If the NFL issue a C&D letter or just sue you, what are you going to do?
You might win, you might not, take some legal advice before risking your company, don't take advice from a forum, especially me.

 

I've already copyrighted the logo

To properly protect a logo, you should have it trademarked. Copyright doesn't usually apply to logos and doesn't have as strict a level of protection and legal recourse.

My t-shirt/foam finger line would still have a market without the team logos

To be honest, if your product has a market without the use of existing trademarks, you should just go that route. Getting caught up in a legal hassle with the NFL is probably not going to end well.

But if I could use the official NFL team logos, it would make my line more marketable.

No doubt about it. And the NFL knows this. That's why they charge $100,000 in yearly licensing fees plus royalties.

Licensing the team logos is out of the question due to financial constraints.

If you can't afford the licensing, then you cannot afford the legal fees to defend whatever circumvention you come up with.

But is there a way around?

You should probably consult an attorney. But my free advice is that any "way around" will still carry the risk of being sued. I don't think you will find any way around it that will be completely risk free. But again, consulting an attorney will give the most complete answer.

If I sell my shirts/foam fingers and include a sticker(with a price adjustment to reflect the sale so the NFL gets their precious money)that can be applied by the customer later using little effort, would that circumvent the law? I mean, the NFL is still getting their money

You can't just sell NFL merchandise and send them a check. You have to be licensed to design, produce or distribute the product.

That said, if you buy a licensed NFL sticker and it's your own property, then you can resell it (to a friend or on ebay, etc). But it's when you market your product to consumers as an NFL product without proper license is where you will have legal issues.

I'm not selling the shirt using their trademark.

Yes you are. Just because the logo is not actually printed on the shirt doesn't mean you are not illegally using their trademark for profit.

I just happen to be selling two distinct items that would sell without each other.

Yeah, but one of the items you are allowed to sell. The other requires a license that you don't have.

 

If I sell my shirts/foam fingers and include a sticker(with a price adjustment to reflect the sale so the NFL gets their precious money)that can be applied by the customer later using little effort, would that circumvent the law? I mean, the NFL is still getting their money and I'm not selling the shirt using their trademark. I just happen to be selling two distinct items that would sell without each other.

I'm not clear if you are buying the NFL stickers or printing them? Certainly, printing stickers is as illegal as printing the logo directly on your product. But if you are buying the licensed stickers and including them with your product, that's perfectly legal.

 

But if you are buying the licensed stickers and including them with your product, that's perfectly legal.

I'm not sure I agree with you here, Joe. If he were simply reselling the stickers or even giving the stickers away as an extra, then maybe. But by combining the two, he's creating a new product that is essentially a licensed product without a license. Even if it were legal, it would probably be enough to get the attention of NFL attorneys anyway.

 

So basically, if something's hard, don't try?

I just wanted to know if it was legal. I understand this is a forum, not legal counsel, but I thought you might have some insight. And you really hit the nail on the head when you said I could sell a sticker on ebay. That's precisely what I intend to do. But I plan on selling two things under one item number. Isn't that what people do all the time? Suppose I sell a PS3 and include a game. Sony gets their money and the company that made the game gets theirs(granted they have to give a percentage to Sony). Maybe that's a bad example, but my point is that you can list two independent items within one sale. Just because I say they can be used together does not mean they are dependent on each other. They enhance each other. I would never advertise the finger with an NFL sticker on it.

So I guess that you did, in fact, answer my question when you conceded that I could sell an NFL sticker on ebay. As for the copyright, I know it doesn't provide adequate protection. I'd like to be selling the shirts/finger on ebay before I apply for a trademark.

And please in the future, don't just be a naysayer. I understand there's risk. I wanted to know first if it was legal and second if they would have any grounds for an infringement suit.

 

So basically, if something's hard, don't try?

You didn't ask if it was hard to do. You asked if it was legal to do.

And please in the future, don't just be a naysayer.

My apologies if it came off that way. But I was simply answering your questions with as much information as possible. Unfortunately, this topic usually consists of more negative than positive.

I wanted to know first if it was legal and second if they would have any grounds for an infringement suit.

Yes, the NFL would have grounds for legal action if you were profiting off their IP without license or permission.

Part of infringement is the confusion that is created in the marketplace. So if the consumer is buying a product that they believe is associated with the NFL, but isn't legally associated with the NFL, then that confusion is the grounds for infringement. So even when something appears legal, it can still be grounds for legal action.

 

Do it and let us know how you get on. You might get away with it, you might get away with it for a while.

 

What am I getting away with? I'm asking if it's legal. If it's legal, I'm not getting away with anything. I'm merely following the law. This is the naysayer talk I was talking about. If there is any doubt or hardship, scrap all your plans!! That's what your two posts have contributed to this discussion. If you're not going to give it thought, why post? You're just throwing out disposable advice.

 

The only question I have is if you bundle the two together and sell the item(s) in one auction on eBay what is the perception of the buyer regardless of any disclaimer text that you might add to the item description?

Like Joe I don't think it would playout well even on eBay, it's not the wild west it use to be, yea you might sell 4 or 6 but eventually someone selling licensed products will see the auction and eBay will pull them.

JMHO

 

Best to ask the NFL.....A "cease and desist" may be just a "little" pain but if you end up getting goods seized it could be a "big" pain...

 

Kimura, would you change your mind if I sold both the foam finger and the decal on ebay in two separate transactions? Or how about this? What if I include a link on the page for a 'decal enhancement"? Tell me if you think there's any room here for finagling. Thanks.

 

Kimura, would you change your mind if I sold both the foam finger and the decal on ebay in two separate transactions?

As long as the decals were licensed, I suppose you could legally resell them as a separate item. There would probably be a terms and conditions with the supplier that would explain whether resale is allowed or not.

But why would someone make the two separate purchases? At that point, your shirt is standing on it's own without the need for an NFL decal. Seems like you're trying to re-invent the wheel more than blazing a new path.

What if I include a link on the page for a 'decal enhancement"?

I think the link would bundle the two products together, creating the same issue as selling them together.

 

In reality all the "free" legal advice you get here will have a significant cost if it is wrong and you rely on it....

 

Thank you Joe for supporting your point of view. I appreciate all the feedback from everyone but yours is the most helpful(and not just because it supports my point). I think most of the posters on this forum are just so used to people not taking no for an answer when it comes to legality that their first instinct is to just shoot everything down strenuously.

I really tried to understand kimura and maybe it's my fault for not communicating well. But I see the sale of my item with their item as win-win for both parties. If anything it's another way of paying the NFL's licensing fee one sale at a time. I have to purchase each sticker at retail value. I will take kimura's advice, however, and be mindful of my marketing strategy.

 

I really tried to understand kimura and maybe it's my fault for not communicating well.

You didn't understand me because I was saying something you didn't want to hear. I now agree with Joe regarding the sale or giveaway of the sticker. But I stand behind my point about bundling the products together or marketing in any way that the sticker can be used or applied to the t-shirt. I think in all practicality, that will create confusion in the market and substantiate the NFL's claim to trademark infringement.

But I see the sale of my item with their item as win-win for both parties. If anything it's another way of paying the NFL's licensing fee one sale at a time.

NFL licensing doesn't work that way. If you want to be licensed, go through the application process. But you won't be able to pay the fees one sale at a time. And you may as well get licensed to actually print the logos on the shirts.

The whole point of this idea is that you intend to resell the stickers and rely on the first sale doctrine. If this is the case, you wouldn't owe them anything. The NFL would get their royalties from the licensed sticker manufacturer. By sending them a check, you would only be alerting them to what you're doing.

 

Also:

"The general rule is that a trademark owner's authorized initial sale of its product exhausts the trademark owner's right to maintain control over who thereafter resells the product; subsequent sales of the product by others do not constitute infringement even though such sales are not authorized by the trademark owner."

Trademark Law - Material Difference

 

Ed, it's obvious that all you did was come here to have an argument. You know what you want to do, you know it's legally dubious, and you're trying to use us to self-justify. But that's not what we're here for.

If you stopped blustering and actually listened to the advice people are offering you'd hear an almost unified voice with that industry specific experience you were looking for: legality is not the only thing that matters. If they see you, corporations like the NFL will crush you. Not might crush you, not "maybe I could blaze a path", will crush you. If they don't, it's because you're so tiny as to be below their radar, which means you're not making enough money to make the effort worthwhile. We say this based on precedent, not a fear of "corporations being all corporationey".

I'd also point out that when you sell on a place like eBay, things are even less in your favour. eBay cast a wide net when big businesses issue a takedown notice, to the point where they've even been known to remove legitimate listings from licensed sellers who just weren't big enough to be known to them, let alone some grey area stuff that's only going to be sorted when (if) it gets in front of a judge. eBay don't care whether or not something is legitimate. They care whether or not it looks legitimate, and who is asking them to care. If the NFL don't notice you, eBay are happy to take your money. If the NFL do notice you, eBay don't care one iota if what you are doing is legal. As has been said, it's not legality you have to worry about - it's the appearance of what you're doing from the perspective of the NFL.

Corporations really do have more power than the legal system does. Again, we don't say this out of fear or some kneejerk desire to shoot you down - we say it because we pay attention.

 

legality is not the only thing that matters.

I agree 100%.

From a business standpoint, it would be foolish to take the risk of infringing on NFL property. Since Ed believes his product can stand alone without the NFL decal, he can easily launch his business successfully without the legal risk.

From a practical standpoint, I think there is a 0% chance of NFL attorneys saying "Wow, I think Ed really outsmarted us here and figured out the perfect way to infringe and there's nothing we can do." And I think there is a 100% chance that NFL attorneys will send a cease and desist letter regardless of whether they think what he's doing is legal or illegal. Because if he abides by the C&D, then the legalities won't matter. If he doesn't abide by the C&D, then the attorneys will take the time to file a proper lawsuit. And chances are, they will find a way to substantiate their infringement claim. What a judge and jury decides will remain to be seen, but the cost of defense will probably wipe out whatever profit he made in the first place.

 

You would be breaking all kinds of laws by printing and selling a trademarked name, and copywriter images, you will probably get away with it for a while, but you never know just how hard the NFL will decide to come down on you when you get caught.

You can not use the NFL Brand name to promote your company or website without their expressed permission. Any advertising be it in a title, image, or meta tag could be seen as trademark infringement, which can have quite harsh penalties.

As was said before you can try and get away with it for a while, is it legal though? Not unless the NFL says it is.

 

Ed, It might be borderline legal, but what gives you the right to profit from someone else's work? Morally it's dubious. You are clearly linking your goods to the NFL.
I'm no fan of the NFL, I think that they should be sued for misleading selling with the word football, they never seem to kick the ball with their foot and their claims of a world champion are just ridiculous, and don't get me started on baseball...

 

I'm no fan of the NFL, I think that they should be sued for misleading selling with the word football, they never seem to kick the ball with their foot and their claims of a world champion are just ridiculous, and don't get me started on baseball...

Spoken like a true Brit.

 

It's not the same situation but does show a parallel in what happens on eBay when a company notices you.

Court smacks Autodesk, affirms right to sell used software

The interesting exert from the text is this.....

Vernor makes his living selling used comic books, video games, software, and collectibles. He obtains these items at garage sales, office sales, and flea markets and auctions them off on eBay. When he began selling used copies of AutoCAD software, he attracted the attention of its manufacturer, Autodesk, which began filing infringement notices under the Digital Millenium Copyright Act. After each notice, Vernor filed a counter-notice stating that he was selling authentic, used copies of the software. After the fifth such altercation, eBay suspended his account, preventing him from earning a living for a month.

The point I'm trying to make is once a light is shined on your activities you have to either stop the activities or go into defense mode spending money to defend your actions.

While Fair use or First Purchase might be a defense in court you'll have to go to court, hire a lawyer, and spend a lot of money to try to use the defense...and hope your lawyer is good enough to prove your defense, or the judge is sympathetic to your cause.

JMHO

 

I will speak in general as I am an attorney and am only allowed to practice in the state of Florida. If you do some research at a legal library, I think you will find the information you are looking for very easily.

I think we need to go back to the real reason why someone is even considering putting the the IP of another company with their own product. This is probably the key to everything. If you put 7 to 11 people in a jury box and say here is a sealed package that I got that contains two products - a generic one and a well known brand, what do you think they are going to say? Will they assume that the two are connected? (Remember, the key is the jury - not necessarily educated people). It comes down to the issue of whether someone is trying to use the IP of one company to increase sales of their product. If the answer is no, then that company should have a very good answer to why they would even include the IP of the other company in with their goods. If the answer is yes, then the company is probably on the wrong side of the grey line.

In the end, the bigger question is whether someone wants to be on the ethical side of the business or if (s)he wants to push the line legal line. The law from a business standpoint is about one thing - money. The NFL has it and a lot of it to protect their brands. The final question is that of a risk-reward analysis. If a product is truly that good, than why does it need to push the grey line to get more sales and risk a lot more when it comes to a potential legal battle? Something to consider.

By the way, I own a patent and there is a huge difference between patent pending and a patent - especially in cost. So if you think you spent a lot of money now on a patent pending, you will be shocked as to what the cost of getting a non-provisional patent is going to cost you. Best wishes,

Mark

 

First of all the NFL cannot do anything to you if you are sending out individual team information. Each team is its own business and must negotiate and act individually. The NFL is not protected like MLB against anti-trust laws. That said you could go to each team and negotiate a deal with them.

So if you purchase decals and bundle them with the finger you probably have a legit business. Include a statement that you are not authorized or a seller of official NFL team products and are not affiliated with the NFL or any of the teams and you eliminate the confusion aspect of trademark violations.

 

First of all the NFL cannot do anything to you if you are sending out individual team information. Each team is its own business and must negotiate and act individually. The NFL is not protected like MLB against anti-trust laws. That said you could go to each team and negotiate a deal with them.

NFL Properties still exists and they manage and negotiate team and league merchandise licenses. The anti-trust laws don't prevent the teams from licensing their properties as a unity, it prevents them from conspiring to create exclusivity in the market. Consumers are legally entitled to a competitive market. But the league, under it's current merchandise and licensing structure, still have the right to manage and negotiate licenses.

That said, even if teams can negotiate their own deals too, how would it help in this case? The teams are just as likely to command upfront fees and royalties too, which the OP can't afford. So we're back to where we started which is trying to create a licensed product without a license.

So if you purchase decals and bundle them with the finger you probably have a legit business. Include a statement that you are not authorized or a seller of official NFL team products and are not affiliated with the NFL or any of the teams and you eliminate the confusion aspect of trademark violations.

I disagree with this 100%.

Here's a good article that explains why: Cornhole Boards and Pro Sports Logos - Dear Rich: Nolo?s Patent, Copyright & Trademark Blog

 

that article wasn't very informative. but as has been said, nothing is absolute and it is quite possible that a case gets won by the small guy and we have a new way of doing business.

of course even the big guys get sued by nfl properties: http://www.highbeam.com/doc/1P2-851565.html

anyway, if you want to get a license to sell UCLA logo items, you send them an application and $30 and if they approve they send you the vector are and font files. it isn't hard to do.

here is the american needle case: http://www.rkmc.com/The-NFLs-Licens...eview-A-Summary-of-the-Supreme-Court-Oral-Argument-in-American-Needle-v-NFL.htm

here is how you get your 'in'
https://www.nfl.info/NFLConsProd/Welcome/cpAgreement.htm

we actually just go the easy route and purchase official licensed gear from our distributors such as bomark.

 

that article wasn't very informative.

Really? It seems to discuss exactly what the OP is trying to do.

of course even the big guys get sued by nfl properties: NFL Group Sues Cowboys, Owner Jones; Licensing Arm Cites Nike, Pepsi Deals - The Washington Post | HighBeam Research - FREE trial

This article actually seems to refute what you were claiming earlier about teams negotiating their own deals.

here is the american needle case: The NFL

Again, this has more to do with the conspiring to create exclusivity than anything regarding what the OP is doing.

 

I have a question for all those that think the OP is not infringing. How many of you would do what the OP is suggesting? If offered (not stating it is), would anyone of you be willing to go into business with the OP and face the risk yourself? In my opinion, the answers to these questions will be most likely no. That is the key. Very easy to say to someone else “it does not sound like you would be infringing”… but a lot harder to say “I am willing to risk my business.”
Just my thoughts.

Mark

 

I have a question for all those that think the OP is not infringing. How many of you would do what the OP is suggesting? If offered (not stating it is), would anyone of you be willing to go into business with the OP and face the risk yourself? In my opinion, the answers to these questions will be most likely no. That is the key. Very easy to say to someone else “it does not sound like you would be infringing”… but a lot harder to say “I am willing to risk my business.”
Just my thoughts.

Mark

The first step is to contact NFL properties to see about getting the inside track. If they say no then there there is little money in the deal even if they never come after you. If they say yes then you are going to have sales because you will be sending product to hundreds of retail locations.

If you believe you have a unique product then that is a different story. The intent as presented is to skirt the TM question on licensed merchandise and that is grey. Why not submit the application and go from there?

 

Rule of thumb in my world, if in doubt it probably is not legal. If you purchase the decals with the understanding you are going to resell them, maybe. When I purchased some Ford/Chevy transfers a piece of paper came with them stating that the designs must be put on quality goods. There was a paper that gave me the right to sell items with the design on them as long as it was on quality goods and was not modified in any way.

 

one more thing. the nfl claims they own team colors as well so according to that he couldnt even use just the colors with no markings.

did you ever wonder why they are playing games with throwback uniforms? trademarks are dead after 3 years of non use. they are re-establishing those older logos to keep them alive.

 

did you ever wonder why they are playing games with throwback uniforms? trademarks are dead after 3 years of non use. they are re-establishing those older logos to keep them alive.

Retro logos are licensed to manufacturers like Reebok and Mitchell & Ness. So merchandise featuring these logos are currently in the marketplace, actively keeping the trademark registration valid. They play the games in these uniforms for marketing purposes to drive more sales of the retro merchandise.

 

I would take the view that he is selling a kit. But it's up to him.
If there is a court case then this thread could be used by the NFL.

 

People need to keep in mind that if you get sued, even if in the end the judge sides with you how long will you have been tied up in court and how much money will you have spent?
The NFL could potentially keep you from selling your product for years and cost you millions in legal fees. Is that worth selling a few shirts?

 

If you read the NFL Properties agreement, they claim they own the team colors as well so even if the OP didn't include the decal he would probably get whacked for selling the colors if he advertised they were for pro football.

He should just sell the things they way they come and let the customer figure it out. He could sell the decals in a separate package or as a separate line item if he could be a reseller of the decals.

IMO there is no money in this deal without going to NFL Properties and getting a green light on the deal. After all, he would be able to supply 100's of stors with these things that way. Find a capital partner, pony up the $100K and go for it.

 

I would have to think long and hard about risking my company over any legal dispute with pockets as deep as the NFL.

Selling the combo, I think is wrong both legally and morally. However, if you sold a number of items including NFL licensed merchandise that's not wrong.

So if I bought a foam finger and I bought NFL stickers, as a consumer, I can combine the two, right? I mean stickers are meant to be stuck to stuff. To me, the big chance you are taking is of a NFL licensee seeing it and marketing it themselves taking away future profits.

My $0.02

MM