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How am I infringing on a trademark by engraving it on private property?

Taos, NM |

I have a computer controlled engraver which allows me to engrave nearly any symbol or pattern onto almost any material. It is also portable which means I can transport the machine to a home or business and engrave a design or image on someone's concrete drive or walk. Some clients request I engrave trademark logos of their favorite sports team or vehicle, etc. I'm not selling a tangible item. I don't charge any more for a popular image. I understand tattoo artists can tattoo copyrighted images on someone's skin. So what copyright issues am I facing?

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Attorney answers 7

Posted

You need to read 17 USC 113(a) http://www.law.cornell.edu/uscode/text/17/113 which specifically gives to the copyright owner the right to do what you do. 17 USC 501http://www.law.cornell.edu/uscode/text/17/501gives a copyright owner a cause of action against you. Since you are deliberately doing this you might well face loss of your profits, an injunction, statutory damages of from $750 up to $150,000 per instance, payment of attorney fees of the copyright and/or other remedies if these images you are reproducing are copyrighted.

As to trademarks, I think you face a risk, albeit slight, of being held to be engaging in trademark infringement under 15 USC 114(a) and/or unfair competition under 15 USC 1125(a) since you are accepting money for producing a product with a false designation on it. The difficulty for the trademark owner is to convince a court the product or service is in commerce. If you advertise what you are doing and use any sample of prior work in your advertising, I think you are on the wrong side of the law. See 15 USC 1114(b) You must realize that courts tend to interpret laws so as to, in their mind, do substantial justice. I think it would be an uphill battle for the NFL or similar brand owner to win this case, but I think if they perceive this as a growing trend that might cut into their licensing revenues (e.g. if a licensee demands they do something about it), they might take a flyer and try to convince a Judge to make some new case law in their favor on this. It is possible they might find a sympathetic court somewhere that likes sports teams and thinks you are ripping them off and get that new law. You don't want to be that groundbreaking case, as once it starts you can expect the brand owner to run your legal costs into the stratosphere, particularly if they can get past a summary judgment and to a trial.

So with likely illegality on the copyright side and borderline legality on the trademark side, I think this is a moderate to high risk business - moderate so long as you are small potatoes and there are not too many other engravers out there, high risk if there are lots of engravers doing this and the NFL, NBA, NHL, and NCAA decide they need to shut this practice down.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

Bruce E. Burdick

Bruce E. Burdick

Posted

typo in para 2, line 2 15 USC 114(a) should be 15 USC 1114(a) http://www.law.cornell.edu/uscode/text/15/1114

Posted

A photocopier only copies, and it does not distinguish between a copyrighted book and one that is in the public domain. It is the photocopier's operator that does the distinguishing and committing the infringement.
In the situation you describe, the engraver does not care what does engrave, however you should.
Your situation is interesting because you are not selling goods, just providing a service, and that service would be tantamount to contributory infringement, meaning you are helping others infringe.
For well known marks, that would be a problem, but there may be marks which have restrictions only in the class where they registered. If your engraving is limited to sports teams, then the bad news apply to you.
The infringing lawsuit will go first against the product owner, and then they will bring you in as contributory infringer.
There should be better things to do with and engraving machine.

USPTO Registered Patent Attorney, Master of Intellectual Property law, MBA I am neither your attorney, nor my answers or comments in AVVO.com create an attorney-client relationship with you. You may accept or disregard my free advice in AVVO.com at your own risk. I am a Patent Attorney, admitted to the USPTO and to the Florida Bar.

Posted

Hi,

The chances the you will be sucked into an infringement action are probably slim, but this does not mean you have a legal right to do what you are doing. And if you are for example advertising and have a website offering the serivce you may hear from someone's attorney.

I don't want to use the tattoo example becuse it is such a nuanced case and not really the same here.

If you, as the owner of a football jersey wanted to emboss it with some NFL trademark well you can do whatever you wish with your own property and I highly doubt even the hyper-aggressive NFL would dare to file against a fan as an individual.

But here, you are making a buisiness out of helping people infringe. For example, if I hire you to emboss an NFL logo on my shirt then you can be held liable for that infringement. There was a recent case where Laboutin (red sole shoe company) successfully sued a small shoe repair service because they were servicing customers by painting the soles of the shoes they brough into the shop the same color as Laboutin's now famous trademark China Red.

As you noted, there may also be copyright issues here as well.

I would suggest that you consult an IP lawyer before you make any investment in this as a business so you understand the limits of what you can do legally.

I will link you to some general helpful info below as well.

Best regards,
Frank
Natoli-Lapin, LLC
(see Disclaimer)

The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

Asker

Posted

do NOT contact me!

Frank A. Natoli

Frank A. Natoli

Posted

Unless you openly identify yourself no one here will know who you are and I have no way of contacting you outside of responding here which you can simply turn off. I am not sure why you would write such a message? You asked a question, I assume you wanted answers. Good Luck.

Asker

Posted

I can turn it off? I understand my comments are completely anonymous but if I put it out there I'm sort of asking for it or so I've heard. Just making it crystal clear if I'm contacted by my "friend's" attorney I will not be sweet. Given staffing is short and all.

Bruce E. Burdick

Bruce E. Burdick

Posted

And you think we attorneys care if you are "not sweet"? We love putting "not sweet" people on a witness stand for cross examination. Amazing how "sweet" the "non sweet" then pretend to be.

Asker

Posted

run that through me one more time I didn't quite catch that. You do what with sweet people?

Posted

Q: "So what copyright issues am I facing?"
R: Copyright law states, in relevant part, that " ... the owner of copyright under this title has the exclusive rights to ... reproduce the copyrighted work in copies or phonorecords." 17 USC 106. When you draw someone else's copyrighted image in exchange for money you're unlawfully reproducing that image. Which is copyright infringement. If you want to continue your infringing conduct you should discuss this with your own copyright attorney.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

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.

Maurice N Ross

Maurice N Ross

Posted

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?

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

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].

Frank A. Natoli

Frank A. Natoli

Posted

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.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

There are NO trademark claims here.

Frank A. Natoli

Frank A. Natoli

Posted

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.

Frank A. Natoli

Frank A. Natoli

Posted

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.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

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.

Maurice N Ross

Maurice N Ross

Posted

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.

Frank A. Natoli

Frank A. Natoli

Posted

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.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

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.

Frank A. Natoli

Frank A. Natoli

Posted

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.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

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.

Frank A. Natoli

Frank A. Natoli

Posted

That was very much appreciated Daniel. Thank you for that follow up.

Bruce E. Burdick

Bruce E. Burdick

Posted

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.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Thanks Bruce.

Posted

From the trademark standpoint, you can't use someone else's trademark in commerce. You're not proposing personal use for yourself, you're proposing offering your engraving services to others for money.

It's no defense to say the customer requested it, or that the engraving would take place or ultimately sometimes be located be on private property. Interesting analogy to tattooing. but I don't there's any chance of a consumer thinking that someone's skin has been endorsed by a sports team.

Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.

Posted

"I understand tattoo artists can tattoo copyrighted images on someone's skin." Tell that to the producers of Hangover 2. In that movie, one of the characters gets a tattoo like the one Mike Tyson has on his face. But Mike Tyson did own the copyright to the design of that tattoo. Rather, Mr. Tyson apparently has acknowledged that the original tattoo artist owns the copyright to that tattoo. So the tattoo artist sued the producers of Hangover 2 for copyright infringement. The producers attempted to get the case dismissed, and when they were unsuccessful, they settled with the tattoo artist for an undisclosed amount. So, I would not say that copyright law does not apply to tattoos as your post seems to imply.

This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.

James Juo

James Juo

Posted

TYPO: But Mike Tyson did NOT own the copyright to the design of that tattoo.

Bruce E. Burdick

Bruce E. Burdick

Posted

Interesting Hangover 2 case. Thanks.

Posted

I agree with Mr. Natoli. If you are just using it for your own personal purposes, it is probably not going to result in any action. However, once you step out of the simply personal realm, it will probably attract the attention of some entity. The question that you need to ask yourself: "Is it worth it if I get dragged into an infringement suit?" The answer is probably no.

This information is provided as a public service to provide a general answer and should not be relied upon as legal advice.

Bruce E. Burdick

Bruce E. Burdick

Posted

This is a balanced answer. You might well decide as a matter of business judgment to take the risk on this, not advertise it (to avoid trademark direct infringement) and risk the copyright infringement unless and until someone tells you to stop and then immediately stop, apologize profusely and claim innocent mistake. Stoppage would likely be a complainant's main goal against you. Just realize you take the risk of being chosen as "the example" to discourage other engravers, and that if that happens you might well be looking at major liability.

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