Neutrik v. Switchcraft relevant case for A. Hayatt controversey

[Rev E]

WHETHER ALAN HAS A LEGITIMATE CLAIM AGAINST TFPRO/TED FLETCHER IS A VERY DIFFERENT ISSUE THAN WHETHER HE HAS A CLAIM AGAINST MOJO PIE/OZRAVES/STEVE.

Somebody, somewhere along the line, seems to have gotten the impression that Alan had to have his lawyers send a threatening letter to Steve or it would be "selective enforcement". That is so, so VERY wrong ... Any doctrine of "selective enforcement" doesn't apply in that context.

In short, Steve is not using the marks as trademarks. He therefore could not possibly be liable for trademark infringement, even if TFPRo was. That's really not a debatable point. The law is clear ...

Great point jslator. I, however, want to add something to your legal analysis. You are very correct that it is highly uncommon for trademark owners to sue advertisers. The one important reason why this is not done regularly is because if they did, they would have to defend the merits of their case against the "alleged" trademark infringers (the sellers of trademarks that are confusingly similar). However, it's my understanding that a trademark owner (under US law at least) can assert rights against anyone who is using a trademark that is confusingly similar to their trademark. (See 15 U.S.C. 1125 infringement applies to "anyone").

As far as the "selective enforcement" nonsense, it is correct that it would be selective enforcement of trademark rights NOT to send a cease and desist letter to Steve or anyone else who is selling or advertising infringing trademarks. The thing that many folks aren't realizing is that IT IS IN NO WAY CLEAR WHETHER ALAN AND CO. TRULY OWNS ANY TRADEMARKS TO BEGIN WITH. Alan and Co. have no "registered" US trademarks. It appears that they may have one UK trademark, but that's all. As you have said several times A COURT IS THE ONLY BODY THAT CAN DETERMINE AT THIS POINT WHETHER ALAN POSSESSES A COMMON LAW TRADEMARK. None of the threatening cease and desist letters will make any "alleged" trademark(s) any more real.

 

[jslator]

As far as the "selective enforcement" nonsense, it is correct that it would be selective enforcement of trademark rights NOT to send a cease and desist letter to Steve or anyone else who is selling or advertising infringing trademarks.

Just to be clear, Steve is not using the trademark as a trademark. Only one who uses a trademark as a trademark can be liable for infringement. Using it "as a trademark" means applying it to your own goods and services. Steve isn't doing that. So, it doesn't matter who owns it, Steve can not be held liable for infringement. And therefore it's morally and legally wrong to threaten to sue him for infringement.

And with that, I grow weary of this topic...

 

[DJL]

Steve can not be held liable for infringement. And therefore it's morally and legally wrong to threaten to sue him for infringement.

Amen.

 

[regebro]

I think Alan (PMI) has every right to prevent the further sale of these products until a judge or arbitrator makes a legally binding decision.

Although I agree with everything you say, I want to point out that even though he has the right to, it doesn't mean he HAS to. I think it's a bad business decision to go after ozraves.

Alan is probably not the bad person here, but by doing this, he looks like it.

 

[Rev E]

Just to be clear, Steve is not using the trademark as a trademark. Only one who uses a trademark as a trademark can be liable for infringement. Using it "as a trademark" means applying it to your own goods and services. Steve isn't doing that. ...

But Steve's banner was (I believe) using a "trademark" (Ted's signature, and a "pic of a product" that Alan "claims" he owns trademark or trade dress rights to).

One CAN be liable for trademark infringement for any use that violates the trademark owner's rights. This would include, among other things, advertising a "trademark" that infringes on a legit trademark. This is called Contributory Trademark Infringement. It exists to prevent others from intentionally inducing others to infringe a trademark, or supplying "a product (here the advertising) knowing that the recipient is using the product to engage in trademark infringement." See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982).

Where Alan and Co. got off on the wrong boat is that they insisted that Steve take down the whole ad. In truth, EVEN IF they do own trademark or trade dress rights to the signature or the overal design features of the Ed the Compressor, The only thing that they had a legal right to object to was the use of the allegedly offending TRADEMARK, nothing more.

The letter went a bit more to suggest that they had a right to prevent Steve (an advertiser) from having simply an ad advertising the compressor altogether. To suggest such a thing is IMO the unethical act. They should have simply told Steve to reconfigure the part of the banner ad that had the "allegedly" offending trademark. If Steve didn't want to do it, Alan could then file a preliminary injunction to prevent Steve from using only the "trademark." But it would be unlikely that Alan would even attempt such a thing (unless he were a vindictive, silly man). This is because to win a preliminary injunction, he would have to argue the merits of his case against Ted Fletcher to get a court ruling that he, indeed, owns the trademark rights that he claims to own. If he had a registered US trademark, this would be easy, but to prove common law rights he would have to prove first use, ownership and control, distinctiveness, acquired secondary meaning... this is a big feat with mountains of paperwork and expense (Alan's expense). But instead, he issues a veiled threat alleging more then he really owns.

 

[DJL]

I think it's a bad business decision to go after ozraves.

I agree.

 

[TexRoadkill]

At least I know not to ask you guys for legal advice, lol. Jslator where did you get your law degree, San Bernadino Community College?

This is so fucking simple it's ridiculous. PMI purchased assets of a company. Somebody disagrees with what those assets are and therefore there is a dispute.

Of course you can trademark a name i.e. 'Joe Meek', 'Fender', 'Manley', 'Betty Crocker', 'Col Sanders', 'Donna Karan' etc. That doesn't mean a person cannot use their name but it does mean they cannot use that name in the promotion of a product that is similar to the one that is trademarked.

Why does Leo Fender not put his name on his new guitars with that other company (I can't remember their name)? Because the name 'Fender' and the signature as a logo is a trademarked asset of Fender, Inc. He could probably get away with calling them 'Leo' but maybe that was sold as a trademark too (I don't know).

Ozraves has two choices here.

He can decide that there is a pretty messy legal battle between two other parties and he should just get out of the way.

Or he can decide to become a party and take on the liability associated with that. Which may or may not have any consequences.

The only people who win legal battles are those who don't get involved.

 

[jslator]

One CAN be liable for trademark infringement for any use that violates the trademark owner's rights. This would include, among other things, advertising a "trademark" that infringes on a legit trademark. This is called Contributory Trademark Infringement. It exists to prevent others from intentionally inducing others to infringe a trademark, or supplying "a product (here the advertising) knowing that the recipient is using the product to engage in trademark infringement." See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982).

You obviously didn't actually read that case. The doctrine of contributory trademark infringement doesn't apply where there is a legitimate dispute between the parties as to the veracity of the trademark. Reread my earlier comments. If Steve and Ted had effectively conspired to infringe Alan's trademark, Steve would have a problem. Where the issue is undecided, Steve can't and won't be expected to adjudicate the matter.

 

[jslator]

This is so fucking simple it's ridiculous.

Which is why I find it amazing that you still can't understand what the issue is. I'll give you another hint - it's not a question of whether you can trademark a name, whether "Ted Fletcher" is a trademark, or even whether Alan owns that trademark. It's whether Steve can be held liable for having a TFPRo banner ad on his site (which, incidentally, doesn't include any of the trademarks that Alan is alleging he owns, except maybe the signature, which is pretty-much illegible in the ad).

Anyway, if you don't get it by now, I suspect you never will.

Over and out...

 

[crazydoc]

This is so fucking simple it's ridiculous.

I agree, but for a different reason.

If a court finds that Ted has not infringed on Alan's trademarks, then oz can keep the ads on his site.

If a court finds that Ted has infringed, then the ads will have to be removed.

Until then, the ads can stay, with no legal liability.

We don't need a bunch of lawyers to help us finger that out.

 

[Rev E]

You obviously didn't actually read that case. The doctrine of contributory trademark infringement doesn't apply where there is a legitimate dispute between the parties as to the veracity of the trademark.

Jslator,
I DID read the case. I wasn't using the case to show you a fact-pattern that was similar to this issue. I was simply using the case to show you that 1) there is such a thing as contributory trademark infringement and 2) one can be liable for contributory trademark infringement even as an advertiser or another use of the trademark to sell something other than the product that the trademark is affixed to (here the advertising).

I've never said or indicated that Steve was automatically guilty of this. To the contrary, he's guilty of no such thing until Alan proves in court that he really does own the trademark(s) (in the US) that he claims he owns. My comment was directed to your statement that seemed to imply that Alan didn't have the legal right to stop Steve or any other secondary party from advertising using the trademark even if he (Alan legitimately owned the trademark). I'll restate: IF Alan & Co. really do own the trademarks they say they own, the have the legal right to stop ANYONE from any non-approved use of the "trademark" ... even an advertiser like Steve.

BUT, as you have correctly pointed out the only entity that can state whether Alan truly does own the Joemeek trademark(s), is a court of law. Further, as you correctly pointed out, any cease and desist letter such as the one sent to Steve is a bit premature unless Alan wants to defend his case against Ted Fletcher on the merits.

....Where the issue is undecided, Steve can't and won't be expected to adjudicate the matter.

That's not entirely true. As I said above, if Alan wanted to pursue the matter with Steve, he (Alan) could seek a temporary injunction. In such a case, Alan would then have to prove that he owned the trademark(s) in question to be able to show a likelihood of success on the merits of a trademark/trade dress infringement claim. It would be a long and silly way around it for Alan to do this ... but he COULD do this if he so chose.

 

[Brent Casey]

Contraband products?
If known to be of questionable legality?
Stolen goods?
"Fencing"?
"breaking and entering"?
"larceny"
alleged contraband products ?

wow!

Hey slimeball,
Nice cropped images on your site. Your kind always has to resort to stuff like that.
Have fun repairing that TF Pro stuff. Two words of advice: Heat sink. I'm sure Ted was probably "pressured by his distributors" to leave them off. He fought valiantly, but in the end...
That's just a REALLY obvious one, by the way. I hope you're good at troubleshooting, because some of Ted's errors aren't so glaring.
Oh also, I don't think that you're going to land on your feet like Alan did after his dealing with Ted. You're not good enough in any sense of the word from what I've seen so far. You may think that we're the big enemy, but trust me pal, you're going to have a real funny look on your face when the jolly British "Design Genius" sticks that knife in your back.

Cjeers,

Brent Casey
PMI Audio Group
877-563-6335

 

[DJL]

Ozraves has two choices here.

He has more than only two choices... i.e. he could keep conducting business as usual and tell PMI to fuckoff.

 

[DJL]

Hey slimeball,
Nice cropped images on your site. Your kind always has to resort to stuff like that.
Have fun repairing that TF Pro stuff. Two words of advice: Heat sink. I'm sure Ted was probably "pressured by his distributors" to leave them off. He fought valiantly, but in the end...
That's just a REALLY obvious one, by the way. I hope you're good at troubleshooting, because some of Ted's errors aren't so glaring.
Oh also, I don't think that you're going to land on your feet like Alan did after his dealing with Ted. You're not good enough in any sense of the word from what I've seen so far. You may think that we're the big enemy, but trust me pal, you're going to have a real funny look on your face when the jolly British "Design Genius" sticks that knife in your back.

Cjeers,

Brent Casey
PMI Audio Group
877-563-6335

Humm, Alan thinks Ted's work is good enough to buy.

 

[ausrock]

C'mon DJ, even you know better than that.

 

[Paul Robison]

Hey slimeball,
Nice cropped images on your site. Your kind always has to resort to stuff like that.
Have fun repairing that TF Pro stuff. Two words of advice: Heat sink. I'm sure Ted was probably "pressured by his distributors" to leave them off. He fought valiantly, but in the end...
That's just a REALLY obvious one, by the way. I hope you're good at troubleshooting, because some of Ted's errors aren't so glaring.
Oh also, I don't think that you're going to land on your feet like Alan did after his dealing with Ted. You're not good enough in any sense of the word from what I've seen so far. You may think that we're the big enemy, but trust me pal, you're going to have a real funny look on your face when the jolly British "Design Genius" sticks that knife in your back.

Cjeers,

Brent Casey
PMI Audio Group
877-563-6335

Hi Brent,

No need to sweet-talk me. If you want to get an Edward the compressor, all you have to do is ask. It really is a piece worth all the attention. This thing just sounds great, and the transient release and stereo control are the icing on the cake. We were mixing down some tracks last night and ahhh " Eddie" made them shine!
Or was it the P-2 you were interested in? It is still on sale through the end of the month -only one day left-!
We are taking rain checks if we run out of stock, but you must order by the end of today. Just go to www.soundsriteaudio.com if you are outside the US go to www.tfpro.com.

Thanks,

Paul Robison

 

[ausrock]

Why would Soundsrite crop the images of the TFPro gear so that Ted Fletchers signature is no longer visible if there wasn’t some question to the validity of PMI’s claims?

What is even more obscenely amusing is their TFPro logo which is an image of Joe Meek ………….if anyone has any doubts, compare it to the photo of the man himself.

Not to mention that amongst the downloads on the TFPro site you can get an image that reads "JMUK".......which makes me wonder just how much respect TF has for his past products.

Things get more interesting every day.

 

[DJL]

Better than what ausrock?

 

[regebro]

What is even more obscenely amusing is their TFPro logo which is an image of Joe Meek

Not only that, the late Joe Meek is also giving the TFPro produkt two thumbs up. From beyond the grave I guess.

I have always found it disturbing that Joe Meek actually has nothing to do with joemeek. And now, when joemeek is more well known that Joe Meek, I see absolutely no reason to has the man's likeness anywhere.

Ah well.

 

[Brent Casey]

Hi Brent,

No need to sweet-talk me. If you want to get an Edward the compressor, all you have to do is ask. It really is a piece worth all the attention. This thing just sounds great, and the transient release and stereo control are the icing on the cake. We were mixing down some tracks last night and ahhh " Eddie" made them shine!
Or was it the P-2 you were interested in? It is still on sale through the end of the month -only one day left-!
We are taking rain checks if we run out of stock, but you must order by the end of today. Just go to www.soundsriteaudio.com if you are outside the US go to www.tfpro.com.

Thanks,

Paul Robison

Hey thanks for the offer man. I'm sure that "Eddie" is making things shine around there, but I think I'll pass.
And I really have no need for an old JoeMeek TwinQ painted red.

happy returns,

Brent Casey
PMI Audio Group
877-563-6335