I have a co-worker whos dad is an alumi of a university for his birthday she wanted to give him towels with the university logo on it as a gift. I can do this but I do not have a license. Can I charge for the labor of producing this for personal use? I am not charging or advertising that I do team logos. Thanks Kalyn
You want to know whether, without a license, you can lawfully sell a set of towels on which you embroider a university's logo. No. Whether you characterize the sale as the sale of your labor or [more accurately] the sale of the towels the result is the same: you transferring ownership of an infringing product in commerce.
The above response 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.
Whether you are charging for labor is irrelevant to trademark infringement. Basically, if you are reproducing someone's trademark, you can be liable for TM.
Trademark infringement requires use "in commerce." "In commerce" in this statute means in interstate commerce. See http://www.law.cornell.edu/wex/trademark_infringement for an explanation of this requirement and some examples. If you are doing a friend a favor for personal use and they are simply reimbursing the cost of your labor and you are in the same state this is not "use in commerce," so that requirement won't be met. I don't know what you would make on this, but even better would be not charging. Maybe your friend can do you a favor in exchange.
Please note: This answer is not intended and should not be considered as legal advice. Such professional advice requires full disclosure to an attorney of a client’s circumstances and that attorney’s opportunity to analyze those circumstances against applicable law.
My colleagues did an excellent job addressing this question. It is, at the end of the day, an academic discussion. That is, no one will ever know or care about you doing this one time for a friend. But because you are raising an honest question, you received straight forward legal advice, which is that you would be profiting by your assistance in the infringement. We see this come up in many ways these days. Bakeries, for example, that make custom cakes run into this a lot as customers ask for Disney themes and sports team themes, etc.
In trademark law, there is a concept known as the "innocent printer" defense. If I came to you to design various products with my firm logo, for example, there is no reason for you to believe that I might not have the right to use that logo or employ you to make things with that design on it. Because the logo is far from notorious, if someone later claimed that my use infringed and by virtue of you helping me in that infringement you were also liable (secondary liability for contributory infringement), you would assert the innocent printer defense and most likely would not be held liable save maybe for profits derived solely on that transaction.
But when the logos presented to you are famous like a college team, etc. you would not be able to fall back on that defense because it is only reasonable that you should know that the customer that is asking for that work to be done should not have any legal right to use those logos and it would be incumbent on you to verify that they have the legal right to hire you to make these things.
Again, in your particular case how is anyone ever to know let alone care. But if you were planning a business venture around this, I would be more concerned.
If you need further clarification, I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
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