Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[donaldgentry]

I am trying to find a fair use title for selling a homemade product for use with a Trademarked product.

I have been trying to find an auction title for selling homemade terrain for use with Warhammer 40k.

Just to clarify, warhammer is a company that makes little miniture fantasy armys. People buy these armys and the rule books and fight against each other with these armys.

Terrain (Miniture hiils, buildings, walls ect.) is placed on the table and figures into game play. Almost all terrain used in the game is home made, some of it is purchasable by the company.

I started out with some titles like "40 Peice Wall set Warhammer Terrain" and "Large Hill Warhammer Terrain"

All my auctions were of course kicked by the trademark holder. I began to look for an acceptible wording for my title auctions.

I tried "40 Peice Wall Set 4 Use with D&D, and Warhammer" and was again Kicked

I then tried the same title and added a huge dislaimer stating I was not affiliated with warhammer in any way but that got me kicked as well.

Can anyone tell me if I should just give it up as there is no fair use in my case, or provide me with a wording that would pass as legal test.

Also I live in Sacramento california and would like to take the company who indeed opperates in this state to small claims court. I wonder if the court would even be able to take the case?

[Isaac]

Unfortunately you are working in an area where the question is not strictly one of law, but is instead wrapped up in Ebay's use policies.  

IMO while your original ad was very questionable because it arguably could be read to imply some association with the trademark holder, your second ad seems far less controversial particularly if your disclaimers were appropriate.

Unfortunately, that might not be enough to satisfy Ebay who can probably legitimately have a more conservative policy than the law allows.

[tabberone]

Trademark and copyright cases are heard in federal court, not small claims (I'm think, I'm pretty sure)

According to eBay's rules you can say once in the description that these items would go great with Warhammer products.

eBay says that, Warhammer can you down again.  What you are risking is being suspended for being a repeat offeneder.  You need to figure out with the VeRO member what is acceptable and see if they will retract the take down from your record.

[Donald Gentry]

The tradmark holder is having my auctions pulled under DMCA. Ebay dosent really have a choice.

I can send a counter letter and I will either have my auctions restored or have the tradmark holder bring a lawsuit against me.

Im certainly willing to go to court on this issue if I feel im in the right. I paid for a consultation with a lawyer who felt that we were ok under fair use with the new wording and disclaimer but was hoping some one had some another perspective.

Here is a section from the DCMA that covers my rights to get my auctions restored.

In order to ensure that copyright owners do not wrongly insist on the removal of materials that actually do not infringe their copyrights, the safe harbor provisions require service providers to notify the subscribers if their materials have been removed and to provide them with an opportunity to send a written notice to the service provider stating that the material has been wrongly removed. [512(g)] If a subscriber provides a proper "counter-notice" claiming that the material does not infringe copyrights, the service provider must then promptly notify the claiming party of the individual's objection. [512(g)(2)] If the copyright owner does not bring a lawsuit in district court within 14 days, the service provider is then required to restore the material to its location on its network. [512(g)(2)(C)]

[tabberone]

Be prepared though that Warhammer could claim it was trademark infringement and then eBay will not forward the counternotice.  They will claim they took down the auction under provisions of the Lanham Act.  That's not really what they are doing but that is what they will claim.

Additionally, as I found out if the rights holder didn't specify eBay has been known to call.  I personally believe the rights holder is steered to the 'trademark' side so eBay doesn't have to forward anything.

Also, the rights holder has up to 2 years to take you to court.  They have 14 days to respond and let you relist that ONE item.  You relist and sell that.  They can shut you down the next day for a similar but different item.

[Donald Gentry]

I belive they took down the auctions because of a complaint from Warhammer as part of there Verio program.

I think the Verio program is specificaly a mechanism for enforcing the DMCA. So I should be fine getting my auctions relisted.

As far as them taking me to court, perhaps I better not fight them over this and go get a corperate shell. I can then do business under that corporation. If it goes really bad for me a little limited liability might be very usefull.

[tabberone]

No it's not.

VeRO was set up to enforce the DMCA.  eBay will take down auctions upon a complaint from a rights holder.  A few years ago they would forward a counter notice that had a heading Copyright/Trademark or Other Infringement.  Now they will only forward it if it is a copyright claim.  But they will still take down the auction.  As I said and they repeated in their VeRO workshop they are claiming the Lanham Act gives them rights to take down the auction. The Lanham Act calls for an injunction but eBay says they don't want infringing items on their site.

I've been shut down for trademark infringement and they refuse to forward the counternotice.  

If you become a corporation and they come after you you will need an attorney.  Since I'm not incorporated I can go into federal court on my own.  

It's not so much them suing you that you have to worry about, it's them shutting you down repeatedly and eBay suspending you.

[Isaac]

Ms Tabberone is correct.  The DMCA applies specifically to copyright infringement.   As written it would not include trademark, trade secret or patent infringement.

That works somewhat to the disadvantage of a poster because he cannot follow the "put up or shut up" provisions that allow getting the allegedly infringing material back up.

[Gonald Gentry]

Thanks a bunch. This has been a great help.

I think at this point I should try the counter complaint anyway and see what happens. Then I will know for sure what mechanism there using to remove my auctions.

If I cant get the auctions relisted with the counter notice I would like to take the company who keeps demanding my auctions be removed from ebay to small claims court for the loss of business. I will talk with a lawyer in town and see if I can come up with some valid angle that would give me a chance of winning such a case.

For 500$ the lawyer I consulted would write them a letter stating our position that we are allowed to use there trademark under fair use under title 17. I seriosly doubt the letter would do much good but perhaps it would help me in court later.

[M. Arthur Auslander]

Dear Mr. Gentry,

If you want to make money don't look for legal problems in what you are doing. Play it straight and make a bundle without having to worry or pay legal fees.

[donaldgentry]

I use warhammer in my auction titles. Here is a sample.

"40 pc Wall Terrain Compatible with warhammer 40k"

After my latest auction was kicked I sent them the following email:

I’m not sure how trademark enforcement is handled in the UK but here in the United States the following constitutes Fair Use. Use of product names by third parties is allowed without permission or license when indicating that a product is compatible with another product.

I am willing to consider an alternate wording that would, in your mind make it clear that I am selling a compatible product. I am also willing to ad a clear disclaimer in my product description. I am not willing to completely avoid your product name since I am entitled to use it under Fair Use.

I then received the following email from them

We do not allow use of our trademarks in the title of an auction that is vending a product that is not of Games Workshop origin. Games Workshop views any trademark within the title of a non-GW product auction as an infringement, the title of the auction is necessarily what you are selling, not the area for comparative advertisement which would properly be the body of the auction. We would refer you to real life auctions as an example.

Does any one feel I am wrong?. Any opinion would be appreciated

[tabberone]

Well your listing is in violation of eBays rules.  You are allowed one comparision with a brand name in your item description.  You are not allowed to use a brand name of an item you are not selling in the title.

Most of the people searching on eBay use title and description so you will still come up in a search.  It sounds like that would be ok with them.  

And it would fit into eBay's rules.

[donaldgentry]

Well let me say I'm honored to have the famous tabberone reply to my message. I have read about your battles over copyrighted fabrics.

Do most people search by description and not just title? I didn't realize that was the case. I would have though just the opposite. Obviously the whole issue is about loss of potential sales for me.

I will try it your way for a while only using there trademark in the description.

I still think I could win in court and get the company to leave me alone but if I am in violation of Ebays rules then there really is no point.

[tabberone]

I'm blushing.

You could probably win in court.  They would bring up initial interest confusion then you could point out to them that that doesn't apply.  But I digress.

Do you have an eBay store?  There are a lot of stats available.  Most people search in title and description since the title is only (now) 55 characters.  I expect that people can't fit in everything I need to know.

[donaldgentry]

I cannot get an ebay store yet.

Well the sad story is this, my partner and I had worked an account up to about 100 feedback before we had our account suspended for repeated violation of the warhammer trademark.

My partner quit over the issue and refused to send the the fax that would promise not to do it any more.

I setup another account this year and decided to start up again. I became ID verified. I was going strong, untill I decided to sign up for auto pay. I apperently used a credit card that I used last year on my friends account.

So ebay rightfully associated my account with his account and I lost it. I am now using an account that does not have a valid address and cannot get an ebay store till I build up some feedback.

I actualy except to lose my current account this week as I reworded the auction titles and then sent the new titles and the auction numbers to the legal department of the trademark holder. I told them that the new titles bearing the phrase "Compatible with warhammer" would clearly pass a confusion test in federal court and that there position neededed to be tested in court