a counterfeit product is not sold or transported in commerce it's lawful to make that product. That product cannot be given away or donated or otherwise transferred to anyone else.
While technically this may be considered an infringement, in my opinion, MLB is not wasting their time going after fans because they fashioned their own sportswear.
You need to be very careful here, however, if you plan on making these for others or starting up some kind of business here as they are hyper-aggressive in policing their marks and while they would not (unless some real extreme example prompted them) go after a fan for making a single infringing article of clothing for their own use they most certainly go after even the smallest of commercial enterprises.
You should consult a lawyer in private if you are unclear of the limits here. Most of us here, including myself, offer a free phone consult.
Despite the fine analysis of my colleagues, you would be surprised how controversial this is among licensing professionals. First, they argue that individual infringements have a collective adverse impact on commerce, thereby meeting the interstate commerce requirement. Second, they argue that individuals who engage in this conduct may dilute the value of the trademark and/or use it in a manner tarnishes the reputation of the trademark owner. Third, to some extent, every consumer use of a trademark is a "personal" use and the concern is that an exception in situations like this might override the rule.
I have a completely different take on why this should be legal---this is a First Amendment issue. When you make and wear this jersey, you are expressing your admiration and support for what it represents--including the history of the Kansas City Athletics. It is no different than the decision of a fan to paint his bare chest with the number of his favorite ballplayer. This type of expressive activity, in my view, should be protected by the First Amendment (or under the doctrine of fair use, which is the doctrine under which intellectual property lawyers often bury their First Amendment analysis).
But be careful. This First Amendment analysis infuriates licensing organizations that represent famous brand names--because the distinction between First Amendment expression and improper infringement is hard to make. For example, suppose you decided to make 100 KC Athletics jerseys and distribute them to a group that plans to hold an event (like Church service) to honor the memory of the KC Athletics. Why would making one for the purpose of honoring the memory of the team be exempt from infringement claims, while making 100 for the very same purpose would not be exempt. But if we were to allow someone to make 100 jerseys as opposed to just one, the "fair use" exception would swallow up the rule. There is a slippery slope between allowing one person to make one jersey for personal use, and allowing that person to make 100 jerseys to express support for the historic franchise. This is why licensing organizations oppose any personal use exception---but I think they are wrong about this; there ought to be some level of First Amendment protection that limits the permissible scope of trademark and copyright law.
Grasshoppers are those entities that will not take license from the IP owner, until their feet are held to the fire of litigation, according to Chief Judge Rader, "steal innovations and then refuses to license...."
But, if you are not an entitiy with deep pockets, you may be ok, unless the IP owner wants to teach you a lesson.
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