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Charles Philip Guarino

Charles Guarino’s Answers

9 total

  • How can you use this logo leagally?

    I recently saw a t shirt that had what was obviously the Fox News logo but it said Faux News. Could the seller of that shirt be liable? And I've also seen shirts that use the Fox News logo in a demeaning way. Same question on that.

    Charles’s Answer

    Based on your description, it would appear that the shirt is using the FOX NEWS Logo in a parodic manner. While parody is a protected form of expression, to the extent that the subject of the parody is protected by intellectual property rights, the parody must fall within the confines of fair use. In contrast to the more widely known doctrine of copyright fair use, however, the "doctrine" of trademark fair use is not a unitary doctrine at all, but an amalgam of statutory and judicially-crafted provisions. Parody is not an automatic defense to trademark infringement or dilution claims. First Amendment considerations, although significant, are not absolute and must be examined on case-by-case basis along with an analysis of the similarity and context of the marks.

    In trademark, as in copyright, the mere assertion that the complained-of use is parody will not mean that the use is automatically considered to be fair use, and this non-infringing. Ultimately, the court must determine if there is a likelihood of confusion or dilution, while keeping in mind the expressive value of parody to the society at large.

    Some guidance may be derived from the well-known case Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994), in which the Supreme Court rendered a decision on parody in the context of a copyright claim. According to the Court, for a parody to qualify under the "fair use" exception, it must employ "some elements of a prior author's composition to create a new one that, at least in part, comments on that authors works.... If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like the extent like the extent of its commerciality, loom larger."

    In this instance, the use of the term "faux" makes an allegation that Fox News presents false or slanted news coverage, which is certainly a comment on the trademark owner's product. As such, it would likely be considered fair use of the FOX NEWS mark under the above criteria.

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  • How do I turn someone in who sold me illegal NFL jerseys?

    Posted on craigslist and made it seem like they were selling them out of US, but after I paid them in Papal it came up that the money went to China and I contacted buyer to see if they could be sold as authentic and he said replicas. I then start...

    Charles’s Answer

    If you find it difficult to get in touch with someone at NFL Properties LLC, you may instead wish to file a report with the Coalition to Advance the Protection of Sports Logos (CAPS) by calling 800-TEL-CAPS (800-835-2277). CAPS maintains a website at www.capsinfo.com, but the site does not provide the opportunity to file reports of infringement over the internet.

    CAPS coordinates the protection and enforcement of names, logos, and trademarks owned or licensed by the four major U.S. professional sports leagues, as well as collegiate sports; their clients are Major League Baseball Properties, Inc.; NBA Properties, Inc; NFL Properties LLC; NHL Enterprises, L.P.; and The Collegiate Licensing Company.

    Given that the counterfeit goods were apparently imported from a foreign country, you may also wish to file a report with the IPR Coordination Center of the U.S. Immigration and Customs Enforcement (ICE), as mentioned by my colleague previously. The IPR Coordination Center's telephone hotline may be reached at either 866-IPR-2060 or 866-477-2060. Alternately, you may file a Complaint Referral Form online at the ICE website, located at http://www.ice.gov/iprcenter/iprform.htm.

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  • Trademark infringement.

    Is it legal for my employer to remove trademark branding from a supplier's equipment and replace it with their own trade name making the product look as if it were designed and manufactured by my company instead of the company who actually designe...

    Charles’s Answer

    I must respectfully disagree with my colleague above. The situation described in the original question is the quintessential case of "reverse passing off," which is actionable under Section 43(a) of the Lanham Act.

    In reverse passing off, an infringing seller removes or obliterates another's trademark prior to sale, in order to misrepresent the source of the product, thereby denying the public information on who actually created the product.

    Reverse passing off falls into two categories, express reverse passing off and implied reverse passing off. In express reverse passing off, the infringer replaces the original mark with his mark and sells the product. In implied reverse passing off, the infringer only removes the mark prior to selling the product, leaving the product unbranded. This case appears to fall within the former category as express reverse passing off.

    A trademark serves three purposes: (1) to designate origin, (2) to develop goodwill with customers, who can associate a level of quality with a product from a specific source, and (3) to advertise the goods. By removing the mark, the infringer damages the trademark owner by preventing customers from knowing the actual source of the goods, deceiving the customer. Additionally, removal of the mark prevents the trademark owner from developing any advertising value from its mark. Replacing the mark (express reverse passing off) further damages the trademark owner, in that it dilutes the distinctive nature of its goods, making it appear to consumers as though similar goods may be derived from alternate sources.

    Reverse passing off is not universally recognized by the courts, as a result of the various judicial interpretations of the exhaustion and first sale doctrines. Nevertheless, potential liability from such actions must be considered, preferably with the assistance of competent intellectual property counsel.

    (Note: While the Supreme Court decision in Dastar v. Twentieth Century Fox Film, 539 U.S. 23 (2003) limited the scope of "reverse passing off" claims, it primarily applies to communicative goods, such as books and movies, or the concept or idea underlying certain non-communicative goods. Neither seems to be at issue in the original question, which merely talks about "equipment.")

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  • If I put a book plot summary of three lines my my new book is this copyright infringement?

    I am writing a non-fiction novel. I have put three lines describing what happened in another novel into my own novel.

    Charles’s Answer

    Regardless of whether your own literary work is fiction or non-fiction, the creation of a paragraph that merely summarizes or describes the plot of a movie or any other work covered by copyright would not be considered an infringement of that work. If it were, film and book critics would be sued out of existence!

    An important caveat, however: the paragraph you create must itself be your own work. In the case of a movie, this is almost certainly going to be the case, since a written description of a visual and auditory medium is by definition going to be different than the original.

    The only potential issue that might arise is where you copied dialogue from the movie verbatim for incorporation into your work. Such use might fall within the "fair use" doctrine, codified at Section 107 of the Copyright Act. Section 107 of the Act lists various purposes for which the reproduction of a particular work may be considered fair use, including criticism, comment, news reporting, teaching, scholarship, and research, and sets out four factors to be considered in determining whether or not a particular use is fair:

    1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
    2. The nature of the copyrighted work
    3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
    4. The effect of the use upon the potential market for, or value of, the copyrighted work

    Please note that, contrary to many misconceptions on the subject, there is no specific number of words, lines, or notes that may be safely copied without permission of the copyright owner. Fair use is a highly fact specific and situational analysis that should be undertaken with the assistance of counsel.

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  • If I put a movie plot summary in a non-fiction book is that also OK

    I am writing a non-fiction book. I have put a paragraph describing what happened in a movie into my own book.

    Charles’s Answer

    Regardless of whether your own literary work is fiction or non-fiction, the creation of a paragraph that merely summarizes or describes the plot of a movie or any other work covered by copyright would not be considered an infringement of that work. If it were, film and book critics would be sued out of existence!

    An important caveat, however: the paragraph you create must itself be your own work. In the case of a movie, this is almost certainly going to be the case, since a written description of a visual and auditory medium is by definition going to be different than the original.

    The only potential issue that might arise is where you copied dialogue from the movie verbatim for incorporation into your work. Such use might fall within the "fair use" doctrine, codified at Section 107 of the Copyright Act. Section 107 of the Act lists various purposes for which the reproduction of a particular work may be considered fair use, including criticism, comment, news reporting, teaching, scholarship, and research, and sets out four factors to be considered in determining whether or not a particular use is fair:

    1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
    2. The nature of the copyrighted work
    3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
    4. The effect of the use upon the potential market for, or value of, the copyrighted work

    Please note that, contrary to many misconceptions on the subject, there is no specific number of words, lines, or notes that may be safely copied without permission of the copyright owner. Fair use is a highly fact specific and situational analysis that should be undertaken with the assistance of counsel.

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  • Hi, I trace Van Gogh, Seurat or Monet, onto cloth and embroider them using thread. Can I sell these works?

    Do I have to obtain permission from art gallery or museum that owns the art before being able to reproduce it in thread (embroider it) and sell the embroidered version?

    Charles’s Answer

    Your question is essentially whether works created by Vincent Van Gogh (1853-90), Georges Seurat (1859-91), and Claude Monet (1840-1926) are in the public domain, and are therefore no longer covered by any intellectual property laws. For the purpose of this question, I will assume that we are talking about U.S. copyright law only.

    The first two of these are easy. Since Van Gogh and Seurat both died before the Copyright Act of 1891 (when the US first extended copyright protection to foreign works) or Copyright Act of 1909 came into existence, the works of neither would be covered, and are thus in the public domain.

    Monet is a more difficult case. The 1909 Act covers works published from July 1, 1909 through December 31, 1977. Since Monet created works during this period, such works would fall under the 1909 Act. While any works created before 1923 unquestionably fall within the public domain, due to the fact that his works were created outside the U.S., foreign works created by Monet from 1923 until his death in 1926 may potentially still be covered by copyright, depending upon a multitude of factors too complex to consider in this forum. A good source for information on these works may be found at the Public Domain Sherpa site, to which I have included a link. Nevertheless, if you wish to be perfectly safe, consider only using Monet works created prior to 1923. I have included a link to a list of Monet works by date of creation.

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  • I am a small internet business that buys a product, customizes it and then resales them. But now they are stealing my designs

    Basically I Buy a product, and customize it for customers, as to what they want. Sort of like I'm the 'Orange county chopper ' of this product. They didnt invent the Harely but they customize them. I sell them as a custom version and upgraded ver...

    Charles’s Answer

    I am not going to address the "theft of ideas" issue, since your actual question appears to be in the last line; namely: the legality of purchasing, customizing, and reselling a product made by a well-known company.

    If the source of the original product is as famous as you claim, it is more than likely that the source company owns registered trademarks covering the goods that you are purchasing, customizing, and reselling. It also seems likely that you rely on the well-known nature of those trademarks to sell your customized versions of the source's original product. If so, it is very important that you make adequate disclosures to your potential customers that the customized goods that you are selling contain non-original parts that do not come from the well-known source company. See Rolex Watch Co. v. Michel, 179 F.3d 704 (9th Cir.). In the Michel case, the defendant was engaged in the practice of reconditioning lower-end Rolex watches by adding aftermarket (not made by Rolex) dials, bracelets, and bezels made from precious metals and gemstones, then reselling the finished product as genuine Rolex watches. The appeals court found that, even though it contained a genuine Rolex movement and casing, such alterations resulted in a new product, and enjoined (stopped) the defendant-customizer from using the Rolex trademarks on the resulting product. See also, Rolex Watch Co. v. Meece, 158 F.3d 816 (5th Cir. 1998).

    Please note that the above cases only apply to the third-party alteration of goods that are then sold to the consumer; they do not apply in a situation when customization is done at the customer's request to an authentic item that they already own.

    This is a nuanced area of case law, and I strongly recommend that you consult with an attorney before proceeding.

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  • I would like to showcase postage stamps in pendants

    i would like to use postage stamps in small frames or decopaged on wood or plastic in jewelry to be sold nationwide.

    Charles’s Answer

    With all due respect to the prior contributor, the answer to the question may not be all that clear-cut, and may ultimately depend on the judicial circuit in which the matter is discussed. There is no nationwide concurrence on this issue at present.

    There is precedent in the Ninth Circuit (which includes Arizona, the OP's location) that holds that the creation of new works using pre-existing materials protected by copyright infringes the exclusive right to prepare derivative works provided to the copyright owner by the federal Copyright Act. In this well-known case, the defendant purchased a book of Patrick Nagel prints, cut the prints from the book, and mounted the prints individually on tiles, which were then sold separately. Mirage Editions v. Albuquerque ART, 856 F.2d 1341 (9th Cir. 1988). The defendant argued that, under the "first sale" doctrine, once it had purchased the plaintiff's book, it had the right to utilize the physical contents of that book in any way it desired, including cutting out the pages, mounting them, and selling them individually. The Ninth Circuit disagreed, holding that the tiles were derivative works that infringed on Nagel's copyright. while the buyer of a book has a right to resell intact the book it has purchased, it does not have the right to sell pieces of the book that have been altered in such a way as to constitute a "derivative work" under the Copyright Act. A later case, Muñoz v. Albuquerque ART, 38 F.3d 1218 (9th Cir. 1994), held that the reasoning of Mirage Editions would also apply to works that were originally sold loose.

    While the Mirage Editions case is still good law in the Ninth Circuit, however, there have been federal courts in other parts of the U.S. that have disagreed with the decision. Lee v. ART a/k/a Albuquerque ART, 125 F.3d 580 (7th Cir. 1997) involved the purchase of Lee's notecards and small lithographs by ART, which then mounted the works on ceramic tiles for resale. Despite the similarities to the prior Mirage Editions and Muñoz cases, the 7th Circuit did not come to the same result as the 9th Circuit, holding that the defendant's actions did not amount to the creation of a derivative work as defined by the Copyright Act. Similarly, in Peter Letterese And Associates v. World Institute Of Scientology, 533 F.3d 1287 (11th Cir. 2008), the 11th Circuit Court of Appeals disagreed with the reasoning applied by the 9th Circuit in the Mirage Editions case.

    In conclusion, if the OP is looking to pursue this business opportunity within the 9th Circuit, he or she may find that, under the controlling case law, such actions do constitute copyright infringement. In contrast, the 7th and 11th Circuits have found no copyright infringement in similar scenarios. Further, most of the U.S. federal circuits have not ruled either way, providing little guidance on this issue. Based upon the legal uncertainty, you should consult with a skilled copyright attorney before embarking on this venture.

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