Modification and resale of items

[lowenstat]

Again, I have stopped all selling of the actual items I was asked to stop and will only allow an in person attorney with a opinion letter to tell me I can start selling again. In the meantime, my reearch has lead me to this point. Also, for more context the items are purchased at retail prices without contracts.

Taking an electronic cable box, removing the hard drive and replacing it with a larger hard drive would not be considered a "material difference"? All the parts and the unit itself are being used as was designed for and in the same manner as was expected them to be used for. Given that there is no material difference so First Sale doctrine holds with respect to this. Contextual problem?

First Sale Doctrine provides that no authorization is needed to sell the item. So, claiming the selling of "unauthorized" goods is baseless. Contextual problem?

Taking pictures of the product that is for sale without altering the trademarks/logos is not trademark or copyright infringment. Contextual problem?

Lanham Act, which provides that fair use is established where "the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, which is descriptive of and used fairly and in good faith only to describe the goods or services. Regardless whether the protected mark is descriptive, suggestive, arbitrary, or fanciful as used in connection with the product or service covered by the mark, the public's right to use descriptive words or images in good faith in their ordinary descriptive sense must prevail over the exclusivity claims of the trademark owner. This tells me I can use the company name, product name and brand name as a descriptive in my ads regardless of what company x would have me believe. Contextual problem?

So far I have the following:

- I can modify the item.
- I do not have to be authorized by company x to sell the item.
- I can take pictures of the item for the ad.
- I can use their company name, product name, brand name and even the equipment facts as defined and retyped by me in my ad.
- In the ad, making sure that consumer udnerstands that I am not company x and that the mods are not performed by company x.

My conclusion is that I am legally able to buy it, modify it, advertise it and sell it.

What are my specific obstacles that I am missing?

I can list only 1 so far and I still have no idea. Would a Patent of item x stop me? Doesnt all electronic items have patents and could a cable box, that has a hard drive, have such a patent that keeps me from swapping hard drives and reselling them? The chips probably have patents and maybe not even from company x for that matter. The hard drive does but company x does not own that patent. Can someone explain this part with examples so I can wrap my mind around it?

Thanks

 

[divgradcurl]

Taking an electronic cable box, removing the hard drive and replacing it with a larger hard drive would not be considered a "material difference"? All the parts and the unit itself are being used as was designed for and in the same manner as was expected them to be used for. Given that there is no material difference so First Sale doctrine holds with respect to this. Contextual problem?

You can't just make this assumption. You need to track down the caselaw where this question has come up, and try and figure out what sorts of modifications the courts have found to material, and which ones they haven't. That's the way the courts will decide what a material difference is, so that's the way you need to do it as well.

Lanham Act, which provides that fair use is established where "the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, which is descriptive of and used fairly and in good faith only to describe the goods or services. Regardless whether the protected mark is descriptive, suggestive, arbitrary, or fanciful as used in connection with the product or service covered by the mark, the public's right to use descriptive words or images in good faith in their ordinary descriptive sense must prevail over the exclusivity claims of the trademark owner. This tells me I can use the company name, product name and brand name as a descriptive in my ads regardless of what company x would have me believe. Contextual problem?

Again, you really need to look at the caselaw on this. You can't just take a random line from wherever you found it and base a legal conclusion on it. You need to investigate how other courts have made the determination whether a particular unauthorized use of a trademark was okay or not, compare the facts of those cases to the facts of your situation, and try and determine whether or not your intended use would be found to be allowable by a court.

As far as the patent question is concerned, if the company hasn't alleged patent infringement, they probably don't have a patent to enforce.

 

[lowenstat]

Very good. I appreciate your replies.

Are you able to provide some varying examples of material difference so I can understand how the courts would see it?

I will be seeking an attorney this week. My confusion at this point is if I should have them give me written opinion or focus on creating a Complaint and Declaratory Judgement for me to file against company x. Any opinions on my what I should have the attorney do for me so I can move forward. For example, if an attorney is will to create the DJ then it probably means I don't need an opinion letter from them, etc.

From all that I can tell so far my problem is going to be in the area of advertising only and that I can change, escpecially given my restricted set of products that do not even sell company x's items anylonger - until I can sort this out better.

I am very curious to know if most attorneys after presenting the ads, emails and products would be able to come to a conclusion at that time like I am able to do in my professional field. It is something they will know right off the bat for the most part?

I am still wondering if I should pick an attorney that litigates and also one that does IP in some form based on my goals as stated.

 

[divgradcurl]

Are you able to provide some varying examples of material difference so I can understand how the courts would see it?

No. I am not up on the current caselaw in this area, and would need to do the research myself -- since you are going to hire a lawyer anyway, they can do the research. Note that I am not trying to be a jerk here or anything, it's just that the type of research you are asking for is time-consuming and can be expensive, depending on the tools used. If you can get to a library that has McCarthy's book, he probably has a section with some cases and analysis to get started on the research.

I don't happen to know this off of the top of my head, and I don't have my own copy of McCarthy at home.

I will be seeking an attorney this week. My confusion at this point is if I should have them give me written opinion or focus on creating a Complaint and Declaratory Judgement for me to file against company x. Any opinions on my what I should have the attorney do for me so I can move forward. For example, if an attorney is will to create the DJ then it probably means I don't need an opinion letter from them, etc.

Ask your attorney for his or her advice -- that's what you are paying for. They will presumably have access to more information and facts (and can see the real ads, and real correspondence) and will be better positioned to help you make a decision.

From all that I can tell so far my problem is going to be in the area of advertising only and that I can change, escpecially given my restricted set of products that do not even sell company x's items anylonger - until I can sort this out better.

Unless they sue you for damages for past infringement. And they may try and obtain an injunction anyway, to keep you from changing your mind.

I am very curious to know if most attorneys after presenting the ads, emails and products would be able to come to a conclusion at that time like I am able to do in my professional field. It is something they will know right off the bat for the most part?

Probably not, but it depends. If you find a lawyer that has worked on cases like yours recently, or a lot, they may have most of the information in their head, and can make decisions without going back and doing the research. If not, they will need to do the research and analysis themselves. They will certainly require time to work on an opinion letter.

I am still wondering if I should pick an attorney that litigates and also one that does IP in some form based on my goals as stated.

Given your situation, an attorney with trademark infringement litigation experience would likely be best -- but any competent commercial litigator should be able to help you.