It is an infringement to upcycle then resell a pro team, college or school team/mascot product?
Is this infringing on any rights of the colleges, schools or pro teams?
Customer would have thrown it out so it is a win-win-win-win... ( customer, manufacturer, college or other & environment)
Would same be true if I bought something like this at a second hand store --upcycled it and sold it?
4 attorney answers
I completely disagree with Attorney Cogan. Your use of another’s branded product to make your own product clearly — undoubtedly and with no reservation — infringes the trademark rights in the mark that brands the original product. End of discussion. Do it and get sued.
I empathize with Attorney Zegarelli — he’s succeeded in being diplomatic regarding your silly use of the word “upcycle.” I get it, artsy folks like to use cool marketing lingo to sell product at a premium. But the word is meaningless and pretentious. Replace it with counterfeit to experience reality instead of rhetoric. Artsy rhetoric is fine … until it meets the legal reality of the business marketplace. When it does, the law of commerce trumps the whimsy of art.
In short, no, you cannot lawfully sell Product B if it’s made from branded Product A and the brand identifier is shown on Product B. That’s trademark infringement.
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.
From the thicket of various responses that have already been posted, it's clear that you are raising an interesting question without a clear-cut answer.
To think further about the implications of your question, let's talk about a similar, but different, one. What if the original products bore not a college team logo embodying a registered trademark, but instead a copyrighted image isn't registered as a trademark? Provided of course that the image had been lawfully printed on the original product by the first manufacturer, it seems to me that the sale of that product would have "exhausted" the rights of the copyright holder, under the "first sale doctrine." See, e.g., http://en.wikipedia.org/wiki/Copyright#First-sale_doctrine_and_exhaustion_of_rights So the copyright holder would not have the right to prevent re-sale of that particular instance of the printed image.
But that's a principle of copyright law, not trademark law. And the colleges have enlisted trademark law as the legal tool to allow them to receive a stream of royalty from makers of hoodies and the like. If classic trademark principles apply to the situation you describe, then the college would seem to have the right to prevent the business you describe from creating from the "raw material" of a used, properly licensed, trademarked product, a new product that's different from the one that was authorized by the trademark licensor.
Perhaps the most expedient solution would be to seek permission from the college, and hope that they agree to provide it without remuneration, or for but a nominal price. (I surmise that there are a lot of colleges that would be eager to avoid the embarrassment of a story in the blogosphere that they had prevented someone from usefully recycling a product for which the college had already received a licensing fee.)
However, if, hypothetically, push were to come to shove, one might consider raising in court the argument that the school or sports team that's licensed its name or logo to the manufacturer of the clothing item uses the trademark law to do something that's outside of the customary focus of trademark law, namely to assure customers that they're getting genuine goods from a particular source, presumably one they trust to provide the desired quality of goods.
Usually, the trademark of a clothing product is inside the article of clothing (invisible when worn), or on a hangtag accompanying the article when purchased, but discarded before wearing. Some upscale articles, however, do include a trademark that's visible to the world when the article's worn. Those seem to have a dual function: (1) to identify the source of the goods to the prospective customer, and (2) to allow the owner of the product to demonstrate to the world the owner's good taste or level of opulence in having selected such a product, and perhaps also to serve as an advertisement to others for the brand.
Where the "trademark" is actually a college name or team logo, the first-stated function is rather attenuated as compared to the second-stated function. Whether or not this would make a difference in the result of a litigated dispute is open to question, as evidenced by the various responses you've already gotten.
Perhaps one in that situation might, in an appropriate case, persuade the courts to apply, by analogy, the first-sale doctrine of copyright law in a trademark context. This would not be the first time that courts would have imported a legal principle applicable to one kind of intellectual property right into the jurisprudence applicable to another. For example, the doctrine of "contributory infringement" has been imported from patent law into copyright law.
This is, of course, mere theory and speculation and should not be considered in any way to be actionable legal advice. As others have advised, it would be wise to seek legal advice from counsel in your jurisdiction to whom you confidentially disclose all the pertinent facts.
This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an attorney-client relationship. You are encouraged to engage an attorney in the pertinent jurisdiction for confidential legal advice on matters of any importance.
I do not completely understand your use of the term "upcycle," which may or may not be an industry term, but might not necessarily a legal term as such. As I understand the term, it is to re-use products in a re-manufacture process, but you may mean it differently.
I will add to the above comment that it could be an infringement depending upon exact implementation. Remember infringement can be "confusion" or "untrue association or sponsorship." Generally, you can resell an authentic product, as such. It is a formula consisting, in part, of a) use of logo; b) product source; c) implementation. Some else's logo, for a resultant product that is not manufactured by the logo owner, implemented by a third party as a busness model for profit. This is a problematic scenario.
Let's say you have Levi's jeans, and you "upcycle" the product Levi's logo from jeans onto or into a backpack. Then, you sell the upcycled product in the market. Someone sees the product that you upcycled and says , "cool backpack, I didn't know that Levi's made backpacks of that kind and quality." If the owner of the original product does it without a commercial resale, it has one implication; someone doing it as a business model has another implication. There are complex legal issues. Please see an intellectual property attorney to discuss exactly how you are rolling it out. I can think of ways you might do it, and ways you might infringe. So, be very careful.
DISCLAIMER: This information is for thoughtful consideration and is not legal or other advice. You should not, and you may not, rely upon this information. Always engage an attorney who is able to assess your particular circumstances in detail and provide confidential advice to you. Our office has a formal written engagement process with countersignatures on the engagement communication. If you were a client, this method of communication would not be used; communications in public forums may be used against you in a court of law. If you are interested in becoming a client of the firm, please go to my website at http://www.greggzegarelli.com or my law firm website at http://www.zegarelli.com. Please be sensitive to spam filtering, so, if you do not receive a response promptly it implies we did not receive your communication; therefore, please contact us by an alternate method. Thank you!
Generally speaking, there would not be an infringement. The goods that you are reselling are presumably genuine. Therefore, you are not causing confusion as to the source.
Controversies can arise even as to genuine goods. One person bought genuine Mattel Barbie dolls, repackaged them, and resold them. The character he made out of the Barbie dolls was particularly unwholesome. The resulting lawsuit by Mattel alleged many forms of improper conduct.
I do not know what you will be doing. There is a possibility that you could do something that would cause you to be accused of tarnishing the image of the goods you have modified.
This may not ever happen. However, when people ask me if they could get sued, I almost always say, "Hey, this is America."
The above analysis is really speculation. You may want to get counsel and keep your level of expenditure in proportion to your level of risk.
There is no attorney-client relationship established through this site. Establishment of an attorney-client relationship requires a separate retainer agreement that is signed by both the firm and the client. The information provided is not legal advice. Continuum Law does not wish to represent anyone desiring representation based upon viewing this site in a state where this blog fails to comply with all laws and ethical rules of that state. Advertisement.