# Don't want to go to jail



## DFerguson777 (May 24, 2010)

I want to cast a Mountain Dew label pen for my wife.  She is hooked on the Dew.  If I wanted to sell it would that be "legal" since it is a trademark of a company?

-Denny- NC


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## ed4copies (May 24, 2010)

You should probably let your wife have it for free.

Personal details can always be arranged for her to show her undying gratitude!!:biggrin::biggrin::biggrin:


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## alphageek (May 24, 2010)

Ha!!!!   Ed, I don't think thats what he meant! 

I'm sure that selling them would be trouble.... I doubt that it would end you in jail, but I think there is 'lawsuit' type issues possible.

Dean


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## Mark (May 24, 2010)

Send them an email and see what they say. I doubt they will just say yeah, go for it, but at least you make the contacts to pursue it further if you wish.


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## glycerine (May 24, 2010)

That's cool, I made a "Game Fuel" pen for a friend a while back.  (that's a Mountain Dew flavor... or at least it WAS).
I've often wondered that same thing.  I mean, you did pay for the can or bottle, so it seems that you should be able to do whatever you want to with it, right?
I've seen people selling soda can guitars made from various soda cans.  You're not copying their logo or using their logo as your own.  you're using a piece of a product that you purchased.


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## witz1976 (May 24, 2010)

I am not a lawyer or anything, but I think if you are not marketing it for resell then there would be no infringement.


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## NewLondon88 (May 24, 2010)

witz1976 said:


> I am not a lawyer or anything, but I think if you are not marketing it for resell then there would be no infringement.



It would still be an infringement, but the fact that it isn't being sold would
be taken into account when setting damages. It would not eliminate the
damages, it would just be taken into account.
Is it likely that they would sue over a gift? No. 
But that's not the same as it being legal.


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## DCBluesman (May 24, 2010)

Using someone else's intellectual capital without their permission is illegal in the US.  Pure and simple.  Let your conscience and your willingness to take a risk be your guide.


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## Smitty37 (May 25, 2010)

*Mountain Dew*



alphageek said:


> Ha!!!!   Ed, I don't think thats what he meant!
> 
> I'm sure that selling them would be trouble.... I doubt that it would end you in jail, but I think there is 'lawsuit' type issues possible.
> 
> Dean


What would they sue for????  Giving them free advertising??? How could they claim damages??They usually have to pay to get their name on/in other folks products.  I think they would be happier than pigs in mud to get people to put their name on pens for free.


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## Smitty37 (May 25, 2010)

*Trade name use....*

My bet is that this is a non issue.  Companies want their product name in public view and in general pay to get it there.  That's why Pepsico gives away signs to almost any organization or business that asks for one.  I seriously doubt that they'd have a problem with people carrying around pens that showed off their product.  There are other knockoffs that most likely bother them a lot more.

By the way .... they stole the name themselves from moonshine whixkey...remember the old country song.

We Call It That Good Old Mountain DEW

Down the road a ways from me there an old holler tree
where you lay down a dollar or two
Then you go round the bend and come back again
you find a jug of that good old mountain dew

My brother Bill runs a still on the hill 
Where he turns out a gallon or two  
And the buzzards in the sky get so drunk they can not fly
Just from  sniffing that good old mountain dew. 

Mountain Dew soft drink was first marketed in 1945 ... that song was around well before that.


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## Smitty37 (May 25, 2010)

*Damages*



NewLondon88 said:


> It would still be an infringement, but the fact that it isn't being sold would
> be taken into account when setting damages. It would not eliminate the
> damages, it would just be taken into account.
> Is it likely that they would sue over a gift? No.
> But that's not the same as it being legal.



Damages must be proved, and I'm not sure you could convince a jury that Pepsico was damaged by someone using a piece of a Mountain Dew label in the body of a pen....


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## dl351 (May 25, 2010)

I thought I read in another thread that using company logos in art is not illegal.  I think it was in a thread about using things such as bottle caps to make pens.  I could be wrong, though.


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## holmqer (May 25, 2010)

Smitty37 said:


> What would they sue for????  Giving them free advertising??? How could they claim damages??They usually have to pay to get their name on/in other folks products.  I think they would be happier than pigs in mud to get people to put their name on pens for free.



The driving force behind these type of lawsuits is protection of intellectual property. If companies don't act to protect their intellectual property, they run the risk of loosing their property rights. If they give too many people a pass on use of their property, even low volume folks like us, they run of being unable to protect themselves from some high volume guy coming along and trying to sell a lower cost version of their core product.

Similarly while you may choose to incorporate their trademark into some craft work in a tastefull way that would be good free marketing for them, someone else might use their trademark in a defamitory fashion. If they let you get away with it, then they risk loosing the right to go after defamitory use.

This leaves companies in the unfortunate position where they might look at your use and privately say "Cool!, That guy loves our producs and made a neat looking work of art using them." But publically have to attack to protect themselves from from someone else who may use the intellectual property with hostile intent.


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## SDB777 (May 25, 2010)

Why don't you sell everything that isn't a MountainDew product on the pen?  The MtnDew thing just happens to be a 'part' of the free stuff that went with the pen......




Scott (it's all it the wording with a lawyer) B


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## DurocShark (May 25, 2010)

dl351 said:


> I thought I read in another thread that using company logos in art is not illegal.  I think it was in a thread about using things such as bottle caps to make pens.  I could be wrong, though.



The argument could be made that it's brand dilution since the owner of the mark could not control how it was utilized.

I used to create classic VW digital paintings. I was sued for brand dilution because the APPEARANCE of the vehicle diluted VW's brand. I spoke to 3 lawyers who all said the same thing: I had a 50/50 chance in court, but it would cost me $$$$$$$ to fight.


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## bruce119 (May 25, 2010)

Now here's my thought (I didn't read every post)
I have sold label pens here is the way I go about. The customer gives you the label or can what ever. They bought the product soda, candy, beer what ever they can do what they wish with the wrapper or container. So instead of throwing it away they give it to me I make it into a pen I don't charge them for the wrapper they gave it to me. I charge them for the pen and labor. 

That is the work around for that.

My thoughts now if you had one made and sitting on the table. That would have to be yours for display only and not for sale . Just to get the idea out there.

.


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## glycerine (May 25, 2010)

Crap, I'm in trouble!!!  I just sold 1,000 mountain dew, coke, pepsi, sprite and root beer cans to the recycling plant for 5 cents each... will I be sued?!?!?!?


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## glycerine (May 25, 2010)

DurocShark said:


> The argument could be made that it's brand dilution since the owner of the mark could not control how it was utilized.
> 
> I used to create classic VW digital paintings. I was sued for brand dilution because the APPEARANCE of the vehicle diluted VW's brand. I spoke to 3 lawyers who all said the same thing: I had a 50/50 chance in court, but it would cost me $$$$$$$ to fight.


 
The difference here is that you "recreated" or "copied" their logo or vehicles.  In this case, we are talking about using part of a product that has been bought (a soda can, bottle, or whatever it is).


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## Russianwolf (May 25, 2010)

Spoke with a lawyer friend of mine, his take was.


In the pop top pen you see multiple labels in the same piece. As such it can't be called a "Mountain Dew Pen", but a Soda cap pen. If all the tops were from the same logo, you could be in trouble.


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## ldb2000 (May 25, 2010)

The problem I see in this is if you get a gung ho lawyer looking to make brownie points with his boss or client and he files suit you are out the expense of trying to fight it or loose by default or settle which could also cost money !  No matter how you look at it you loose!  Is it worth a chance ?


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## mbroberg (May 25, 2010)

The lawyers get paid whether you are right or wrong.  You pay the lawyers whether you are right or wrong.  Some fights are just not worth fighting.


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## Mickey (May 25, 2010)

I believe you would be guilty of trademark infringement. It doesn't matter whether damage can be proved or not. If a company does not protect their trademarks they can become "public property" through common usage and then the company can't do anything to protect it. A couple of instances when that has happened was "Xerox" and "Kleenex" both of these term have become generic and have almost no trademark protection. If you profit from the use of the trademark or not really doesn't make any difference but profiting does create added reasons for the company to come after you. A couple of years ago a Ford auto club sold calenders as a funds raiser with cars showing the Ford emblem and the company forced the club to stop selling the calenders. Usually if you're worried enough to ask the question you're better off not doing it.


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## Daniel (May 25, 2010)

Well, People make airplanes out of aluminum cans all the time. I have never had an issue.
The law is complicated. I have seen all sorts of stuff made with Brand name items. I have even seen shadow boxes put together with Coca Cola memorabilia. A trade mark Logo and that sort of thing is very complicated. If you print or reproduce it, paint it, or whatever you are in violation of laws. Sort of like only the owner of the logo can make the logo. But when they do make it and place it on a can, they then sell you that can. They also sold you the Logo that is on it. At that point you own that individual print of the logo and can do with it as you please. Now I think that if your Dew Pen got so popular that it might be produced in enough numbers that it could effect the reputation of Mountain Dew, They may have reason for recourse. I still think that if you where buying a can for every logo they could not do anything about it. they got their dime for the logo with the sale of the drink.

At worse I am wrong and in actual practice they would at most contact you to stop selling pens with their Logo on them. If you then ignore that they can and will take further action. They have full time Lawyers and need to keep them busy somehow.
But think about it. if it is illegal to make something from a soda can that you paid for. It would be illegal for me to use a piece of that can as a shim for the tail stock of my lathe. This simply is not the case. It would also be illegal for anything to be made with any companies packing materials. this is also not true.


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## Sberger (May 25, 2010)

Only a crappy looking pen would make the company mad.  Make a nice pen, and they should be happy!


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## mbroberg (May 25, 2010)

I must disagree with Daniel.  Don't confuse the tangible item with the intellectual property that is contained on it.  In my opinion, if, without permission, you use a logo, service mark, trademark, etc. to add, create, or increase the value or appeal of something you are leaving yourself open civilly.  Those companies did not pay the big bucks to register their logos, service mark, trademark, etc. so that just anyone can put them on anything they want to.  If you use a Coke can as a shim on your lathe then no one is going to see the logo contained on the can.  The logo on the can is not being used to establish the character of, or add value to the lathe.  That is much different than centering the logo front and center on a pen.  Doing that establishes the character of the pen, is meant to appeal to people who like the product and are inclined to own the product based on the fact that the logo is prominently displayed.  I believe the owner of the intellectual property would have a problem with that.  Be safe.  Ask permission.


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## Russianwolf (May 25, 2010)

Daniel said:


> Well, People make airplanes out of aluminum cans all the time. I have never had an issue.
> The law is complicated. I have seen all sorts of stuff made with Brand name items. I have even seen shadow boxes put together with Coca Cola memorabilia. A trade mark Logo and that sort of thing is very complicated. If you print or reproduce it, paint it, or whatever you are in violation of laws. Sort of like only the owner of the logo can make the logo. But when they do make it and place it on a can, they then sell you that can. They also sold you the Logo that is on it. At that point you own that individual print of the logo and can do with it as you please. Now I think that if your Dew Pen got so popular that it might be produced in enough numbers that it could effect the reputation of Mountain Dew, They may have reason for recourse. I still think that if you where buying a can for every logo they could not do anything about it. they got their dime for the logo with the sale of the drink.
> 
> At worse I am wrong and in actual practice they would at most contact you to stop selling pens with their Logo on them. If you then ignore that they can and will take further action. They have full time Lawyers and need to keep them busy somehow.
> But think about it. if it is illegal to make something from a soda can that you paid for. It would be illegal for me to use a piece of that can as a shim for the tail stock of my lathe. This simply is not the case. It would also be illegal for anything to be made with any companies packing materials. this is also not true.



Ummm. You are Wrong. :biggrin:

If you buy something and use it, you are fine.

If you buy something and use it in a way it wasn't intended, you are still fine as long as you don't hold them responsible if you hurt yourself. (cut the can and slice your finger on the edge).

If you buy something then resell it, you are fine. (Though MB may sue you and waste your time and possibly money)

If you buy something, modify it, and try to sell it using the original trademarked name, you may be in trouble.

Buy something with a logo and put it on something that the company didn't make and sell it in a way that could cause people to confuse it as being made by them, then you are just waiting for their lawyers to act.

So, using the piece of coke can as a shim on your lathe is okay. Using it on your lathe in such a way that it's readable and trying to sell it as a "Coca-Cola Lathe" and expect a letter at the least.


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## NewLondon88 (May 25, 2010)

Smitty37 said:


> Damages must be proved, and I'm not sure you could convince a jury that Pepsico was damaged by someone using a piece of a Mountain Dew label in the body of a pen....



I think you're confusing two issues or missing the point on one of them.

I've seen nothing in this discussion that makes a case for Fair Use, so the
first question "Is this legal?" would clearly be answered "no". The trademark
doesn't belong to you, you don't have the legal right to use it.

The second issue is "What would it cost me?" They may not be able to 
recover anything from your 'profits', especially if there aren't any. But for
you to get to court and show no profit would mean you're probably already
in the hole for tens of thousands for their legal expenses plus your own.
They own the trademark and they must defend it or lose it. If you use it
without permission, you'd be found guilty and be liable for the legal costs.
I'm sure they don't use Legal Aid..


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## bobbyd50 (May 25, 2010)

*Stupid Idea??*

Why don't you make a couple of "dew" pens and send them to the Pepsico corporate gift dept. Ask them if they were in the market for any nice executive gifts. Explain that you could incorporate any of their logos(Pepsi,Mountain Dew,Doritos etc.) into your executive pen and pencil sets. If you land the account then maybe a few could find thier way to the general public if you know what I mean.


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## wdcav1952 (May 25, 2010)

Just for fun, why don't you make a few pens using a Harley Davidson logo to sell?  I'm sure no one would mind since you are actually advertising Harley products without charging Harley for the advertisement.


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## Smitty37 (May 25, 2010)

holmqer said:


> The driving force behind these type of lawsuits is protection of intellectual property. If companies don't act to protect their intellectual property, they run the risk of loosing their property rights. If they give too many people a pass on use of their property, even low volume folks like us, they run of being unable to protect themselves from some high volume guy coming along and trying to sell a lower cost version of their core product.
> 
> Similarly while you may choose to incorporate their trademark into some craft work in a tastefull way that would be good free marketing for them, someone else might use their trademark in a defamitory fashion. If they let you get away with it, then they risk loosing the right to go after defamitory use.
> 
> This leaves companies in the unfortunate position where they might look at your use and privately say "Cool!, That guy loves our producs and made a neat looking work of art using them." But publically have to attack to protect themselves from from someone else who may use the intellectual property with hostile intent.



They still have to prove actual damages.  I am sure that Pepsico does not get Coco Cola's permission to use Cokes name in their ads (and visa versa) which are always a little bit derogatory.  

I might have to consult my nephew on this but I don't think, that once they sell me the can or bottle (and they do sell me the can - not just the contents) or whatever that they can exercise any control what-so-ever over how I choose to use or dispose of it.  He was not talking about a reproduction but part of the actual product packaging...I don't think there is any infringement. I have seen all sorts of things made out of beer cans, and you can identify the brand.  I think you could make the whole pen out of one of their cans and they could not do a thing...(other than in the USA anybody can sue anybody else for anything whether or not their case has any merit - usually with no consequences to themselves)


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## ldb2000 (May 25, 2010)

Smitty , before you go betting the farm on this one read this thread http://www.penturners.org/forum/showthread.php?t=60517&highlight=mont+blanc and the linked thread in post #13 . A company can retain control of the use of their name even after you buy their product , and even if they loose you can still end up paying thousands in lawyers fees so you loose anyway .


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## Smitty37 (May 25, 2010)

NewLondon88 said:


> I think you're confusing two issues or missing the point on one of them.
> 
> I've seen nothing in this discussion that makes a case for Fair Use, so the
> first question "Is this legal?" would clearly be answered "no". The trademark
> ...



Nope...if they sue me they must prove that they suffered damages.  They have to show that not only did I misuse their property but that they were in fact, damaged by that use.

Second, as long as what I use in my craft is an actual can or something that I purchased (and not a reproduction of their logo) they can't sue at all because they sold it to me and it is mine to use as I see fit.  They can't prevent me from using their can for some other purpose than holding soda pop.  I've seen soft drink and beer cans made into all sorts of things and sold at craft shows or yard sales, and I've never heard of anyone being sued over it or even being sent a letter asking them to stop (that is usually the first thing that happens), so what is different about pens?


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## mredburn (May 25, 2010)

http://www.bitlaw.com/index.html Lets see if this will help or hinder this thread


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## Smitty37 (May 26, 2010)

ldb2000 said:


> Smitty , before you go betting the farm on this one read this thread http://www.penturners.org/forum/showthread.php?t=60517&highlight=mont+blanc and the linked thread in post #13 . A company can retain control of the use of their name even after you buy their product , and even if they loose you can still end up paying thousands in lawyers fees so you loose anyway .



Not the same issue, Mont Blanc is a pen making company suing for someone making counterfeit copies of their pens.  That's a whole nuther story... I never said abody could sell soda in cans with Mountain Dew's name on them and claim it was Mountain Dew in the cans.  That is theft.  But, having said that, trade mark cases are lost often sometimes because the trade mark, even though properly obtained, was predated or tried to take a common usage idea and make it exclusive..you can't do that but the government will let you try figuring it will get sorted out in court.  

Happens in patent infringement cases all the time, I've seen estimates that at least 50% of the patients issued each year won't stand up if challenged, they are not challenged because all the competing companies have cross licensing agreements.


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## ldb2000 (May 26, 2010)

you should reread the complaint , they were not suing for making counterfeit pens , they were suing for modifying a privately owned MB pen by putting an overlay on it and in the other case for making customer requested repairs on a pen owned by a person , clearly no longer owned by MB in any way but the name and trademarks on the pen . They are stating that they still own the name and logo and even the triple center band after purchase and that the customers had no right to modify or repair said pens without MB's permission .
Oh and they filed these suits without first giving any cease and desist notice .


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## Smitty37 (May 26, 2010)

*Interesting discussion*

This has been a fun discussion but it's really moot.  Until someone actually gets sued there is no right answer to any legal question.  A good lawyer can usually argue very persuasively on either side of an issue (and I have read some very persuasive arguments backed by what seemed like pretty good precedents that were dismissed out of had by a judge).  The one case that was cited didn't really involve just using a trade mark it involved counterfeiting (and I might sue myself in that case)which using part of an actual can or label wouldn't. But it was fun.


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## Rum Pig (May 26, 2010)

I agree that they would not care as it is free advertising but I would still make contact with them you may even get something from them. 
Now that i think about it if you made one and sent them the pen or some photos they may eve ask you to make some for them. You will never know until you give it a go

Good luck


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## BobRad (May 26, 2010)

Don't make any assumptions about them liking free advertising - of proving they lost money before they sue you.  They would be perfectly happy to spend thousands to make an example of you even if they got n money back from suing you.

There are concepts of product trademark dilution that only a qualified lawyer can answer. You also may get a  take down order for infringement if you have a web site with their name.


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## NewLondon88 (May 26, 2010)

Smitty37 said:


> Nope...if they sue me they must prove that they suffered damages.  They have to show that not only did I misuse their property but that they were in fact, damaged by that use.



This is incorrect.
They only need to prove damages if they are seeking additional monetary
compensation. But if they can show that you are trading on the trademark
owner's reputation (likely, since there is no other reason for using their
logo) then damages could be awarded at the judge's discretion.



Smitty37 said:


> Second, as long as what I use in my craft is an actual can or something that I purchased (and not a reproduction of their logo) they can't sue at all because they sold it to me and it is mine to use as I see fit.  They can't prevent me from using their can for some other purpose than holding soda pop.




They wouldn't prevent you from using the can. They would sue you for
using the logo.


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## ToddMR (May 26, 2010)

I just don't see why you don't just make the pen and not advertise it.  I mean if it's your own personal use, what's the harm?  Now if you were to start selling them without their agreement I can see it.  But I honestly think all this is getting out of context.  I remember you were simply making one to make it for personal use, ie your wife.  If that's all the further you go, then imo, who cares.  Just don't post pictures etc.


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## Rob73 (May 26, 2010)

DFerguson777 said:


> I want to cast a Mountain Dew label pen for my wife.  She is hooked on the Dew.  If I wanted to sell it would that be "legal" since it is a trademark of a company?
> 
> -Denny- NC



You would need to have a license from the company in order to use their name, logo  and any media that goes along with the company.  I looked into something similar with another company and it was a yearly license fee or get sued.  

Selling at say a local 'craft fair' or something similar you would probably be safe.  Selling online, risk goes up.


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## Smitty37 (May 27, 2010)

ldb2000 said:


> you should reread the complaint , they were not suing for making counterfeit pens , they were suing for modifying a privately owned MB pen by putting an overlay on it and in the other case for making customer requested repairs on a pen owned by a person , clearly no longer owned by MB in any way but the name and trademarks on the pen . They are stating that they still own the name and logo and even the triple center band after purchase and that the customers had no right to modify or repair said pens without MB's permission .
> Oh and they filed these suits without first giving any cease and desist notice .


If it goes to trial, my bet would be that MB loses in both cases.  The customer who bought the pens has every right to modify it in any manner they see fit. *Just like GM can't prevent you from modifying their car once you've  bought it ... up to and including putting an entirely different body on it with no GM Logos....and that happens all the time, watch NASCAR on any given Sunday or go to any big car show*. I doubt that the law is different for pens.

MB wouldn't even be allowed to bring suit in most countries...the USA is the only place in the world where you can sue anybody for anything at any time.


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## ldb2000 (May 27, 2010)

Smitty , I totally agree with you , they would loose the case , at least I would hope that any judge in their right mind would either throw out the case or rule against them . The problem is you couldn't go to court for this without a lawyer , you would be nuts to try , and lawyers for this kind of case cost ... Big Time . so even if you won the case you would still spend thousands to defend yourself ..... so you loose . As Penopoly did even though they kinda won . That was my point .


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## ldb2000 (May 27, 2010)

Rum Pig said:


> I agree that they would not care as it is free advertising but I would still make contact with them you may even get something from them.
> Now that i think about it if you made one and sent them the pen or some photos they may eve ask you to make some for them. You will never know until you give it a go
> 
> Good luck


 
That is not a good idea , check out the following link and take notice of #7 and 8 of their terms and conditions http://www.pepsi.com/termsandconditions.php
Most corporations have this clause in their terms and conditions .


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## Smitty37 (May 27, 2010)

*going to court*



ldb2000 said:


> Smitty , I totally agree with you , they would loose the case , at least I would hope that any judge in their right mind would either throw out the case or rule against them . The problem is you couldn't go to court for this without a lawyer , you would be nuts to try , and lawyers for this kind of case cost ... Big Time . so even if you won the case you would still spend thousands to defend yourself ..... so you loose . As Penopoly did even though they kinda won . That was my point .



It is usually not required -- but many courts will now award the defendant court costs and lawyer's fees if the plaintiff's case is found to be without merit.  This is done to help prevent deep pocket companies from driving their smaller competitors out of business by constantly engaging them in meritless law suits just to keep them paying legal fees....


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## Rfturner (May 27, 2010)

you can also do this if you ripped up the label and put pieces of it on the blank they can no longer do anything about it because then it is art, The pieces would be distiguishable from the original but it would be known what it was.

Sonic just did this with a commercial with wendy's They did not show the entire name and so Wendy's could not do anything about it. They also would not have to pay Wendy's for the commercial becasue they did not "actually" show the company

I agree though sometimes it is better safe than sorry. if you call them soda blanks or something Generic they also can't do anything about it, You can't copyright common phrases such as soda, Pop, etc.


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## ldb2000 (May 27, 2010)

Smitty37 said:


> It is usually not required -- but many courts will now award the defendant court costs and lawyer's fees if the plaintiff's case is found to be without merit. This is done to help prevent deep pocket companies from driving their smaller competitors out of business by constantly engaging them in meritless law suits just to keep them paying legal fees....


 
If I'm not mistaken you would have to file for reimbursement and the judge is not bound by law to rule in your favor . This is what happened to Penoploy and they ended up eating the costs of defending themselves . I would have to find the case again .


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## DFerguson777 (May 28, 2010)

Err...uh....I'm gonna rethink the whole idea.  However, all the information and links are amazing resources to dig through.
Thanks
-Denny- NC


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## Monty (Aug 24, 2010)

Just thought about this the other day. If they (the NFL or whoever) do not want you to profit from any of team logos and or colors, etc, why don't they put a stop to the ticket scalpers by suing them?


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