This post recounts my own experience with one particular facet of United States trademark law, and recounts some of the legal advice provided to me through paid consultation with a Trademark attorney. This is NOT meant to be legal advice, and is not meant to condone or recommend any particular course of action. If you are facing your own questions of trademark infringement and legality, you need to get your own professional legal advice about your situation.
As far as I know, all of this only comes into play if you decide to sell a product – if you are just making something for personal/non-commercial use, then (in my opinion) you don’t have much to worry about.
Late last month I received a certified letter from a lawyer representing the Jack Daniels company. It was a Cease and Desist notice, in which they were asking that we stop building, selling and marketing one of our “advertising tin guitars” that featured a 12-inch round painted “Old No. 7 Brand” design, which is one of Jack Daniels’ famous registered trademarked brands.
They claimed that by doing so, we were infringing their trademark, diluting their brand and potentially confusing customers into believing that Jack Daniels had produced or licensed this guitar.
My initial reaction was to be incredulous – this was just another big corporation trying to strong-arm and scare a little guy into compliance. These were fully licensed reproduction tin signs that I had purchased from an authorized reseller. How could they decree what that sign could or could not be used for after purchase? I had not agreed to any sort of license or terms of use when I bought it. My belief was that repurposing an item like this was covered under the Fair Use doctrine, or was at least in a solidly gray area, and that doing so was a legal activity.
Turns out, I was wrong. Here is what I learned:
First, I learned that Trademarks are different from Copyrights. Trademarks are created purely to protect commercial brands, whereas copyrights protect creative works like books, articles, photographs, artwork, etc. As such, the case law for trademarks was in some ways different, and more restrictive, for trademarks.
Second, I learned that the Fair Use Doctrine applies primarily to Copyrights, not really to trademarks. You can read more about the Fair Use Doctrine in detail here: Wikipedia Fair Use entry. Basically, it says that portions of works or entire works can be reused and reproduced under certain circumstances (educational, parody, etc), even if they are copyrighted, with out permission from (or royalties being due to) the creator.
Third, I learned that the other portion of trademark law at work in this particular case is the First Sale Doctrine. There is a great article explaining this that you can read here (I highly recommend this one). Basically, this is the part of trademark law that allows you to resell genuine trademarked goods (be it a Tiffany lamp, a Coach handbag or a Jack Daniels tin sign) as what they are. It states that once the original trademark owner releases their product into the marketplace, they lose the right to control its distribution and/or prevent its resale. At first this sounds good for the case in question… but there’s a “but”… see below.
Fourth, I learned that the First Sale doctrine limits its protection to reselling the item in question IN ITS ORIGINAL UNCHANGED FORM. From the article: “That limitation protects against confusing consumers into believing a “materially” changed good was made by the trademark owner. If a good is modified, it can’t be sold bearing the original trademark.”
Learning this about the limitations of the First Sale doctrine was pretty much the death knell for my claims in regards to the Jack Daniels tin guitars, and I had no choice but to comply with their cease and desist order and stop building and selling the guitar.
But what really worried me was the bigger question was that if Jack Daniels could claim this about their tin signs, what would stop a cigar company from claiming it about their cigar boxes being made into guitars, or oil companies from claiming it about their oil cans being made into canjos? In short, was this cease and desist letter calling the whole cigar box guitar/homemade music movement into question?
To answer this, we get into a much more gray area of the law. The key point in regards to the JD tin was that it was a licensed reproduction being sold to be used for decorative purposes – that was how Jack Daniels had licensed it to the sign-making manufacturers. By taking that branded tin and using it in another way, and then attempting to sell that new product under another brand name, their trademark rights were being infringed. According to my attorney, established case law firmly supports that point and the chances of winning a case would have been very small.
However, when it comes to repurposing/upcycling branded items which have already been “used up? for their intended purpose (like holding cigars), and after being used up are basically garbage (think cigar boxes, oil cans, cookie tins, wine boxes, beer cans, etc), the law is much less clear. According to my attorney, there has not really been a case in the courts which has considered this question – so it remains a “gray area” of trademark law. So for now, all of us who build and sell cigar box guitars and other such items operate in this gray area.
So far, to my knowledge none of the cigar manufacturers have attempted to crack down on CBG builders, or beer companies on canjo builders… but the day may come. As the repurposing/upcycling movement has gained steam, and more and more people are building and attempting to sell their creations, the big companies are more and more likely to notice that that money is being made off of their brands, and take action. Inevitably there will be a court case that considers the question, and the results of that case will affect all of us who build and sell CBGs.
Of course some of you might already be thinking of examples of more or less gray areas – what if scenarios, what-about-this-or-that questions, etc. All I can say is… it’s called a gray area for a reason. Some of these companies (think Jack Daniels, Harley-Davidson, Coke, Disney, etc) have HUGE merchandise marketing and licensing agreements. They make a LOT of money off of their trademarked brands being put on all sort of products… companies like this are likely to be a lot more protective in regards to people using those trademarked brands in ways they haven’t licensed. Whereas cigar companies focus primarily on selling cigars, and there is a long history of the empty boxes being used for all sorts of purposes… we can hope that there is an inherent benevolence or tolerance there that will keep them from going after anyone.
So my attorney’s advice to me was to stop all use of trademarked, licensed stuff (like the JD tins) that I was buying new from resellers for use in building musical instruments for resale, but that it was reasonably safe to continue using cigar boxes, oil cans, beer cans and the like that could be considered repurposed/upcycled “trash” items… until such time as the question is settled in court.
For my part, you can bet I’ll be keeping a close eye on any developments in this area, as it affects the very core of my business. As one of the most widely marketed and visible companies operating in this realm, there is a decent chance that if a cigar box related Cease and Desist ever does show up, it will be at my door. If that ever happens, I will throw everything I have into fighting it in the courts, on my own behalf and on behalf of the entire movement. I firmly believe that our particular form of repurposing and upcycling “trash” into new products is, and should be, protected under the First Sale/Exhaustion doctrine of U. S. trademark law.
It is my understanding that any repurposed goods on which the brand trademark is clear/visible could be under scrutiny in this regard. Power to the creative souls who will continue to save clothing, cigar boxes, oil cans, and whatever other reusable items from the landfills! Making them from plastic is certainly not the answer.
Perhaps sell the items with an opaque sticker over the logo, with ‘Do Not Remove’ printed on it. If the customer ‘decides’ to remove the sticker,,, are you responsible?
Hi! I’m not a lawyer and don’t play one on the ‘Net, but it seems to me this can open up (pun intended) a lot of great possibilities. Create your own faux brand cigar box labels, print them off on heavy photo or plastic display film, and no one can complain. Just research the names first. Use a fictional country, an island that doesn’t exist anymore, etc. Something like “The Legendary Chuck McWilliams #23 hair tonic, whiskey and flavored cigars from Freedonia” might have more sales appeal than an actual cigar box label. GIMP is easy to use for making stuff like this. Repurpose with a purpose and a bit of attitude!
Thank you for sharing your insights!
I agree with your attorney. I’ve never seen any case law forbidding “garbage” to be “repurposed”. In fact I think there is an argument to be made that that such a decision would be contrary to public policy in a world where being “green” and the “repurposing” of discarded items is so important. But I think that a reasonable person could differentiate a new wall hanging specifically licensed for that purpose from “garbage”. It is indeed a grey area. Regardless, I love your work.
As far as my attorney explained it, repurposing “garbage” is a much grayer area of the law than repurposing a licensed product sold for a specific purpose. It is not expressly allowed by the law, but neither is it expressly forbidden. A court case will likely someday decided this question, but for now we continue operating “in the gray”.
As much as I sympathize with your feelings, as a retired attorney, I have to acknowledge that the licensing rights associated with a wall hanging do not reasonably extend to someone who takes that wall hanging and turns it into something else. I think your products are amazing and I wish I had your talent. But there IS some room for confusion because JD does license their intellectual property to ukulele manufacturers and I am not aware of how exclusive the agreement might be. Knowledge is power. You can move beyond this and still make a good living. For example, I love the works of Alphonse Mucha. They would look great on a cigar box guitar. But you need to make sure that his works are in the public domain and that you aren’t infringing or otherwise interfering with anyone else’s license or intellectual property rights. Please look at it this way: I taught grad school for many years and my students would tell me that it was “totally stupid’ that they cannot just download and share music without paying for it. Just a few hours before that, my friend, who is a nationally known folk singer and music writer, told me that he had just finished working a shift at the 7-11 because he didn’t make enough money from his music royalties to support himself. He doesn’t have a wife or children. But he still can’t support himself. So you should not assume that people and organizations are so “rich” that you can appropriate their intellectual property for your own purposes without paying. I’m just asking you all to think about what I am saying, and try to think about how you would feel if you were in the same situation. Thanks.
So…in regard to the repurposed used packaging, the jack Daniels tin boxes (not signs) should be fair game? Their original purpose as a package being exhausted…correct? By the way …thanks for posting your experience Ben…You are a true crusader for the movement!
First, thanks to CBG Gitty and posting a frank, honest, and helpful account of an experience that is no doubt frustrating. One could have easily used the experience to sling mud or try to spin the story, and I appreciate that you just told it like it is, and admitted to your misunderstanding and your efforts to correct it.
As a pretty big contrarian (aren’t all of us DIYers inherently contrarians?? 🙂 I have to say that I share the frustration and annoyance of the rest of the commenters and author. However, I seem to be less surprised or incredulous that they issued the cease and desist. Every where I go I see big brands putting their logos, character likeness, catch phrases and anything else on completely unrelated merchandise. If they put the Frozen characters on toothbrushes and fruit snacks, your 6 year old daughter will notice them at the grocery and ask to buy them. Brand-whoring is always a way big brands expand their sales. While I don’t agree with their legal action, I just can’t say I’m surprised or even all that mad. I could certainly see Jack Daniels putting their name and logo on a guitar to further their brand. In fact, I’m sure they probably already have. And as that tin is not exactly an _exhausted_ product, I could buy the argument (strictly in a legal sense, not in a logical one) that one might be confused and think the tin-guitar is endorsed by JD. There name, logo, and catchphrases are already on so many other common products.
On the other hand oil cans, cigar boxes, and things that are sold as one product, or simply the packaging for the actual product that is being sold, are “exhausted” when the product is used, I think that is a much stronger argument to repurpose the packaging, or a part/fraction of the original product, as a recycled item without legal recourse. The only thing the tin carried was air and the potential for the owner to put something in it, and that itself was the product–not the air that was inside it.
I can think of a lot of contrarian retorts to why JD needs to just focus on selling their booze and their t-shirts and leave the littler guys alone, but I can’t think of a legal retort worth it’s time fighting for. However, I had the same opinion as Brox. I wonder if you could sell all of the pieces minus the tin as a “tin guitar kit”, to be used with a pie tin of the customer’s choosing, and maybe you sell the tins as general merchandise as intended by the trademark owner. The only hold up I see is having to get a reseller’s license to sell the JD tin separately, much as they people you buy them from do. If reselling branded tins is too much for too little benefit, I’m sure just recommending that type/size of tin from a place of the customer’s choosing wouldn’t have legal consequences.
As Ben states, this is a gray area… but one which has been regularly and successfully fought throughout the years.
A main point of Trademark law has to do with perception and use… as well as attribution. As example of the last point, note the number of times we’ve all seen use of a popular trademark along with a subnote stating (as example) “Old No 7” Trademarked Jack Daniels. This is legal acknowledgement that the trademark belongs to Jack Daniels and that the item bearing that trademark is not to be confused as a product of Jack Daniels (just as a hypothetical case).
Regarding perception: Trademarks have to be filed and applied to a specific area. To my understanding there is no such thing as a “universal trademark”. So for example, the name “Coke” can be trademarked for a soft drink, but would not extend to a mineral deposit company. Further, the method of displaying the Coke symbol can be trademarked, but the word “Coke” cannot be trademarked, and thus can be exhibited in another form (so long as it is not a soft drink). That is why other soft drinks can be called “Colas” because “cola” as a word cannot be trademarked.
So again in the case of the Old No 7 Brand… if one were to present it in an industry different from whiskey production nor confuse buyers as to origin, it’s legal. But the “confuse buyers” is the gray area and what Jack Daniels is relying on here. Would buyers be confuse that this was a Jack Daniels product?
Stamping on the guitar a trademark attribution along with the words, “This CBG is not a product of nor associated with Jack Daniels Distillery” would very likely bypass that gray area sufficiently to cause Jack Daniels some concern as to whether it would be worth taking a risk trying to make a legal stink over it. After all, their target can always counter sue.
Then there is an issue of “use”. Is this a one-time use in an artistic manner… or a multiple-production? If it’s a one-time use it can be considered “artistic expression” and their Trademark claims in such case are down the toilet– even if the item is sold. Prominent example: the Andy Warhol Campbell’s Soup Can painting. There could have even been a series of Soup Can paintings all slightly different and still be considered “artistic expression”. There is no breach of Trademark because it is being presented as artistic or creative expression.
Bottom line is: a Trademark holder has some rights, but those rights are not propitiatory. There are exclusions… and those exclusions are used every day to include registered trademarks in marketed goods.
My suggestion: get a second legal opinion from someone who specializes in Trademarks. Because as you state Ben, this concept hits the very center of your business. CBGs often use trademarked items as part of their decoration. (Bottle caps?) Until you have a solid protective legal stance that you can fire back at such companies, Gitty will be at their mercy. Having that solid legal stance and letter-in-waiting… you will be able to instantly respond to any such demand.
Note: I am not an attorney and this should not be construed as legal advice. This is nothing more than a summation of many articles I’ve read over the years pertaining to “big dog” companies that tried to bite the little guy– and how the little guy can protect himself from abuse of Trademark concept. This is a big and often-abused field– and the small businessman needs to protect himself in this area. Many have. The Internet is full of such cases where the little dog has bit back… and won.
Pointless to argue law, but I’d think unless you are badging it as a JD made guitar there should be no restrictions. You are not labeling your guitar as to confuse anyone. You are making a piece of art not purely a commercial product. That it has value is related to the artist’s work in bringing the materials together. Since the product being incorporated was already licensed and fees paid for what part of the guitar would you be paying license fees for? The part that was already paid for. The law says the original good can’t be modified else you must remove the trademark. But if the item is the trademark, how could it be removed? I can think of plenty of items that are modified and resold with trademarks intact: guitars, amplifiers, effects, cars, and clothes. If I buy a button and attach it to my shirt am I infringing trademark law? If I sell the shirt with a button am I infringing. Just need a good lawyer, money and luck. Not worth the effort so the lawyers win again. Maybe you should just sell the guitar with the tin separately and let the buyer put it on themselves. Problem solved.
So…. If you roughed up the tin sign a bit and said you retrieved it from a trash dumpster? (Didnt “purchase” the trademarked item, it was junk.)
Or if you stated within the sale and labeled with a “notice, Old #7 trademark owned by….. Nah!
Seriously, its silly in the larger scale of things, but OK fine. Create a metal sign replica that says “Old #5” instead.
But perhaps thats just my nature to think like that, since I would take it as a challenge and find a twisted way to get around it and thumb my nose.
If I touched the stuff, I would have to quit and boycott! Protect their brand? The use promoted nostalgia and might have been desired by fans of the brand. Instead they look greedy and discourage fans of the brand. Over what? a few little handmade 3 or 4 string guitars? Silly. But hey, JMO.
Possibly… though honestly sales of this particular guitar were not high enough to warrant going to great lengths to try to get it approved.
Great article Ben. Just FYI, a few years ago, my band discovered that you can obtain a Federal Trademark Registration for a band name. Unfortunately, we didn’t find out until we had recorded, produced, and released a CD on Amazon, iTunes, and various other outlets. It wasn’t long after that we received an unfriendly letter from a lawyer. As a result, we had to change our band name and print stickers to cover the offending text on 1,000 CD’s.
Hi Ben;
Would it be possible to come up with an amicable agreement with JD to continue building JD CBGs? What I am saying, perhaps JD will give their blessing if they were to inspect one of the CBGs and become more educated on how these are used. My point is the JD CBGs are a beautiful item and I would think JD would be proud to have their name on it. If anything it is another way their brand gets advetised. It seems short sighted of JD to go through the trouble of a cease and desist order without taking a moment to think about what this represents. Frankly I would love to see JD put up an ad with someone playing a JD CBG in the background. Wouldn’t that be something.
The problem arises when you create a new product that includes the trademarked brand and offer it for sale.
Question…
If the JD logo is intended for adornment purpose only (as quoted below from above). Isn’t the purpose of you placing the logo on a CBG for adornment purposes?
“The key point in regards to the JD tin was that it was a licensed reproduction being sold to be used for decorative purposes.”
I mean, isn’t it the pie tin that is the resonator and the logo is placed “ON” the pie tin for adornment purposes and not for resonating purpose. I don’t know if I’m stating this correctly. But I think you get the gist of what I mean. It’s not the JD logo that’s being repurposed it’s the pie tin.
Interesting article, thanks for posting it. I suppose the Jack Daniels people have a point, as they are already licensing their logo on a ukulele.
http://peavey.com/products/index.cfm/item/1177/118289/JackDanielsUkulele
Thanks, Ben. Very useful information. We appreciate your efforts on behalf of us all.