Thursday, October 4, 2012

Cornhole Board Kits and Sports Teams

Dear Rich: I just stumbled upon your blog post regarding cornhole boards and sports decals. I am a maker of custom boards and I'd like to sell boards in team colors. I know that I can't attach logo decals to the boards. However, am I within the bounds of the first sale doctrine if I sell boards in team colors and include licensed logo decals that are not attached to the boards? I believe that I should be okay if the purchaser needs to attach to decals, correct? Uh, we're not so sure. As we indicated in the previous post, buying and selling team decals is fine under the first sale doctrine. But selling a "kit" with a decal and team-colored board may not provide a successful infringement end run.
When the first sale fails ... The first sale doctrine cannot be used as a defense when non purchasers of the item (people who see the assembled product but who didn't purchase the kit) would be confused as to the source. This case provides some background on the principle and illustrates a few cases where the first sale defense failed. (Here's an article explaining the case.) By analogy there is a Supreme Court patent case that prohibits the "knowing" sale of kits (by which the purchaser can assemble an infringing invention). In that situation, the seller can be charged with inducing infringement. Bottom Line Dept. We can't predict how a court would rule in your situation but we believe that if the leagues learned of your activity, they would seek to halt it based on a theory of inducement of infringement.

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