Selling Reconstructed Hockey Jerseys - Is this legal?

[TMLgirl]

Hi everyone,

I've search and search and can't find the answer to this question. I have a bunch of old (official) hockey jersey's, that lately I've been cutting up and sewing into dresses. My very simple question is, would it be legal to RE-SELL these dresses. The jersey's were purchased legally, and I'm more selling my service of reconstruction. If I state that the dresses are not official, and just made from official jersey's is this OK? I see people selling clothing they've made from old band t-shirts (etc.) all the time.

I want to sell them on the Etsy handmade craft website.

Any help with this matter would be greatly appreciated.

 

[quincy]

Sorry, no. It is probably not legal. You would be infringing on the trademark rights of, in your case, the NHL.

You can create a dress for yourself out of the jersey, but marketing these dresses to others would attract the attention of the hockey league and you are likely to receive a cease and desist letter and a demand for $$$, if not an outright trademark infringement complaint filed against you.

In order to use the NHL trademarks for your dresses (and essentially trade off the NHL's mark), you would need to negotiate a license with the hockey league. These licenses are not cheap and are not often granted.

I should add that all infringement actions are fact-specific and there is no way to really tell in advance what a court decision will be. But your proposed use is at high risk of attracting a lawsuit. You may wish to consult with an IP attorney in your area to get a better idea of this risk.

 

[justalayman]

Sorry, no. It is probably not legal. You would be infringing on the trademark rights of, in your case, the NHL.

.

why wouldn't the first sale doctrine apply?

 

[tranquility]

I don't know if the answer is so clear either. I'm not disagreeing with Quincy, it's just this doesn't seem a trademark issue in the usual way.

I know a bakery that puts M&M's in their cookies, is that OK? I know they don't have a license.

 

[TMLgirl]

Hi again,

I appreciate the replies and will be looking into this further.

How is this different then just re-selling the jersey on say.. ebay?
Obviously people do this all the time, or is this technically not legal either?

 

[FlyingRon]

The production of the garment *IS* covered by the first sale doctrine (assuming the jerseys were obtianed legally on the US market). You need to be very careful to not give any indication that the team (or any other brand) is
connected with you or endorsing your product.

 

[quincy]

The First Sale Doctrine is part of the Copyright Act and covers copyrighted items, not trademarks, however you can re-sell a legally purchased item that has a trademark and be protected from a trademark infringement suit based on the first sale doctrine.

So, you can re-sell the jersey that you legally purchased. You can even re-sell the jersey using the trademarked name to describe the jersey. But you cannot alter a product or modify a product to the extent that it makes a material difference in the product. When altered or enhanced it becomes a new licensable good subject to the licensing requirements of the trademark holder.

Edit to add: It is possible to sell "reconditioned" goods (ie. in the case of rebuilt computers or car engines), however suits over false advertising, dilution, or infringement can result if the words repaired, used or reconditioned are not used prominently.

Another edit to add: See the Copyright Act of 1976, 17 USC §109 for the First Sale Doctrine.

 

[justalayman]

I am not sure that it is illegal although I did read something about creating a new product may remove the protections of the first sale doctrine. Not sure if it is applicable to this type of situation. As such I am just not comfortable stating yes or no.


just to be sure though; you say these were purchased legally. Were they purchased as at a retail or wholesale level.


the other two guys are better at IP law than I. I just like to stir up questions for them.

 

[TMLgirl]

thanks for all the info!

They were all bought retail.
And I am talking about a very SMALL operation (currently I have 5). It seems like my best bet would be to make an appointment and talk to a lawyer since it isn't really cut and dried.

I know a lot of people who sell reconstructed band t-shirts and stuff, but this seems like it might be different....

Not sure if this will help.... but in this link are some pictures of 3 of the dresses
http://www.craftster.org/forum/index.php?topic=334601.0

 

[justalayman]

I know a lot of people who sell reconstructed band t-shirts and stuff, but this seems like it might be different....

or that may be illegal as well and they just haven't been caught.

that is what happens a lot of the time. Unless the TM owner yells, there is no problem. Some TM owners are more diligent in their protective actions than others.

 

[quincy]

tranquility, a company can use a trademarked ingredient in their product as long as the trademarked ingredient is not used to advertise the resulting product, as in the use of M&Ms in a cookie. The cookie company cannot say it uses M&Ms without authorization from Mars to use the Mars trademark.

Disclaimers can help, advising the consumer that Mars does not produce the cookie product so that there is no consumer confusion. But disclaimers will not prevent lawsuits.

Here you have a product that is being altered and sold for commercial gain. If it were not an NHL jersey being used, for instance, the market for the "jersey/dress" would be different. The reason someone may be interested in purchasing the dress is because of the NHL trademark.

What TMLgirl risks here are infringement, dilution and/or unfair competition suits brought by an organization that zealously protects their trademarks. I think she would be wise to consult with an attorney in her area prior to marketing the dresses.

Edit to add: The dresses are very cute but they trade off the NHL trademark, and I have a sneaking suspicion that you will hear from the NHL if you market them.

 

[JustAPal00]

Would removing the NHL shield, and not using the parts that had the team logo make a difference? Or how about half of the logo?

 

[quincy]

It depends, JustAPal00. Team colors are also subject to trademark protection, and half a logo would probably identify the trademark sufficiently to irk the NHL.

The best thing for TMLgirl to do is to sit down with an IP attorney in her area and go over the risks involved in altering a trademarked product for resale. And there are risks.

She can certainly use her NHL jerseys to make dresses for herself. They're cute and I can see where there could be a market for them. But trying to market them without a license from the NHL will most certainly attract NHL lawyers.

 

[You Are Guilty]

Even if the reconstituted use is legally defensible, as a practical matter, what happens when the NHL decides to sue anyway? I would imagine most normal dressmakers lack the resources necessary to mount a vigorous defense to a Federal infringement suit.

 

[quincy]

Agreed.


As an aside:
The NFL recently had to apologize for their attempt to prevent the sale of "Who Dat" tee-shirts when they discovered they did not actually own the rights to this New Orleans Saints' slogan.

The NFL had distributed several cease and desist letters to stores selling the Who Dat tee shirts, threatening trademark infringement suits. Governor Bobby Jindal considered asking the state AG to investigate the matter and potentially sue the NFL, before the NFL apology was issued earlier this month.

Had the tee shirts included the NFL logo or Saints name or even the team colors, THEN a trademark infringement suit by the NFL would have been legitimate.

U.S. Senator David Vitter is selling, by the way, "Who Dat Say You Can't Print Who Dat?" tee shirts, to benefit the Brees Dream Foundation.