11 replies to this topic

[Marylise]

Hi, my name is Marylise, and I REALLY need help and some advices:

1. My fiance works in a major retail store (Bloomingdale's) and regularly, he buys some items on sale which are sold to him with the discounts he is entitled to (15%). Usually, he buys me branded clothing (Lacoste, RL polos, True Religion, Ed Hardy etc...) which in turn, I often resell on eBay.

2. I had some listings removed and since, before posting any listings on eBay, I contact the brands and ask them permission to list my items. Everybody so far was cooperating except one: Ed Hardy.

3. Upon contacting them, by email, a gentleman named Adrian working in the fraud Dept. replied to me telling me that: "... We do not authorize anyone to sell on eBay and clearly you did not buy any goods from us directly... " He further added: "We don't provide authentication services since the only true way to authenticate real goods is to buy them through legitimate sources. If you have purchased this through one of our retailers, which is a legitimate source then we can confirm that you did buy them from a legit source."

4. I replied to him, telling him that yes, my items weren't purchased directly from Ed Hardy, but via one of their Authorized Reseller: Bloomingdale's. I also made reference to the First-sale doctrine and stated that under said doctrine, even though "they" were not giving their authorization to sell on eBay, I had every right to. I also added that I would be more than happy to provide them with proof of purchase and pictures of labels if needed. That pissed them off... (you'll see in a little bit)

5. Because of the struggle eBay has become, my brother offered me to make a website for me. He started to work on it, but nothing has been for sale yet as the site is not finished, but on that site... my brother included in his design some pictures (including the Ed Hardy logo) of some copyrighted work which were a couple of pictures... (I am mentioning that because of the next point). NOTHING IS CURRENTLY BEING SOLD ON THAT SITE YET!

5. Shortly after sending my email to Ed Hardy, I received an email from their fraud Dept. stating the following:
-------------------------------------------------
Dear Marylise-

As I am sure you are aware, counterfeit manufacturers are very sophisticated and take extensive measures to copy every detail of the original garments including the tags. Please provide an invoice or receipt from Bloomingdale's reflecting the 17 t-shirts acquired by your fiancé. Also, respond back with your eBay user ID, fiancés name and the department store address which he is currently employed at.

Furthermore, Recently, we have learned that you are using our trademarks on your website, www.*******.com/SearchResults.asp?Cat=243 , to advertise your product. Users of your website are likely to believe erroneously that your website is sponsored by, associated with, or related to C.A. or Ed Hardy. You make use of our trademarks on your website page entitled “www.*******.com/SearchResults.asp?Cat=243 .

Your use of the CHRISTIAN AUDIGIER and ED HARDY marks and images constitutes infringement of our federally registered trademarks in violation of 15 U.S. § 1114, is in violation of 15 U.S.C. § 1125(a), as well as common law trademark infringement, unfair competition and trademark dilution.

On behalf of C.A., we demand that you immediately refrain from and discontinue use of CHRISTIAN AUDIGIER and ED HARDY in connection with your website; and that you refrain in the future from use of the C.A. and Ed Hardy trademark and any formatives and variations thereof. In addition we demand that you take down the copyrighted images and logos from “www.*******.com/SearchResults.asp?Cat=243 ” pages as it relates to our product. We demand that you confirm in writing that all use of our trademark has ceased and that you have taken down the above page no later than seven days from your receipt of this letter.

Unless we are advised by you or your counsel that the infringing activities have been halted, we shall take whatever action best protects our valuable trademark rights, including a notification to your ISP to shut down your entire website.

This letter is written expressly without prejudice to the rights and claims of C.A., all of which are hereby expressly reserved.

Thank you for your attention to this matter.

Ed hardy IP Enforcement Department
-------------------------------------------------

6. Now, based on that... I immediately contacted my brother to have him remove the pitures. However, AND THIS IS WHERE I NEED YOUR HELP:

a. Can Ed Hardy, and C.A. (Christian Audigier), prohibit me from simply using the wording: Ed Hardy and Christian Audigier from my web site (Just the names), which would sell items bearing their brands and designs, items that would have been purchased legally? (Of course I will only use my images, and I do intent to have a full disclaimer on my site stating that I am not associated in any way shape or form with them, nor that I am a Licensee. Basically, what are the preriquisites (if any) for me to be allowed to sell my items online, using their names without being or fearing being sued.

b. Do they have the legal right to ask me for my fiancé's name and info? This looks like a "fear" tactic to me. If I provide them with proof of purchase, wouldn't that be enough? Could my fiancé lose his job because of purchasing items like that and knowing that I resell them (I don't think his store policies are allowing that)

c. I tried to do the right thing by contacting them, and in their reply, they are using some "fear tactics" simply because they don't want their products being sold by people others than people holding their reselling licenses. Is it legal?

d. By trying to interfering with my business, and by prohibiting me in using simply the names "Ed Hardy" and "Christian Audigier" on my web site to sell my products, wouldn't they be violating the HOBB's act by “adversely “affecting interstate commerce” by prohibiting and/or hindering my business which is legally conducted across states lines, AND, violations of the “Monopoly Laws” (Sherman Anti-Trust Act) as well as title 18 U.S.C. § § 241 and 242, “Deprivation of Rights under law and of Civil Rights under color of law?

I mean, these people are throwing at me all this, when I simply tried to do the right thing which was asking them their authorization to list my items on eBay, without fearing one of their "frivolous" VeRO complaint...

Voila, I am done... I apologize for being that long, and I sincerely hope "someone" out there will be able to give me some advices as far as how to handle these people... and how should I address my reply to them

Thank you


Marylise.

PS: All content (images AND names) ... for now... were removed from my website

Edited by Marylise, 27 June 2008, 21:44.

[DunWeb]

As I often create stores and websites for customers who sell products and/or services online I have come across this many times. The use of a 'Name Brand' is not illegal, nor is the use of the logo of the manufacturer of the product under the provisions that you apply credit to those companies for their use. Usually, terms and conditions would cover this area with a disclaimer such as:

"mywebsite.com" and other marks indicated on our website are trademarks or registered trademarks of "mywebsite.com", or its subsidiaries (collectively "mywebsite"), in the United States, Canada and/or other jurisdictions. 'Mywebsite's" graphics, logos, page headers, button icons, scripts and service names are the trademarks or trade dress of "mywebsite". "mywebsite's" trademarks and trade dress may not be used in connection with any product or service that is not 'Mywebsites", in any manner that is likely to cause confusion among customers, or in any manner that disparages or discredits 'Mywebsite". All other trademarks, logo's or slogans not owned by 'Mywebsite" that appear on this website are the property of their respective owners, who may or may not be affiliated with, connected to, or sponsored by "mywebsite".

This disclaimer usually covers all the infringement concerns and as long as products are being sold in a tasteful manner as not to defame or discredit companies, few will take any action against someone for reselling their products. Another way might be to sell them as 'worn once'. The advertisement of 'used' products is discounted from most legal disclaimers.

I hope this helps. You can get specific information about copywrite infringement from your local copywrite office.



Chris

Edited by DunWeb, 27 June 2008, 22:16.

[porpoise1954]

Marylise, on Jun 27 2008, 10:42 PM, said:

Hi, my name is Marylise, and I REALLY need help and some advices:

1. My fiance works in a major retail store (Bloomingdale's) and regularly, he buys some items on sale which are sold to him with the discounts he is entitled to (15%). Usually, he buys me branded clothing (Lacoste, RL polos, True Religion, Ed Hardy etc...) which in turn, I often resell on eBay.

2. I had some listings removed and since, before posting any listings on eBay, I contact the brands and ask them permission to list my items. Everybody so far was cooperating except one: Ed Hardy.

3. Upon contacting them, by email, a gentleman named Adrian working in the fraud Dept. replied to me telling me that: "... We do not authorize anyone to sell on eBay and clearly you did not buy any goods from us directly... " He further added: "We don't provide authentication services since the only true way to authenticate real goods is to buy them through legitimate sources. If you have purchased this through one of our retailers, which is a legitimate source then we can confirm that you did buy them from a legit source."

4. I replied to him, telling him that yes, my items weren't purchased directly from Ed Hardy, but via one of their Authorized Reseller: Bloomingdale's. I also made reference to the First-sale doctrine and stated that under said doctrine, even though "they" were not giving their authorization to sell on eBay, I had every right to. I also added that I would be more than happy to provide them with proof of purchase and pictures of labels if needed. That pissed them off... (you'll see in a little bit)

5. Because of the struggle eBay has become, my brother offered me to make a website for me. He started to work on it, but nothing has been for sale yet as the site is not finished, but on that site... my brother included in his design some pictures (including the Ed Hardy logo) of some copyrighted work which were a couple of pictures... (I am mentioning that because of the next point). NOTHING IS CURRENTLY BEING SOLD ON THAT SITE YET!

5. Shortly after sending my email to Ed Hardy, I received an email from their fraud Dept. stating the following:
-------------------------------------------------
Dear Marylise-

As I am sure you are aware, counterfeit manufacturers are very sophisticated and take extensive measures to copy every detail of the original garments including the tags. Please provide an invoice or receipt from Bloomingdale's reflecting the 17 t-shirts acquired by your fiancé. Also, respond back with your eBay user ID, fiancés name and the department store address which he is currently employed at.

Furthermore, Recently, we have learned that you are using our trademarks on your website, www.*******.com/SearchResults.asp?Cat=243 , to advertise your product. Users of your website are likely to believe erroneously that your website is sponsored by, associated with, or related to C.A. or Ed Hardy. You make use of our trademarks on your website page entitled “www.*******.com/SearchResults.asp?Cat=243 .

Your use of the CHRISTIAN AUDIGIER and ED HARDY marks and images constitutes infringement of our federally registered trademarks in violation of 15 U.S. § 1114, is in violation of 15 U.S.C. § 1125(a), as well as common law trademark infringement, unfair competition and trademark dilution.

On behalf of C.A., we demand that you immediately refrain from and discontinue use of CHRISTIAN AUDIGIER and ED HARDY in connection with your website; and that you refrain in the future from use of the C.A. and Ed Hardy trademark and any formatives and variations thereof. In addition we demand that you take down the copyrighted images and logos from “www.*******.com/SearchResults.asp?Cat=243 ” pages as it relates to our product. We demand that you confirm in writing that all use of our trademark has ceased and that you have taken down the above page no later than seven days from your receipt of this letter.

Unless we are advised by you or your counsel that the infringing activities have been halted, we shall take whatever action best protects our valuable trademark rights, including a notification to your ISP to shut down your entire website.

This letter is written expressly without prejudice to the rights and claims of C.A., all of which are hereby expressly reserved.

Thank you for your attention to this matter.

Ed hardy IP Enforcement Department
-------------------------------------------------

6. Now, based on that... I immediately contacted my brother to have him remove the pitures. However, AND THIS IS WHERE I NEED YOUR HELP:

a. Can Ed Hardy, and C.A. (Christian Audigier), prohibit me from simply using the wording: Ed Hardy and Christian Audigier from my web site (Just the names), which would sell items bearing their brands and designs, items that would have been purchased legally? (Of course I will only use my images, and I do intent to have a full disclaimer on my site stating that I am not associated in any way shape or form with them, nor that I am a Licensee. Basically, what are the preriquisites (if any) for me to be allowed to sell my items online, using their names without being or fearing being sued.

b. Do they have the legal right to ask me for my fiancé's name and info? This looks like a "fear" tactic to me. If I provide them with proof of purchase, wouldn't that be enough? Could my fiancé lose his job because of purchasing items like that and knowing that I resell them (I don't think his store policies are allowing that)

c. I tried to do the right thing by contacting them, and in their reply, they are using some "fear tactics" simply because they don't want their products being sold by people others than people holding their reselling licenses. Is it legal?

d. By trying to interfering with my business, and by prohibiting me in using simply the names "Ed Hardy" and "Christian Audigier" on my web site to sell my products, wouldn't they be violating the HOBB's act by “adversely “affecting interstate commerce” by prohibiting and/or hindering my business which is legally conducted across states lines, AND, violations of the “Monopoly Laws” (Sherman Anti-Trust Act) as well as title 18 U.S.C. § § 241 and 242, “Deprivation of Rights under law and of Civil Rights under color of law?

I mean, these people are throwing at me all this, when I simply tried to do the right thing which was asking them their authorization to list my items on eBay, without fearing one of their "frivolous" VeRO complaint...

Voila, I am done... I apologize for being that long, and I sincerely hope "someone" out there will be able to give me some advices as far as how to handle these people... and how should I address my reply to them

Thank you


Marylise.

PS: All content (images AND names) ... for now... were removed from my website

The 2 main points (IANAL) are:

1. No-one can stop you selling goods second hand that you have purchased legitimately.

2. If you are not an authorised retailer of the brand then they can legitimately & legally stop you from selling the items as new (as though you were an authorised dealer).

[lightwarrior]

porpoise1954, on Jun 27 2008, 05:17 PM, said:

The 2 main points (IANAL) are:

1. No-one can stop you selling goods second hand that you have purchased legitimately.

2. If you are not an authorised retailer of the brand then they can legitimately & legally stop you from selling the items as new (as though you were an authorised dealer).

I have some experience doing this, and the first thing I want to say, is they can not stop you from selling something as NEW. The item is new if it has never been used and is still in the original packaging. It doesn't become used just because you bought it unless it is FOOD.

Also, they can not stop you from selling anything you own, period. You have every right to sell what you own, and to tell people exactly what it is you are selling including the brand name. Of course you need to tell people the brand name so they know what they are buying, so it is actually wrong not to tell them the brand name. It IS illegal, however, to use their logo on your site, or even anything close to it could cause you trouble. But the name is completely correct and necessary.

It is best to put at the bottom of your pages that the owners of those brand names belong to their owner, but that is all you really need to do. What I sell is tupperware, and believe me, they have tried to stop me too, and with the same type of methods, FEAR. But I know my rights, and they are now leaving me alone.

I'll tell you how to get them to leave you alone... by telling them in as professional a way as you know how, that you are feeling HARRASSED, and that their tactics are appearing to be a form of HARRASSMENT to you. Let them know, in a professional manner, that any further correspondence from them will be accepted as further HARRASSMENT only. They will stop contacting you immediately because a harrassment law suit is very serious, and that is EXACTLY what they are doing.

Of course, I must add a disclaimer... use this advise at your own risk, as I am not a lawyer.

[mikefrombg]

Very interesting topic. How about reselling electronic goods not being an authorized dealer of the brand?
Is there a topic with standard disclaimers which are suitable and cover any online reseller?
As we speak if I have to think that way, eBay should not exist and should have millions of lawsuits against it everyday .

Regards!

[Coopco]

mikefrombg, on Sep 25 2008, 01:32 PM, said:

Very interesting topic. How about reselling electronic goods not being an authorized dealer of the brand?
Is there a topic with standard disclaimers which are suitable and cover any online reseller?
As we speak if I have to think that way, eBay should not exist and should have millions of lawsuits against it everyday .

Regards!

It may depend on how you aquired the items, if they genuine, and how you represent the sale of such items on your site.

[mikefrombg]

Coopco, on Sep 24 2008, 11:38 PM, said:

It may depend on how you aquired the items, if they genuine, and how you represent the sale of such items on your site.

Well lets say I buy a radar detector from US, and sell it in different country, representing the item exactly as it is represent in the manufactures website. What if the company has an authorized reseller/dealer already in that country, but prices are ridiculously high.

[Coopco]

mikefrombg, on Sep 25 2008, 01:54 PM, said:

Well lets say I buy a radar detector from US, and sell it in different country, representing the item exactly as it is represent in the manufactures website. What if the company has an authorized reseller/dealer already in that country, but prices are ridiculously high.

Depends on the US supplier, legit or not.

Copyright infringement.

Depends on the laws of the country in question.

Depends on the agreement between the resller and manufacturer and licensing arrangements.

Legal advice should be sought before the event.

[lindsayanng]

the reason that manufacturers have authorized resellers is mainly to keep the MSRP at a decent level so that they could maintian the value of their products

the other secondary reason is so that if their item is faulty, they can track that item, figureout where it came from, and log it.. then they could offer warranty.

With electronics, it all depends.. some people dont care if they purchase from an auth. dealer, but the more expensive the item, the more important it becomes (buying from any unauthorized deal voids all warranty)

[desiredin]

lindsayanng, on Sep 25 2008, 03:34 PM, said:

With electronics, it all depends.. some people dont care if they purchase from an auth. dealer, but the more expensive the item, the more important it becomes (buying from any unauthorized deal voids all warranty)

Theorectically that is the manufacturer's policy. But impossible to legally enforce. A disclaimer in the manual or on the warranty registration card stating such, does not allow the end user to agree to those terms before purchase.

Nor is it the customer's responsibility to ensure he is purchasing his products from an "authorized" dealer.

I have yet to see a manufacturer turn away any customers because of any issues like that regardless of their scare tactics. At least in the computer, A/V, and photgraphy industry. In fact I find manufacturers treat customers better than any store will. And this goes for HP, Canon, Acer, Kodak, Sony, RCA, Samsung.

I have delt with those companies personally in the past 5 years for warranty replacements/repairs. Most of my equipment went long after the orgional "warranty" was up. But that is why I fill those registration cards out once the origional warranty is up, or once the product stops working (whichever comes first). As long as they are still servicing that particular model, you can increase the warranty period by years. After 6 years for a 3-year product they generally stop servicing the model as no more should be circulating within the industry. But you still have those items collecting dust in the back of a shop for years (obsolete) and the manufacturers will still do their best to provide warranty. After all, the warranty starts when the end user purchases the brand-new item. Not when the reseller purchased it. Legally, when you buy it, if it states there is a warranty, they are required to provide it. Even if the product is 10 years past it's release date.

[desiredin]

Here is an interesting article about non-authorized sellers and selling below MAPs, and a company who's aim it is to track them down and stop them for their clients. Everyone should read it.
http://online.wsj.com/article/SB122835660256478297.html

"If the seller isn't an authorized dealer -- for instance, a discounter that acquired the goods via a distributor -- NetEnforcers says other tactics are used to try to force a lowball price off the Internet. In these cases, they can allege that the discounter's use of the product's name or image constitutes trademark or copyright infringement, in an effort to force the seller to stop listing the discount."

I have more reading into this, but that's a common PFO tactic that has been used by myself. One could argue "fair use". But then the big boys could also come after you.

The article details how Samsung is suing a company that is unauthorized, and selling under MAPs. Samsung claims: "Asim Kahn, a lawyer for Samsung's U.S. unit, declined to comment on the case. Samsung's lawsuit states that sales of its products by Broadway Photo "reduces the prices that Samsung can obtain" for that merchandise."

[artcoder]

Typically, retailers employee discounts policy are such that the "employee discounts" are only for products purchased for own personal use. "employee discounts" does not apply if you are buying the products and then reselling them. Better to read the fine print of your human resource employment contract or employee handbook.