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Selling Reconstructed Hockey Jerseys - Is this legal?

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TMLgirl

Junior Member
again, thanks for all the information. I will talk to some lawyers I know (I'm in Canada). And then go from there, I might just display them and offer the service of altering peoples for them or something (I am not a dress maker, I'm a PhD student and I just do this for fun), then maybe have a sample sale... :p I think the NHL has bigger fish to fry, like all the exact replica fake jerseys that actually get sold at sports stores!

thanks everyone for replying....
 


TMLgirl

Junior Member
Just to update: From talking to some people involved in the field, and getting some pro-legal advice, it would seem that I am technically covered by the first sales doctrine. And that people who do similar things to mine have been asked to remove listings by major companies from time to time as a general rule before getting a cease and desist, and if you tell the company you understand your rights under the first sales doctrine they tend to back off.
 

You Are Guilty

Senior Member
You may very well be, but the point I was trying to make earlier was that First Sale is a defense to a law suit, it does not stop someone from suing you. So even though you have have a airtight defense here, you still have to deal with a potential federal lawsuit, which, even as a lawyer, are generally not fun, so I imagine that for a layperson, they must really suck.

In any event, until something actually happens, this is all hypothetical, so you may get lucky after all. Good luck either way.
 

quincy

Senior Member
I am not so sure, YAG, that the first sale doctrine is an "airtight defense," but I agree it is probably the only defense TMLgirl would have if the NHL decides to pursue the matter.

And, despite what TMLgirl may have heard, I am also not so convinced that the NHL will simply "back off" and allow her to sell her altered jerseys. I hope for her sake that that is the case.

There is a "material difference" exception to the first sale doctrine. This exception has been recognized by the 1st, 2nd, 3rd, 5th, 9th and 11th Circuits and the Federal Circuits. I have listed just a few of the cases where this is discussed:

Davidoff &CIE SA v PLD International Corp, 263 F.3d 1297 (11th Cir 2001): "Resale of genuine trademarked goods generally does not constitute infringement. This is for the simple reason that consumers are not confused as to the origin of the goods: the origin has not changed as a result of the resale. . . The [first sale] doctrine does not hold true, however, when an alleged infringer sells trademarked goods that are materially different than those sold by the trademark owner. Our sister circuits have held that a materially different product is not genuine and therefore its unauthorized sale constitutes trademark infringement."

Montblanc-Simplo GmbH v Staples Inc, No. 01-10235-DPW, 2001 US Dist. LEXIS 7905 (D. Mass May 3, 2001): "The mere showing of a material difference between the goods simultaneously sold in the same market under the same name creates a presumption of consumer confusion as a matter of law."

Societe Des Produits Nestle, SA v Casa Helvetia, Inc, 982 F.2d 633 (1st Circ 1992): A material "difference is any difference between the registrant's product and the infringing product that consumers would likely consider to be relevant" when purchasing a product.

Intel v Terabyte International, Inc, 6 F3d 614 (9th Cir 1993): "Terabyte's interpretation of the Lanham Act focuses only on the identification function of the trademark and improperly ignores the goodwill, reputation, and consumer protection functions associated with a particular trademark."

El Greco Leather Prod Co, Inc v Shoe World, Inc, 806 F2d 392 (2d Cir 1986): "One of the most valuable and important protections afforded by the Lanham Act is the right to control the quality of the goods manufactured and sold under the holder's trademark."

Again from the Davidoff court: "The caselaw supports the proposition that the resale of a trademarked product that has been altered, resulting in physical differences in the product, can create a likelihood of consumer confusion. Such alteration satisfies the material difference exception and gives rise to a trademark infringement claim."

See Section 32 of the Lanham Act, 15 USC §1114(1) and Section 43 (a)(1), 15 USC §1125.
 
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TMLgirl

Junior Member
I appreciate the advice! I really do. I wouldn't have asked if I wasn't worried about it. Just from talking to some lawyers and from people who do the same thing (with harley davidson merch. and otherwise) it seems like if you aren't really a 'big' operation they don't deal with you too much. And I'm not.


And just to be extra safe I'm going to market it at as a "jersey alteration service" so then I don't have to go out and buy the jerseys, modify them and sell them. But instead offer to have people SEND me their jerseys and pay me for the ALTERATION that they choose. And just have the ones I've already done as style samples. I think then I'm pretty safe! Then maybe at some point sell then ones i've already done as a 'sample sale'. I'm looking to put at most, 5 hours into this a week.
 

quincy

Senior Member
I decided to post the above info only because "airtight defense" nagged at me, YAG. I am not sure there is any such thing in law. I was hoping div would post so I could avoid the research. ;) :)

You sound like you are being cautious, TMLgirl, and that is wise. Actually large organizations like sports organizations, movie studios, athletic wear companies, music companies. . . will go after the "little guy" probably more often than they go after the big infringers, although generally through cease and desist letters and not so much through expensive infringement suits. A cease and desist letter and the threat of a lawsuit from a company's team of lawyers tends to effectively stop infringers.

Owners of trademarks must defend their own rights, and most of these large organizations defend their marks vigorously (hence the NFL's distribution of cease and desist letters to all of the stores in Louisiana selling "Who Dat" tee shirts, even though these stores were mostly small operations - and even though these tee shirts wound up not infringing on the NFL's rights).

Remain cautious, TMLgirl, and you should avoid receiving any letter with an NHL return address. ;)
 

divgradcurl

Senior Member
again, thanks for all the information. I will talk to some lawyers I know (I'm in Canada). And then go from there, I might just display them and offer the service of altering peoples for them or something (I am not a dress maker, I'm a PhD student and I just do this for fun), then maybe have a sample sale... :p I think the NHL has bigger fish to fry, like all the exact replica fake jerseys that actually get sold at sports stores!

thanks everyone for replying....
I think the bolded piece is the key here. If she is going to get sued, she is going to get sued in Canada under Canadian trademark law, and I don't know how the first sale doctrine (assuming they have one) works in Canada...
 

TMLgirl

Junior Member
I think the bolded piece is the key here. If she is going to get sued, she is going to get sued in Canada under Canadian trademark law, and I don't know how the first sale doctrine (assuming they have one) works in Canada...
First sales principle is the same or very similar (according to lawyer). Thanks again for all the advice though, I was just looking for general thoughts.
 
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