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Use of part of trademarked logos - US and Canada

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Kytra

Junior Member
This situation is not happening to me, but I am very curious as to the possible legal consequences and defenses in play.

There is a Canadian-based (offices in Ontario and New York) company producing unlicensed material for commercial sale with portions of professional sports teams logos on them. The images are instantly recognizable as part of the team logo, especially in the context of the product (which only marketable because of the sport) and with a player's name and usually image on the product as well. About 10 percent of this particular product line has partial images on it, and I'd guesstimate about 15-20 percent of the logo is reproduced on the product. The product is sold in Canada and throughout the US. All the logos are trademarked.

My question is this - how much of a logo must be reprinted in order for it to be trademark violation and what could potential consequences be if it's in violation? I've done a lot of reading on trademark law tonight, and I'm pretty certain it's a violation. But while I can find text about copyright violations for partial/significant reproductions without reproducing the full item in question, I can't find much about partial use of trademarked images/logos.

This company has had a very contentious relationship with the league in question after the league chose not to renew its license several years ago, but the people in charge also know how to cover their own butts, so I suspect they believe they have a right to reprint these portions of the logos. I just can't figure out their rationale.
 


FlyingRon

Senior Member
You lose. There's no "magic" amount you can omit and escape the possibility of an infringement action. In fact, any thing that would be recognizable as part of the trademark would be found infringing.
 

The Occultist

Senior Member
Kytra, you are lying. And if you're not, then prove it; show us this magical item that is currently on the market that is infringing on marks that you know does not have any sort of license to do so.
 

Kytra

Junior Member
I am not lying, and I have nothing to do with any of the companies involved. I am simply really curious as to how this company thinks it can get away with using parts of the logo.

http://cgi.ebay.com/ws/eBayISAPI.dll?VISuperSize&item=380290099060

This hockey card company does not have a license from the NHL or NHLPA. They lost it after the lockout in 2004-05 when it was given exclusively to Upper Deck, and it has since been given to another company but not the one in question.. The top right corner of the three single autograph cards produced by this company and released in the past week or so is a portion of each teams trademarked logo, the rights of which are held by the NHL.

Here's a link to the image itself: http://img.photobucket.com/albums/v226/cloutsnchara/cloutsnchara/ult10250.jpg
 
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quincy

Senior Member
It is entirely possible, Kytra, that the company in question is or will be sued for infringement. It is entirely possible that the trademark holder (the NHL/NHLPA) is in the process of filing or seriously contemplating filing a suit against the company right now. ;)

FlyingRon is correct that there is no "magic" amount of copyrighted or trademark protected material that is safe to use, without prior authorization from the holder of the rights to use the material. Whether a use is infringing on the rights of the holder or not will be up to a court to decide, if or when the trademark holder sues the alleged infringer over the use of the trademark (or portion thereof).

I suspect you are wrong that the company in question has figured out a way around trademark law to avoid an infringement suit. I think the company, instead, could be playing the odds and hoping they are not discovered or hoping that they will not be sued over their use of the mark. Either that or they have acquired a license to use the partial trademark, or had a license to use the partial trademark at the time the product was first created (perhaps prior to 2004).
 

Kytra

Junior Member
Occultist - The "mystery company" is In The Game, which makes hockey cards. They were licensed until 2004 (maybe 2005) but have been producing unlicensed cards without team names or logos ever since. This is the first time I've seen them bold enough to use part of a logo since losing their license.

Quincy - Thanks. They were definitely licensed at a point in time and have team names and logos on cards produced prior to June 2004, but the product in question was released only a few weeks ago and produced in 2010. My impression is that would not protect them from copyright infringement, but they're been very careful to produce cards without violating trademarks for the past five years, so to see these logos really surprised me.

I'm nearly certain they have a license with the unions for minor and junior players and possibly with the CHL and AHL, and I know they have individual contracts with some retired and active players. But they do not have a good working relationship with the NHL or the NHLPA after producing cards without a license for the past five years. Until this release, however, those unlicensed cards did not use any trademarked material. Their owner seems fairly business savvy, and I'm struggling to reconcile that with what seemed, to me at least, to be a pretty clear case of infringement. That's what I wanted to ask people with more expertise - to make sure I wasn't missing something.
 

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