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Is this really copyright infringement?

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jenjenk

Guest
What is the name of your state? NJ

I sell my artwork on eBay. The paintings are designed by me and most of them are painted to coordinate with kids bedding sold by a well known company (not sure if I can say this company's name). At first, I was including this company's name in my auction title so that when a consumer did a search for that name, my paintings would come up. Then, I find out that eBay has a policy prohibiting sellers from including name brands in their auction title just to attract attention. So, to fix this, I started auctioning my artwork along with a small, inexpensive item sold by this name brand company so that, as far as eBay is concerned, I wasn't violating any policies. Now, I am being accused of copyright infringement by a representative of this name brand company. She tells me that "It is (name brand company)'s view that selling a (name brand company)'s product with
your non-(name brand company) item constitutes trademark infringement." But she also tells me that this policy is not posted anywhere. I understand why she may feel that this is "cheating" but I don't see how it is infringing on copyrights. Any advice would be greatly appreciated!!
 


atozcom

Member
I sell lot of products on ebay. Some of my products are accessories for a prticular product of BigGuy Corporation. A Lawyer of BC wrote me about trade mark infringement and copy right violation. After I consult with a Patent, trademark and copy right lawyer, this is what I was adviced to do:

I can say "blah blah blah blah blah FOR BigGuy thing" and is not a trademark infringement.

example:

Good: Battery charger for Nikel model xyz shoes
No Good: Nikel model xyz shoes battery charger

Include a trademark disclaimer something like:

Nikel Model Xyz are registered trademark of BigGuy Corporation. This product is not made by BigGuy Corporation. Seller is not affilated with BigGuy Corporation.

It has been two months ago and I have never heard from this BigGuy corportation.

ebay do not want you to include in your title or description any thing that is not true. If you product has nothing to do with Nikel shoes then you cannot memtion about Nikel shose. If you are selling a Sony Camera, but include Nikon or other brand name in the title or description to catch Nikon searcher is not allowed .

Something like : "New Sony Digial camera MVC125 Nikon Canon" is not allowed by ebay.
 
J

jenjenk

Guest
Thanks for the advice! The only problem is that I am selling two completely unrelated items - a painting and a candle(the candle is made by the name brand company). My paintings are only done to MATCH the name brand company's bedding but the rep of this company is telling me that I am selling a "token item" (the candle)to lure consumers to view my painting. BUT, is that considered copyright infringment? Thanks again!
 

divgradcurl

Senior Member
This is a little confusing. Is this a copyright issue or a trademark issue?

atozcom is right on with respect to the use of a trademark in advertising. However, you state that you are making paintings that coordinate with the company's bedding sets. There are two issues here.

First, companies generally do not allow their trademark used in such a way as to make it appear that a non-licensed or non-sanctioned item is somehow associated with their company. Here, because you sell a "token" item along with the item you made (that looks like or coordinates with their item), it can appear to a consumer that your item is actually sanctioned or otherwise licensed by the company, and this "confusion" is what trademark law is designed to prevent. As an example, lets say I had two shirts for sale on eBay -- an Izod polo shirt (do they still sell those?), and another no-name polo shirt, with the title "2 Polo Shirts -- Izod". Even if I clearly point out in the description the truth of the matter, Izod is going to come after me (if they are still around!), because the _implication_ is that _both_ shirts are Izod, a buyer could be confused and bid thinking that both shirts are Izod, and Izod may not want to be associated with the lesser-quality shirt. This is the sort of thing that the company is worried about, and is part and parcel of trademark law.

Second, if the company's bedding design is distinctive, it is possible that they have registered the design of their bedding as "trade dress" (part of trademark law), and therefore they have the right to control how their registered "trade dress" is used.

In a similar vein, their distinctive design is certainly covered by copyright, and creating your own products using their distinctive design may be a violation of their right under copyright law to control the creation of derivative works.

If you purchased the candles wholesale from a distributor, the company may have rules as to how the product is sold\marketed that you will also have to follow. If you purchased the candles from another retailer, then you are clear at least on this point.

Have you tried to talk with the company about working out some sort of licensing agreement?
 
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jenjenk

Guest
Thank you divgradcurl! Your Izod example says it all. In one email the rep said that it is copyright infringement but her most recent email says trademark infringement. Here is a copy and paste of an email the rep sent to me (this time I am including the brand name since everyone else is using them) -

"It is Williams-Sonoma, Inc.'s view that selling a Pottery Barn candle with your non-Pottery Barn item constitutes trademark infringement. You are using the Pottery Barn name to draw customers looking for Pottery Barn products to view your non-Pottery Barn product. Using a famous brand name to draw attention to a product from a different brand constitutes trademark infringement. We will continue to take down eBay auction items that infringe any of our rights."

As far as talking to them about a licensing agreement, I'm pretty clueless about what that would involve or cost but my guess is that a large company like this would want nothing to do with me.

Thanks again!
 
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jenjenk

Guest
Yes, she is a member of their "VeRO" program (Verified Rights Ownership) and when they report auctions to eBay, eBay is required by law (from what I've been told) to remove the listing without even reviewing the auction. But, apparently, the VeRO member is required to sign a legal document stating that the auction is infringing on their copyrights. From what divgradcurl has said, my auction is considered trademark infringement so there's nothing I can do about it. My auction titles always read something like "Butterfly painting and pottery barn candle" which is not deceptive as saying "pottery barn candle and painting". The latter is giving the impression that both are from Pottery Barn but my title (and description) are both clear that only the candle is from pottery barn.
 

divgradcurl

Senior Member
atozcom,

the reason eBay pulls these listings is because once they are on "notice" that their service is being used for infringement, if they don't do something about the situation, they could he held liable for vicarious or contributory infringement. When a trademark or copyright holder notifies eBay that one of their rights is being infringed by a posting, eBay is considered on notice, has really only three possible responses.

First, they could ignore it, and face a lawsuit for vicarious and\or contributory infringement. Since eBay has very deep pockets, they would be a tempting target.

Second, they could investigate and try and determine if the posting is indeed infringing, but this is way too much work, and besides, infringement is a matter of fact, not law, so it could esialy end up in court either way, and in this case, eBay would, in a way, be indemnifying the sellers while taking on substantial risk themselves.

Finally, they can simply remove the offending posting, and put the burden on the seller to work things out with the rights holder, or put up a different posting.

Obviously, the final possiblility makes the most sense by far for eBay, even if it does make it more difficult for the little guy. However, the issues that sellers are facing on eBay with respect to copyright and trademark infringement would be the same issues that would be faced if the sellers were selling the same products out of a storefront, so there is nothing nefarious about eBay. eBay does make it easier for a rights holder to keep tabs on things, since it can be done automatically by a computer program,...
 
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jenjenk

Guest
divgradcurl,

You said that infringement is a matter of fact, not law. Can you explain that?
Also, would it be considered trademark infringement if I listed an auction for (using your example) "Pair of jeans and an Izod polo shirt"?
 

divgradcurl

Senior Member
"You said that infringement is a matter of fact, not law. Can you explain that?"

Okay, maybe that's not the clearest sentence I've ever written. What I was trying to get across is this: if the speed limit is 55, and you are doing 56, you are in violation of the spped limit -- it's a "bright-line" rule. However, trademark infringement is determined by considering the facts specific to the issue at hand, and then applying those facts to various tests to try and determine if infringement is occuing. For a "trademark confusion" analyisis, for example, there are 8 factors that need to be considered -- likelihood of confusion, sohpistication of the buyers, similarity of marks, etc. What this means is that there is no simple way to determine if any single event is infringement, without performing the complete analysis -- there is no analog to the "55 mph limit" in trademark that will tell you precisely what is "okay" and what is infringing.

"Also, would it be considered trademark infringement if I listed an auction for (using your example) "Pair of jeans and an Izod polo shirt"?"

See above. Look, as long as the trademark holder continues to contact eBay, eBay is going to pull down your auctions -- as I mentioned before, there is no upside (and a lot of downside) for eBay to ignore a trademark holder's allegations. Keep trying different titles, maybe you'll find something that you can get away with...
 
J

jenjenk

Guest
Oh well, I guess if I were wealthy enough to fight this I wouldn't be selling my paintings on ebay! Thanks again for your advice divgradcurl!
 
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hexeliebe

Guest
Why don't you just call or write to Williams-Sonoma in San Francisco. They just recently went through a re-organization and bankrupty and they just might think free advertising and sales would be a good thing.
 

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