Contacted by manufacturer about our website

[netmage]

1> Do not use anyone else's photos in displaying the items... No "borrowing" photos or text from their website....
2> If possible - do not list the make\model in your text. Simply say "mask", "fins", "regulator".
3> Name the entity harassing you...
4> Clearly state the origin and condition of the product.

I can't see how you would be operating any differently than a consignment shop or private individual.

 

[Peter Guy]

Just a quick response from the peanut gallery. Disclaimer -- I know next to nothing about the laws of the OP's jurisdiction regarding merchandising, bulk sales under the UCC, etc. nor did I ever practice IP Law (although I paid a lot to attorneys for some education).

That written, I do NOT understand why people who have not studied Law feel they are entitled to post legal opinions. Yes, this is the internet -- but Come On. Don't you feel you need to have some basis for your opinions before you post them?

For example, TSandM spouted off about this issue as if she had any particular knowledge. Now I listen to her when she writes about medical issues, but legal issues?

OP -- pay your attorney, listen to her and make your decision as to what you are going to do based on the risk assessment she provides. It is merely a cost of doing business.

{Note -- I thank the Good Lord every day that I no longer need to make those decisions. I love being retired!}

 

[Reggieb]

It's up to the trademark/copyright owner to enforce their intellectual property rights. I have several clients that can and do get ebay auctions taken down when they infringe on their marks. When you know the law and how to navigate its waters, it's quite simple. Most of the time it's a matter of unintentionally violating the trademark or copyright. I know companies that will send ebay posters correct info on how to refer to their products in a non-infringing manner; they don't necessarily want to pull the listing, they simply don't want their trademarks put at risk.

From what I understand (disclaimer: limited legal knowledge), there is a legal difference between a storefront and an auction house. Those vendors that can crack down on eBay have to come at it from a different angle. A good example is software like 3D Studio Max, I don't know if it still does, but back when I used it, it came with a hardware lock. Pirated copies had to circumvent this security measure, and that circumvention is illegal. So they can crack down, even if you are selling as a second party.

Am I wrong about this? You seem to know a little more about it than I.

 

[RJP]

I asked my husband, who is an attorney, this question, and he said there may well be state laws applicable to limit what you can do when reselling items as new. He also voiced the trademark/brand concerns. So I guess I was wrong with what I wrote above. It boggles my mind that you can be stopped by a manufacturer from selling their goods SECONDHAND at whatever price you want, but apparently it's true.

Again, the idea is NOT that you can be stopped from SELLING the stuff...it's the ADVERTISING of the stuff that would infringe on the trademark/copyright issue.

Literally, if you have someone in an advertisement wearing a visable Nike logo - on their shirt, shoes, hat, whatever - you are infringing on their trademark. (Even if that's not what you're selling.)

Same is true if you use a copyright-protected name or registered trademark in an ad for scuba gear...even if that is merely the appearance of the name or logo on the item itself.

 

[RJP]

Hi Everyone,

Thanks for the replies. RJP... PM sent to you last night. Based on info from my lawyer, he stated basically what RJP suggested. Copyright & trademark issues most likely.

RoatanMan... No, that is not our site.

Been in meetings, so haven't had a chance to reply. Look for PM shortly, but your lawyer may have suggestions as well...if he's versed in IP/Copyright/trademark stuff.

 

[RJP]

Am I wrong about this? You seem to know a little more about it than I.

The main difference at point here is likely the precise way the trademark/registered trademark is used by the seller.

The law (Lanham Act, for anyone interested) permits a non-owner of a registered trademark to make "fair use" or "nominative use" of a trademark under certain circumstances without obtaining permission from the mark's owner. The fair use and nominative use defenses are to help ensure that trademark owners do not prohibit the use of their marks when they are used for the purpose of description or identification.

So what you want to be able to do is DESCRIBE the items that you are selling, which is acceptable. If you went further, and used the mark in a way that implied a relationship between yourself and the mark owner, or that you were the mark holder, or applied the mark to products that were not from the mark holder, you'd be infringing.

For example, I can sell a Rolex watch on E-Bay under the username RJP, or on my own website called RJP-The-Watch-Guy.com and list something like "For sale: One Rolex Explorer II watch, brand new and unworn. (Note: I am not an authorized dealer or in any way affiliated with Rolex.)" and show a picture of the actual watch in question:

The above would be an adequate defense against trademark infringement as nominative "fair use" of the Rolex name, the Rolex logo on the watch itself, etc, because I am merely using the mark and information to describe a specific item I am selling.

However, if I listed the same thing on E-Bay with username "Rolex-Direct" or a similarly named website and said "For sale: One Rolex Explorer II watch, brand new and unworn." and then used stock art from the Rolex website for the photo (which is also copyright violation as well) - I'd be in trouble:

In doing it this second way, I am not describing a specifc watch I am selling, but I am infringing upon the Rolex trademark by implying that I am a seller of Rolex watches, authorized or otherwise.

There are other "gotcha's" you need to watch out for as well. For instance, look closely at the box - or ads - for this product...

...and you'll notice that the item in that box is not called "a Band-Aid" or "Band-Aids" but rather they are always properly refered to as "Band-Aid brand adhesive bandages."

If you are selling a box of these things - whether you're an authorized seller or not - and you advertise them as "Band-Aids" it is not unlikely that you'll get a call from a lawyer in New Brunswick, NJ pretty soon. (I can give you his name and direct dial extension if you like.)

Clients like J&J spend billions of dollars to establish their brands and trademarks; they go to great lengths themselves to ensure they don't violate or dilute their own intellectual property...they certainly need to ensure that no-one else does either.

 

[miketsp]

Some light reading with some interesting tips on what you can and can't do.

 

[Doc]

RoatanMan... No, that is not our site.

I agree with Roatan Man too....without knowing what you are offering and how you are offering it, it is hard to say the manufacturer is in the wrong. It all depends on how the info is delivered...

I did a nexus of advanced searches using variuous combinations of "Chicago SCUBA Illinois Discount" etc.

I only found that one site. (that was new, roughly matched your personal data, etc)

Back to my main point- If you are invisible to me, how is it that someone else managed to find you to complain?

Something bloody strange, here.

Post the website. No one will consider it advertising, you are here looking for opinions on this, right?

 

[chicagodiveguy]

Thanks again to everyone for responding, the PM's and opinions, too.

Although a few have asked, I do not intend to share the website. You'll just have to take my word for it, that what I originally posted is accurate. I clearly state who we are, and where the products were obtained on the website.

Something bloody strange, here.

No... nothing strange going on. I just don't want any additional hassles from other vendors that I have their products currently listed on the site. In addition, what about the complaints they will then get from the current authorized dealers. (Who I am sure will find this thread if they havn't already) It would just open a can of worms.

Back to my main point- If you are invisible to me, how is it that someone else managed to find you to complain?

You just didn't look in the right spot. - Kidding aside, the site has hundreds of pages indexed in google and other search engines and receives many unique visitors on a daily basis. Not huge... but enough are looking, and finding what they are searching for.

I assume either the vendor found it by accident, or potentially another dealer found it because someone wanted a price match, and they reported it to the vendor.

Let me give you an example. (And no... I'm not picking on Dive Right In Scuba here! - this example is fictional to make a point.) Dive Right In Scuba, an authorized dealer, is selling a mask on his site for $69.99 a dealer MAP price - But I post my website in this thread and now everyone goes to check it out and see... but, I have the exact same mask for $49.99 because I do not have to abide by MAP rules as I am not an authorized dealer, and I got it cheap - How long do you think it would take for Dive Right In Scuba to notify these vendors we "share" about my site/prices, and how long before they come after me now?

Thanks again everybody. Based on the responses, good info from a few sources, and my lawyers input - I *think* I know what direction to head.

 

[Dive Right In Scuba]

Let me give you an example. (And no... I'm not picking on Dive Right In Scuba here! - this example is fictional to make a point.) Dive Right In Scuba, an authorized dealer, is selling a mask on his site for $69.99 a dealer MAP price - But I post my website in this thread and now everyone goes to check it out and see... but, I have the exact same mask for $49.99 because I do not have to abide by MAP rules as I am not an authorized dealer, and I got it cheap - How long do you think it would take for Dive Right In Scuba to notify these vendors we "share" about my site/prices, and how long before they come after me now?

Others have done it for years...LP did it for a long time and still does on certain items. We match most gray market stuff anyway if it is new. I can think a few of our local competitors that would not be happy. Hell, if I wanted the stuff I would have bought it Do your thing. I have some stuff on my site that I get from another store...who is still in business. So I don't see any issue with it. Make your money

I would love to know who is giving you a hard time....If its a rep, a dive company, legal dept., new kid in behind a desk....