Owen and Emma - Totally cool baby bibs, bodysuits, t-shirts and more for today's little trendsetters, all with one things in common

On Wednesday August 2, 2006 I received an email from Dana Schuessler an attorney at Greenberg Traurig, LLC. The email contained a cease and desist (PDF version) demanding that I discontinue making my children's art with Ralph Lauren fabric, claiming that the sale of my items infringed upon the Ralph Lauren Trademark/Copyright.

Dana also killed a tree by sending me a hard copy via Overnight Fed Ex. The 28 page cease and desist is nothing more than a bunch of chest pounding, foot stomping, and bullying by a law firm who obviously has nothing better to do. Hey, I have an idea, why don't they go after the guys from China who are making knock offs and selling them on every other street corner in New York? Nah, that's no fun and too hard, let's bully the Stay-at-Home Mommy instead!

If you find yourself bored one day, or you just want to see what over-priced lawyers bill their clients for, feel free to read the Cease and Desist here! I wonder if Ralph Lauren knows this is what he is paying for?

I digress, back to the 28 page, smoke blowing cease and desist. I imediately called my friend Greg Beck, at the Public Citizens Litigation Group. As you will recall, Greg helped me last month when The Boras Corporation got their panties in a bunch because I said something mean about their client, Johnny Damon. You can read THAT story here!

While I was pretty well versed in the subject of using licensed fabric to create items from a fellow eBayer, www.tabberone.com, Greg reviewed the cease and desist with me and current law on the subject.

Armed with this knowledge, I called Dana, who turned out to be pretty useless and not versed in Precious Moments vs. La Infantil, 1997, in which the court declared:

"bedding items manufactured with lawfully acquired, authentic fabric with copyrighted design were not infringing derivative works."

"The copyright owner's right to distribute the work is limited by the "First Sale" doctrine, which permits the owner of a legally acquired lawfully made copy of a work to sell that particular copy without the consent of the copyright holder".

Other supporting case law, taken from www.tabberone.com (please visit her site to learn more about her courageous battle with VeRo members!):

In Lee v. Deck the Walls Inc., 925 F.Supp. 576 (N.D.Ill. 1996), the court in Lee rejected the holding of Mirage Editions and Munoz, observing that to be an infringing derivative work an object must be original enough that, if lawful, it would qualify for protection as a derivative work. The Lee court cited Woods v. Bourne Co., 60 F.3d 978 (2nd Cir. 1995), for the rule that to be a derivative work a thing must be "independently copyrightable." The court found no "creative spark" in the "mundane act of placing notecards onto a ceramic tile."

In Lee v. Deck the Walls Inc, The court noted that its conclusion hinged on whether the alleged new work contains sufficient originality, as required by the Constitution and 1976 Copyright Act, for it merit derivative work status. (Id. at 580-81, 40 U.S.P.Q.2d at 1116-17) To this end, the court was persuaded that the Copyright Office refused the defendants copyright application for the ceramic tile mounted note card because the work does not contain any original artistic expression & . ( Id. at 581, 40 U.S.P.Q.2d at 1117 (quoting the Copyright Offices rejection of defendants copyright application))
In Quality King Distributors, Inc. v. LAnzaresearch Intl, Inc (98 F.3d 1109, reversed), Justice Stevens noted for a unanimous court:
The whole point of the first sale doctrine is that once the copyright owner places a copyrighted item in the stream of commerce by selling it, he has exhausted his exclusive statutory right to control its distribution.
The terminology "unauthorized use" comes from the Lanham Act and refers to trademark issues. This is a copyright issue. The Second Circuit Court of Appeals has stated in EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos, 228 F.3d 56 (2d Cir. 2000):
The Supreme Court has stressed that there are "fundamental differences between copyright law and trademark law." Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 439 n.19 (1984). Copyright law has its roots in the Constitution. U.S. Const. art. I, sect. 8 (8). It protects "fruits of intellectual labor," such as literary or dramatic works, musical compositions, motion pictures, sound recordings, architectural works, and other similar original works of authorship. Trade-Mark Cases, 100 U.S. 82, 94 (1879); see 17 U.S.C. §102. A trademark, by way of contrast, grows out of the adoption and use of a distinctive symbol by the party using it. Its function "is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another's product as his." United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918).
The fact that trademarked images appear on the fabric does not make it a trademark case. However, even if this fell within the scope of trademark law, the Fair Use Doctrine allows the fair use of a trademark, or trademarked name, to describe a product. As long as the user does not do anything to create the impression of sponsorship or endorsement.
In New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992), Judge Kozinski stated:
"one might refer to "the two-time world champions" or "the professional basketball team from Chicago," but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source."
Judge Kozinski further stated:
"Indeed, we may generalize a class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one. Such nominative use of a mark--where the only word reasonably available to describe a particular thing is pressed into service--lies outside the strictures of trademark law: Because it does not implicate the source- identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder. "When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth." Prestonettes, Inc. v. Coty, 264 U.S. 359, 368, 44 S.Ct. 350, 351, 68 L.Ed. 731 (1924) (Holmes, J.).

New Kids on the Block held that a commercial user is entitled to a nominative fair use defense provided the following three requirements are met: first, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

She told me she would have to look up the case. *SIGH* and she works in trademark law. On a side note, shouldn't she have researched this before sending me the C&D? Or perhaps her real goal was to scare me with lots of legal words and 28 pages of nothingness.

As it turns out, Dana is the assistant to Roxanne G. Elings, who turns out to be a real pain in the ass.

She tries to tell me that my items are 100% infringing and I cannot make items with licensed fabric. Oh really. Have you read Precious Moments vs. La Infantil, I ask her? Apparently she has and is now a bit more willing to discuss our dilema, especially now that it dawns on her I am using actual Ralph Lauren material to make the items.

I ask her if I change my titles from "Ralph Lauren Nursery Decor Sign" to "Nursery Decor Sign made with Ralph Lauren fabric" and moved by bolded disclaimer to the top would she be happy? She responds and I quote "you would be within the law, but we wouldn't be happy". Excuse me for a moment while I pick up some cheese for that WHINE!

Next I ask her if I could get that in writing (LOL!). She responds that she would need to look over the listing. I said fine, I would have a listing ready for her to look at within a few minutes. I prepare the listing and email it to her on Wednesday August 2nd, at 4:36 PM.

I stoopidly expected her to review the listing right away, so we could put this nonsense behind us, but she didn't. So I called her office on Thursday August 3rd. She doesn't return my call. I call the following day, Friday August 4th. Again she doesn't return my call. I call again on Monday August 7th and you guessed it, no return phone call. I called again on Tuesday August 8th and am once again ignored.

Roxanne obviously doesn't know that 'hard to get' is my absolute favorite game and now I am more determined than ever to stand up for my rights. Ignoring me is not an opition. I once again consult with Greg Beck who advises me to send an email with my intention to re-list. Obviously if she is ignoring me there must be no objections to my revised item, right?

On Wednesday August 9th, I send this email:

Hello!

Thank-You for speaking with me on August 2nd. During our phone call, I asked you if I changed my item titles to make it perfectly clear the items were made with fabric and moved my disclaimer to the top of the listing, would you then be happy?

You responded that I would be within the law, but you wouldn't be happy. I asked if I could get that in writing and you said you would like to preview the listing first.

I said that was fine and created a listing for you to see. I sent that listing to you via email on August 2 at 4:36 PM.

Since I have not heard back from you, despite repeated phone calls to your office (Thursday August 3, Friday, August 4rd, Monday August 7, and Tuesday August 8), I must conclude that you have no objections to the revised listing with the new title and disclaimer bolded and moved to the top of the listing.

Since there are no objections, I will be re-listing my items on Monday August 14th.

Thank-You, ~Ann~

Can you guess what happened next? I am once again ignored. Now, Ralph Lauren, I ask you, are you happy with a law firm who sends Cease and Desists and then tries to ignore the entire thing so it will just "go away"? I would think not.

Thursday rolls around and I again send the same email, this time with ****SECOND NOTICE**** at the top of the email. The overuse of astericks seems to spur Roxanne's attention and she emails me back this gem (please be sure you are sitting down, as I wouldn't want to be responsible for you falling over and hurting yourself due to excessive laughing):

Dear Ann, Thank you for your emails. I have viewed the link you sent via email on August 2nd. It is fine except for the use of "RALPH LAUREN" in the title of the listing (which is in larger type than the remainder of the page). Nominative fair use dictates that the mark not be used any larger than necessary. By using it in the larger title of the item, you are unfairly using PRL USA, Inc.'s registered trademarks to attract consumers to this item. If you remove the RALPH LAUREN from the title of the article, the remainder is fine. Finally, do not interpret my failure to respond to your characterization of our telephone call as an agreement to that characterization. Roxanne

Ok, so Roxanne is now upset over font sizes. Are you freaking kidding me? This is obvioulsy a last straw attempt to scare me into obeying her. Doesn't she know I am tenacious and don't respond well to being bullied?

I pick up the phone and call Roxanne, where we proceed to get into a yelling match about her completly UNREASONABLE demands. I, in good faith, have made changes to 'appease' Roxanne, when she knew all along that there was no customer confusion what so ever that this was a handmade item. She kept trying to bully me into removing Ralph Lauren from my title, which would unreasonably debilitate my items in any search engine (remember, I am using authentic Ralph Lauren fabric). She was sneakily trying to back-door the law and act like a corporate bully.

I ask Ms. Unreasonable if I move the disclaimer above the picture and below the ordering box would she now be happy. She responds that she doesn't know and would have to see it. This send me on a tirade about how that is what she said last time and it took numerous phone calls for me to get back in touch with her and I didn't think I should have to babysit her. So, she hung up on me. Professional. Very professional.

I prepare the new listing and email to her. I prepared to email her every 90 minutes around the clock until I got a conclusion. As it turns out that was not necessary, as Roxanne emailed me back a few minutes later with this:

Dear Ann,

This is fine.

Roxanne

So le't review:

1. Law firm sends cease and desist that they know damn well has no legal standing in the hope of scaring small business into discontinuing item.

2. Small business fights back.

3.Law firm continues to be unreasonable and resorts to trying to "ignore" the problem.

4. Small business plays semantics with titles.

5. Law firm has a temper tantrum over font size.

6. Small business moves disclaimer higher, refused to give into demands to stop using "ralph lauren".

7. Law firm comes to their senses and backs off.

8. Small business continues to sell items, with the same basic titles, just rearranged.

9. Ralph Lauren gets billed for a law firm who did nothing more than kill a tree, play semantics, annoy me for a few days, and embarrass themselves. Ain't America GREAT?

In closing, we give

Roxanne G. Elings and Greenberg Traurig, LLC a big TWO THUMBS down for behaving like a corporate bully!

How do you like *THAT* font size, Roxanne?