Rickett Customs
Commercial User
They gotta get somebody, sometimes it just happens
Sometimes you're the dog, sometimes you're the hydrant
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Fender Legal Issues
- Thread starter -=DanAtkinson=-
- Start date
They gotta get somebody, sometimes it just happens
Sometimes you're the dog, sometimes you're the hydrant
I thought Nash "got away with it" because his parts supplier is a licensed fabricator of Fender replacement parts.
of course I may be wrong and the fact the parts are speced for him and are used commercialy can render this argument false.
anyway, he does put his own logo on the headstock starting some years ago.
in any case the Fender logos on his creations are user or retailer driven, not his initiative.
of course I may be wrong and the fact the parts are speced for him and are used commercialy can render this argument false.
anyway, he does put his own logo on the headstock starting some years ago.
in any case the Fender logos on his creations are user or retailer driven, not his initiative.
Only guessing here, but I'd bet you could use licensed Fender necks with the trademarked headstock shape only if NO logo of any kind would be applied. In other words, the license probably covers the shape only and in no way allows the use of Fender's logo or the use of any other logo on Fender's design. However, when a Fender customer uses the same neck as a replacement, the original purchase then covers the use of a replacement (factory) Fender logo.
bongomania
Commercial User
On Nash's site he used to explicitly state that he will not apply a Fender decal to any instrument. His current site doesn't mention this, but you can see that absolutely every instrument pictured on his site does not have a Fender decal. So in the cases you saw, almost certainly someone else (i.e. the dealer) applied the decal. Or, more likely, the instruments were not new, and the original owner applied the decal.
Here's another tidbit from Nash's site:
Okay, this was bugging me so I called my lawyer and emailed her this thread.
The caveats are, she's Canadian, so her thoughts come from precedents here and in common law. Your particular laws can only be addressed by a practicing attorney in your home district. Also, she's only looking at one brief piece of information, from your perspective Dan.
She guessed that either Nash has an agreement with Fender, or he may be engaged in a protracted legal negotiation with them and is continuing to build his product until ordered to stop by a court. If the latter is the case, Nash could have received the same letter you did, but responded through his own lawyer with an "Oh yeah? Prove it" type response. Fender's lawyers would then have to go through the extended call and response of legal negotiations, that depending on their interest in what Nash is doing, may not be important enough to them to throw money at, but let the process trickle along until they get to filing an order in court. My lawyer said in her own experience, this kind of "soft" legal battle can take several years to sort out before he's forced to stop using their shapes. It may have begun five years ago and is still in process, and consequently he's still using the shapes until he can't.
She emphasized that you need to get your own local legal advice, but she guessed that at this point, your letter is basically asking you to do the honourable thing...
The caveats are, she's Canadian, so her thoughts come from precedents here and in common law. Your particular laws can only be addressed by a practicing attorney in your home district. Also, she's only looking at one brief piece of information, from your perspective Dan.
She guessed that either Nash has an agreement with Fender, or he may be engaged in a protracted legal negotiation with them and is continuing to build his product until ordered to stop by a court. If the latter is the case, Nash could have received the same letter you did, but responded through his own lawyer with an "Oh yeah? Prove it" type response. Fender's lawyers would then have to go through the extended call and response of legal negotiations, that depending on their interest in what Nash is doing, may not be important enough to them to throw money at, but let the process trickle along until they get to filing an order in court. My lawyer said in her own experience, this kind of "soft" legal battle can take several years to sort out before he's forced to stop using their shapes. It may have begun five years ago and is still in process, and consequently he's still using the shapes until he can't.
She emphasized that you need to get your own local legal advice, but she guessed that at this point, your letter is basically asking you to do the honourable thing...
I doubt Nash ever puts his logo on any Fender licensed headstock; I'm fairly certain that "Nash" decals, when supplied, are just tossed into cases with his Fender-headstock instruments.
Now that, folks, is a proper answer.
a proper answer is just hearsay?
Why not ask Nash, instead of a bunch of people who aren't lawyers or FMIC?
I apologize if you felt insulted, that certainly wasn't the intention. I understand your frustration, and I think it is human nature to react to things like that. I still think you need a relationship with a good attorney. If you want to play with the big boys, you have to realize that first of all, things are seldom "fair"...and Fender is one of the biggest boys around. They have the cash to "almost" write their own rules. Again, not fair, but it is life, and you need a lawyer on hand when you play in someone like Fender's sandbox. Just for your own protection, not because you are doing anything wrong.
I think your perspective is slightly off( but understandable)...if Fender put Nash out of business, does it affect your business...not really, except maybe an extra order or two. If they bless his work, does it affect you? No,you still have to get the word out and sell yourself and your work. In time, you may be bigger than Nash, no real reason that you couldn't.
In your example about speeding, yep, I would be upset and feel singled out because I'm human too...but it would not change the fact that I did break the law, and still deserved the ticket. Somebody else running free or getting busted wouldn't change that fact, or remove my guilt.
I have asked Nash. As I said several times before.
And bongomania's answer is "proper" because it properly addressed my specific question. As opposed to going off-topic into issues that are entirely subjective and personal.
I never said his answer was accurate.
Trademark Fender headstock shape. That means it's TRADEMARKED. Look up that word and connect the dots. Obviously, builders who use that TRADEMARKED headstock shape have gotten legal permission from Fender to do so, and/or are paying a licensing fee of sorts. If Fender is getting their money-engorged panties in a bunch over you using something of their design, then they have legal collateral to use against you (i.e., TRADEMARKING) or else they couldn't do anything about it.
Simple stuff, really.
IMHO this is a question that you will never get a satisfactory answer to unless you can get all parties involved to sit down and explain it to you. Your reputation on this forum seems to be quite good, maybe this will be a catalyst for change that will take your basses to new heights. I don't know. I do know that no one here can answer why Fender does what it does.
The problem with my analogy is that a speed limit is a clearly defined rule. It is not ambiguous.
That is not the case here, however, as evidenced by the collective confusion on what Fender actually cares about. Is it the decal on the headstock? Is it the headstock shape alone? Nobody seems to know for sure.
I would gladly comply with any clearly stated rules. For example, they told me "relic" is a trademarked word and I cannot use it. So I immediately removed it from my site, no questions asked. Looking around, I realized that nobody else uses this word either. So everything lines up.
But the headstock thing...that's a different story. If I can legally provide my customers a product they want (a custom bass with the familiar Fender-style headstock), then I want to do that. If it means I gotta remove my decal, fine. Just tell me that's the deal, and I'll comply.
edmidlifecrisis
Registered mediocre bass player
I've been a federal regulator and have seen issues like this in other areas, and I agree with what has been said by the poster who talked to the Canadian attorney.
Either he is negotiating with them and is continuing in business until told otherwise, or more likely, due to the length of time he's been in business,
He has already worked out a deal/settlement with them that allowed him to continue his business. In all likelihood would be a confidential agreement and he won't be allowed to enlighten you (this is a legal strategy to allow them to continue to intimidate everyone else and not give anyone an edge dealing with them....)
Not a lawyer, but applying some simple common sense to your question, this is what I thought.
Either he is negotiating with them and is continuing in business until told otherwise, or more likely, due to the length of time he's been in business,
He has already worked out a deal/settlement with them that allowed him to continue his business. In all likelihood would be a confidential agreement and he won't be allowed to enlighten you (this is a legal strategy to allow them to continue to intimidate everyone else and not give anyone an edge dealing with them....)
Not a lawyer, but applying some simple common sense to your question, this is what I thought.
Sorry to hear about your situation, Dan. That would bug the heck out of me if I was in your shoes.
A couple questions for you:
1. Did Fender's C&D letter to you threaten legal action or just ask you to stop using the headstock design?
2. Did Fender's letter specifically refer to documentation about a trademark or copyright held by them covering the headstock design?
3. Did one of their lawyers sign the letter?
Obviously, you are unclear as to WHY you received Fender's C&D letter. This suggests to me that Fender didn't indicate any specific reasons for you to comply with their letter (such as including trademark/patent paperwork or 'proof' of their ownership of the headstock design).
If you have a name of one of their lawyers (from the letter?), that person might be a good point of contact to inquire about the situation. You could request supporting documentation to whatever claims they are making - otherwise they are just asking you to follow their C&D letter based on nothing but their request. I don't think you have any moral or legal obligation to stop using the headstock design until you are shown exactly WHY Fender requests this of you.
Good luck - hope you can figure this out!
A couple questions for you:
1. Did Fender's C&D letter to you threaten legal action or just ask you to stop using the headstock design?
2. Did Fender's letter specifically refer to documentation about a trademark or copyright held by them covering the headstock design?
3. Did one of their lawyers sign the letter?
Obviously, you are unclear as to WHY you received Fender's C&D letter. This suggests to me that Fender didn't indicate any specific reasons for you to comply with their letter (such as including trademark/patent paperwork or 'proof' of their ownership of the headstock design).
If you have a name of one of their lawyers (from the letter?), that person might be a good point of contact to inquire about the situation. You could request supporting documentation to whatever claims they are making - otherwise they are just asking you to follow their C&D letter based on nothing but their request. I don't think you have any moral or legal obligation to stop using the headstock design until you are shown exactly WHY Fender requests this of you.
Good luck - hope you can figure this out!
I'm sure everyone here wants you to stay in business & I do as well.
I strongly suggest at least shopping for a lawyer, so you'll know who to call if and when you need to. You will probably need one to eventually hammer-out your own deal with Fender anyway, let the lawyers sort through the mumbo-jumbo legalize...that frees you up to focus own your builds.
I strongly suggest at least shopping for a lawyer, so you'll know who to call if and when you need to. You will probably need one to eventually hammer-out your own deal with Fender anyway, let the lawyers sort through the mumbo-jumbo legalize...that frees you up to focus own your builds.
Glad to know your making a new headstock and not going down. Hope you get even better after the headstock change!
Would you like to let me know when you'll be back with this headstock. Because I like your basses.
Didn't read all the way through this thread, but here are a couple of facts about trademark law that may be relevant:
1. Under the first sale doctrine, once an authorized product (i.e., a product made by the TM owner or made under a license from the TM owner) is sold, the TM owner cannot prevent that product from being resold. So if Nash is buying officially-licensed necks, he can assemble them into basses and resell them. For the same reason, the OP could buy a Fender-licensed neck from Warmoth or Allparts, build a bass with it and then sell that bass, and Fender could not do anything about it. The first sale doctrine applies without the need for any separate agreement with the TM owner. There are some nuances to the first sale doctrine that could complicate things a bit, but that is the basic rule. The attorney who wrote the original letter to the OP may not be aware of where the necks came from -- i.e., whether they were acquired from an authorized Fender licensee -- so that could be part of the issue.
2. For all of those telling the OP not to worry about Nash, the fact that there are third parties such as Nash using the TM at issue (or, in this case, the trade dress of the headstock) could in fact be highly relevant. If a TM owner allows third parties to use its TM without authorization, that TM owner can in some cases lose the ability to enforce its TM. In other words, if Fender ignores Nash (and perhaps others), that could make it harder for Fender to stop the OP from using the headstock shape. Again, there are nuances, but the OP is right to raise the issue of Nash's third party use.
1. Under the first sale doctrine, once an authorized product (i.e., a product made by the TM owner or made under a license from the TM owner) is sold, the TM owner cannot prevent that product from being resold. So if Nash is buying officially-licensed necks, he can assemble them into basses and resell them. For the same reason, the OP could buy a Fender-licensed neck from Warmoth or Allparts, build a bass with it and then sell that bass, and Fender could not do anything about it. The first sale doctrine applies without the need for any separate agreement with the TM owner. There are some nuances to the first sale doctrine that could complicate things a bit, but that is the basic rule. The attorney who wrote the original letter to the OP may not be aware of where the necks came from -- i.e., whether they were acquired from an authorized Fender licensee -- so that could be part of the issue.
2. For all of those telling the OP not to worry about Nash, the fact that there are third parties such as Nash using the TM at issue (or, in this case, the trade dress of the headstock) could in fact be highly relevant. If a TM owner allows third parties to use its TM without authorization, that TM owner can in some cases lose the ability to enforce its TM. In other words, if Fender ignores Nash (and perhaps others), that could make it harder for Fender to stop the OP from using the headstock shape. Again, there are nuances, but the OP is right to raise the issue of Nash's third party use.
It all seems to hinge on whether the neck with the trademarked headstock was manufactured and sold under a Fender license agreement. If the necks are made/sold under license I'd think that needs to be pointed out to the Fender legal dept.
IIRC, Nash uses Allparts necks with Fender licensed headstocks.
IIRC, Nash uses Allparts necks with Fender licensed headstocks.
Here's an idea to sort of sneak around the headstock issue: On your site, where you show a picture of each bass, make the headstock shape different (photoshop it), or even leave it out of the pictures entirely. And when a customer makes an order, you let them know they will be receiving the fender shape headstock, build the basses the same way you have been, and keep limited information about the necks on the actual site. All the specs about the necks can be talked about in emails.
I'm sure the company won't be able to find the basses once their made, or link them to you (unless they're on the board...). I know this sounds like a stoner idea, and you are looking for an actual legitimate way to continue the business, but I figured I'd share.
I'm sure the company won't be able to find the basses once their made, or link them to you (unless they're on the board...). I know this sounds like a stoner idea, and you are looking for an actual legitimate way to continue the business, but I figured I'd share.
