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License copyright/trademark issues

 
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Cow man
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PostPosted: Tue Jun 24, 2014 5:55 pm    Post subject: License copyright/trademark issues Reply with quote

Hi all,
I pay a license fee to use over 3000 koolart images( cartoon cars bike planes trains etc) however i keep reciebing infringememt norices from manufactorers! For trademark etc!
If koolart draw the images i know they own the copyright to the images, however im now guessing they have no right to actually license/sell the images to be used to produce goods for sale??
Say i draw mickey mouse? I own the copyright to that actual drawing but have no right to sell it as 'unofficial product' type thing??
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AndyJ
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PostPosted: Wed Jun 25, 2014 2:18 pm    Post subject: Reply with quote

Hi Cow man
There's a lot to consider here.
Trade marks
If you have been contacted about alleged trade mark infringement, then the person/company concerned should have provided details of their trade mark(s), so for instance whether they are registered and if so their registration numbers, which in turn will show whether they are UK or EU trade marks. If they have supplied this information you can easily use it to check on the IPO website the classes of goods or services for which the trade marks have been registered and whether there is any commonality with your products. Moreover, if the mark is in the form of a graphic (I assume it is in view of the fact you mention artwork) then you can compare your artwork to the registered mark and again decide whether there is any similarity between the two. Assuming that there is both some similarity in the artwork and in the class of goods, then you need to consider if your use of the artwork could be construed as a trade mark. For instance if your artwork is purely decorative on a product such as mug or a tablemat, then there is much less likelihood that a consumer would be confused into thinking that the artwork on your product was an indication of the origin of the product (ie it had been made by the other company). If you feel that there could be little chance of confusion about this, then you can probably dispute the claim of infringement. And of course it is fundamental to a claim that your use is in the course of business, ie you are actually selling your products or artwork, which I have assumed is the case. If you feel there are similarities in the artwork, in the types of product and that there is a possibility that your artwork could be taken as a sort of trade mark, then you might want to get some legal advice, after first reading this helpful brochure(pdf) from the IPO.
Copyright
Virtually all modern artwork will be protected by copyright. The fact that you have licensed this artwork from Koolart means that you should be able to use the artwork as described in the licence, and so you need to read the licence carefully to see exactly what is being granted to you. Unfortunately their website doesn't provide any details about their licences so I haven't been able to research this aspect. But I have assumed that their licences are designed for commercial use. One of the key things to check is whether you have been granted exclusive use of the artwork you have licensed, If you haven't then it is likely that others may also have licensed the use of the same images, and are possibly using them in a similar manner to you, leading to the claims of infringement. If this is the case, then you may need to turn to Koolart to resolve the issue as they are, I assume, the owners of the copyright, and only they can bring a claim for infringement where there is no exclusive licensee. However it is possible that Koolart are themselves licensees, and if so you would need to check if they are authorised to issue sub-licences. In any event, I do not think, based on what you have said, that there has been any primary infringement on your part and that your use of the licensed images has been in good faith, so you are unlikely to face liability for damages in the unlikely event of this going to court.
Third Party Trade Marks
Finally, you mention the possibility that the Koolart images themselves may include trade marks and or copyright artwork belonging to a third party. If this is so, then you should refer all correspondence you receive to Koolart as they would be liable for any primary infringement, and their licence should indemnify you against liability, although judging by some of the terms and conditions on the website, it may not.
And as far as reproducing images of Mickey Mouse is concened, this would infringe both copyright (in the cartoon character) and also the registered trade mark of the Disney Corporation, assuming that you used the image on a product where a consumer would be likely to understand that it was official Disney merchandise. Even if the trade mark allegation could be refuted, there might well be grounds for bringing an action for passing-off. However there is nothing to stop you creating your own generic mouse character, so long as it does not include features (such as the big round ears) which one would normally associate with Mickey Mouse.
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Cow man
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PostPosted: Tue Aug 05, 2014 7:51 am    Post subject: Reply with quote

thank you for that. The mickey mouse reference was purely that.

Koolart has no agreement in place with ANY trademark owner, they license a Ferrari 'koolart' car (including bonnet badge on most) as ferrari in the catalog.

therefore Ferrari claim infringement, yet how can Koolart license such an image and call it Ferrari. There are no restrictions by Koolart as to the products they can be used on. Furthermore, how can an image of a Ferrari be sold without using the word Ferrari in the title? or the car actually looking like a Ferrari?
So! in theory making Koolarts license worthless? Trading standards say that you can not list against a Trademark or place 'unofficial' on ANY product as it then may as well say 'fake'!

The wording in the license is all of 10 lines, basically along the lines of money, money, money and did I mention money??

JCB, John Deere, Ferrari, Aryton Senna Foundation, Bugatti, the BBC, Valentino Rossi, Yamaha to name but a few who have contacted me over the past 18 months..........are they all wrong and Koolart right?

Can I draw a FERRARI, in the shape of a Ferrari, with a Ferrari badge, call it a Ferrari car and sell it on a mug.............
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AndyJ
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PostPosted: Wed Aug 06, 2014 12:03 pm    Post subject: Reply with quote

Hi Cow man,
The drawing on its own doesn't present much of a problem, but using the Ferrari logo and/or the word Ferrari would be inadvisable if you have already been contacted by Ferrari s.p.a. about using their trade marks.
On the IPO website there are approximately 200 registered UK and EU trade marks relating to Ferrari. Few if any appear to be registered in class 21 which includes mugs, but given the wide range of other classes which have been registered for merchandise employing the Ferrari trade marks, I think there is little doubt that Ferrari could bring a convincing case for infringment by use of the same mark on dissimilar goods (contrary to s 10 (3) of the Trade Marks Act 1994) and also for passing off which would be relatively easy for them to prove, given that they have goodwill in their brand.
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Cow man
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PostPosted: Wed Aug 06, 2014 4:13 pm    Post subject: Reply with quote

I only mention Ferrari as they are one of many.

The same issue counts for ALL makes of car, bikes, planes and trains etc.

koolart claim to have the right to license the images as they have drawn them?

However they also tell licensees to 'stay under the radar' almost word for word!! They have had several cases where they have changed the names of drawings? For instance: JCB digger to yellow digger and having to remove the JCB wording of the digger drawing.

My argument is, what is the point in paying a license fee that in theory is legal due to the trademark issues? try selling a Ferrari Item, be it a mug, cake topper, hoodie etc without using the word Ferrari?

Can you understand my connection to the Mickey Mouse thing? I can't draw a picture of him and sell it as him in name or looks? Same must go for almost everything? if someone can look at an image (Ferrari, JCB etc) and straight away see/know it is a Ferrari or JCB? then the image can not be used, therefore you can not license it for use without an agreement from the trademark owner?
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AndyJ
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PostPosted: Wed Aug 06, 2014 4:53 pm    Post subject: Reply with quote

Hi cow man,
I can certainly see your frustration at the the situation with Koolart licensing something they clearly don't have the authority to licence.
Moving to your other point about Mickey Mouse and images of cars etc, there is a fundamental difference between them. Because Mickey started out life as an artistic work, he was protected as such for copyright purposes. However where cars are concerned, the original drawings used to manufacture the car would also be protected by copyright, but the resulting vehicle is not. It is possible that a car can be protected by design right, although it is more common to find individual parts are so protected, but design right operates in a different manner so making a drawing of a car or tractor would not infringe it.
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Cow man
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PostPosted: Wed Aug 06, 2014 5:19 pm    Post subject: Reply with quote

So! It comes down to trademark of the name and/or logo?
If the image has the makers badge on the bonnet and/or the name ford, Ferrari, Lamborghini etc are trademarked withe, i can sell sell an item that anyone may consider as being related to them in amy form?
John deere not only own the name john deere, but the colours of green and yellow for an agricultural vehicle...... So surely ANY tractor or similar in green and yellow could be construed as trademark infringement?
If koolart are that confident they are right and all the companies that have contacted me to date are wrong? Why would they keep complaining? Like i mentioned before, trading standards say i can not put 'unofficial' on the listings etc? Therefore the rights owners can claim passing off as no warning is shown?
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