Erm fickle bunch aren't we

joeyowen

fretmeister said:

Fender sell replacement necks with logos to be fitted to Fenders only.

How does that work though, can Fender actually enforce that?  Surely if you buy a product from them, a neck in this case, that becomes your property?

How can they say you can only do this or that with it?

I'm aware it changes things when you come to sell mind, but this debate is as old as it is repetative, so I'm staying out of the core of it

maltingsaudio

OOps sorry guys seem to have started something!

WezV

you can see the fender/warmoth agreement here

http://www.warmoth.com/Guitar/Necks/fender_lic.pdf

fretmeister

joeyowen said:

fretmeister said:

Fender sell replacement necks with logos to be fitted to Fenders only.

How does that work though, can Fender actually enforce that?  Surely if you buy a product from them, a neck in this case, that becomes your property?

How can they say you can only do this or that with it?

I'm aware it changes things when you come to sell mind, but this debate is as old as it is repetative, so I'm staying out of the core of it

They have no interest in enforcing it for a customer who wants to fix a guitar.

They just want to make it clear to the world that if anyone sells a non-Fender with a Fender logo on it, then it is the individual at fault and not Fender.

(and as an aside - more and more "sales" are actually licensing agreements. Started with software. You don't own 'Windows' you pay a fee to be allowed to use it on your PC. That means Microsoft can sue you for breach of contract if you sell it on or do something else that the terms don't allow).

It won't be long before buying a pair of jeans turns into a long term rental agreement for a 1 off set fee.

I never said the law was drafted by anyone competent!!

joeyowen

Wisdom for making sense eh!

Megii

WezV said: you can see the fender/warmoth agreement herehttp://www.warmoth.com/Guitar/Necks/fender_lic.pdf

So it's similar to the Mighty Mite neck I bought - Warmoth are licensed to make necks using the Fender headstock shapes, but only, specifically,as replacement necks, to be used to replace a neck on a Fender instrument, and not for making a partscaster. But, even though said replacement necks can only be used in this way, they cannot then have Fender decals applied to them. You can repair your Fender guitar with such a neck, and that only, but the guitar cannot then be called a Fender. To me, that seems slightly illogical. 

And surely they must know that the majority of necks Warmoth sell are actually used by people making partscasters?

WezV

Megii said:

WezV said:

you can see the fender/warmoth agreement here

 

So it's similar to the Mighty Mite neck I bought - Warmoth are licensed to make necks using the Fender headstock shapes, but only, specifically,as replacement necks, to be used to replace a neck on a Fender instrument, and not for making a partscaster. But, even though said replacement necks can only be used in this way, they cannot then have Fender decals applied to them. You can repair your Fender guitar with such a neck, and that only, but the guitar cannot then be called a Fender. To me, that seems slightly illogical. 

And surely they must know that the majority of necks Warmoth sell are actually used by people making partscasters?

...................

 

and they are often sold along with Fender style bodies which seems to be in breach of the agreement which states they cannot sell the necks as part of a guitar kit.   Wonder how this works when someone orders all the parts to make a strat from warmoth?

fretmeister

It's a frigging nightmare!

Some small builders who get ripped off but don't have the money to go after them have a different approach.

If you need a new neck for your Status-Graphite bass, then you return the entire instrument, they fit a new one and the old gets kept by Status

If you just want to buy a new neck (proper status shape & logo) then you have to send back the original one first.

Then they also do other headstock shapes for home builds, and the punters can buy as many of them as they like.

Megii

WezV said:

Megii said:

WezV said:

you can see the fender/warmoth agreement here

 

So it's similar to the Mighty Mite neck I bought - Warmoth are licensed to make necks using the Fender headstock shapes, but only, specifically,as replacement necks, to be used to replace a neck on a Fender instrument, and not for making a partscaster. But, even though said replacement necks can only be used in this way, they cannot then have Fender decals applied to them. You can repair your Fender guitar with such a neck, and that only, but the guitar cannot then be called a Fender. To me, that seems slightly illogical. 

And surely they must know that the majority of necks Warmoth sell are actually used by people making partscasters?

...................

 

and they are often sold along with Fender style bodies which seems to be in breach of the agreement which states they cannot sell the necks as part of a guitar kit.   Wonder how this works when someone orders all the parts to make a strat from warmoth?

Good point - I do wonder indeed. It's a strange world.  :-S

impmann

They just want to make it clear to the world that if anyone sells a non-Fender with a Fender logo on it, then it is the individual at fault and not Fender.

OK - I understand that. But seeing as FENDER applied the logo to the neck, no-one is defrauding anyone by saying its a Fender neck. If that Fender neck is screwed to a non-Fender body, it is still a Fender branded neck.

How does that work with Fender branded bridge saddles? Do Fender expect people to file off the Fender branding if they dare to fit them to a non-Fender guitar?

What happens if I sell my Gibson guitar with a Fender strap? Is that counterfeit...?

Its all bobbins - and unworkable bobbins at that. I'm sure Fretmeister (et al) is technically correct in his assertations but in the real world, Fender or any other manufacturer, are highly unlikely to commit to an action against such a thing - especially in view of common sense. 

fretmeister

The law has never been about common sense.

99% of intellectual property law is a result of lobbying by the inventors who naturally want to protect their products. Those ideas then go to non-technically minded politicians for a debate and then get passed to the Govt legal service to be drafted into Statute.

How can an MP be expected to create a law on a highly technical subject that they don't understand - and often din't even know existed (such is the nature of invention).

The most recent example of similar stupidity is Ian Duncan Smith defying / not-understanding all medical knowledge in the universe to effectively re-classify Multiple Sclerosis as a curable disease, meaning suffers will be returning to work at some point.

Alnico

fretmeister said:

The law has never been about common sense...............

The most recent example of similar stupidity is Ian Duncan Smith defying / not-understanding all medical knowledge in the universe to effectively re-classify Multiple Sclerosis as a curable disease, meaning suffers will be returning to work at some point.

I do not wish to derail this thread but that has upset me more than anything i can remember.

MS ruined and eventually took my late Father's life.

I apologise for this interuption.

Cyberlawyer

Hi Guys,

Well I have watched this thread unfold and I finally thought it was my turn to throw my two cents in. When I joined the forum I said I wasn’t going to contribute to legal topics, but given this is one of my fields of legal practice and I can clearly discuss the law in an abstract sense without providing direct legal advice I’ll make an exception. This is going to be a bit of an essay, so please feel to either (1) completely dismiss this lengthy explanation as boring; (2) ban me from the forum for being an ass; or (3) grab a coffee and sit down as this is going to be a bit of a marathon. P.S. please excuse any typo’s as I’m on a train on my tablet.

Please note that this post is not intended to be and should not be construed as legal advice, it is merely an academic contribution to an interesting abstract discussion. Should you require legal advice on issues identified in this post please consult a solicitor.

By way of credentials I originally qualified as a barrister, but recently converted to be a solicitor, I am also a licensed New York attorney (not relevant to this analysis, but helpful when looking at all of the issues associated with ‘lawsuit’ copies as these are all US cases) and hold a Masters Degree in Intellectual property law. In terms of scope I am only going to discuss issues associated with trade mark law and the common law of ‘passing off’, I will also briefly discuss the criminal law on the sale of ‘fakes’ as it pertains to trade marks. I will not discuss either registered or unregistered design rights (both civilly and criminally) as although academically interesting and generally relevant to guitars, the time limits associated with these protections mean that they are inapplicable to the ‘classic’ guitar designs.

Trade Mark

The first point to note is that the Fender logo is a registered trade mark owned by the Fender Musical Instrument Corporation (no surprise there). This trade mark registration gives the holder exclusive rights to use the mark or licence it for use by another party (Section 9 of the Trade Mark Act 1994). Infringement of a trade mark  may be achieved by affixing the mark (or, subject to certain requirements, a similar mark) to goods (i.e. putting it on a guitar), but it also requires that the mark is used in the course of trade (so applying a ‘F’ decal to your home brew partscaster is not in its self an infringement until you sell it, but the person who sold you the decal was infringing). It is not infringing to use a trade mark to identify the goods of the trademark holder (so you can use the Fender trademark to describe your genuine Fender guitar in the advert for sale).

For the purposes of trade mark infringement you can infringe by any of (1) fixing the mark to goods or packaging; (2) selling goods under the trade mark; (3) using the mark in offering the goods for sale; or (4) using the trade mark in business papers or advertising (Section 10 of the Trade Mark Act 1994). As such if you use a genuine neck as part of a guitar build you are not infringing any trade marks simply by leaving the logo there as you did not fix the logo to the product, the trade mark holder did that legitimately. However if you use the trade mark in the course of selling the goods this is an infringement, thus you can’t use the trade mark in the advertisement for sale. This is one legitimate reason why you may see pictures of guitars on e-bay with the logo obscured as it may be legitimate to sell the goods with the logo attached (assuming it was applied by the trademark holder) but it would be an infringement to include it in a photo in the advertisement for the sale (admittedly mostly commonly they are outright fakes, and the obscured logo is so there in no photographic evidence of the fakery).

Cyberlawyer

Passing Off

The other matter to consider is the common law of ‘passing off’. Passing off is a civil claim that exists under the common law (no statutes to refer to, but the leading case is Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873 – the ‘Jif lemon case’). Passing off protects the ‘good will’ or reputation that a particular seller may have built up in the market (this is best thought of as the consumers attraction to a particular brand). To succeed in a passing off action the claimant needs that; (1) it has good will in the market place; (2) there is a misrepresentation on the part of the defendant that would cause ordinary members of the public to believe that the goods or services are in fact those of the claimant; and (3) the misrepresentation damages the goodwill of the claimant.

In this case (1) and (3) are largely questions of fact and in any litigation involving passing off the claimant will often have produced numerous market surveys to demonstrate how its brand has ‘good will’ in the market place and how the defendant’s misrepresentation has damaged its brand image (if you have ever taken part in one of those surveys outside the supermarket or on your door step where they ask if you recognise X product just from its slogan or from the packaging with the name blanked out, you may have inadvertently contributed evidence in a passing off case). However it may be assumed that in the case of the classic guitar designs they won’t have too much trouble demonstrating that they have both ‘good will’ and that a misrepresentation will damage that ‘good will’.

If we therefore turn to the second requirement, that ‘there is a misrepresentation on the part of the defendant that would cause ordinary members of the public to believe that the goods or services are in fact those of the claimant’ which is the crux of the issue here. The nature of this test really requires that the ‘look and feel’ and packaging and presentation of the product would lead an ordinary member of the public to assume that the guitar originated from the claimant rather than from its actual origin. Again this is a factual test that in any passing off claim is usually supported by market research. However in the case of actual reproductions it is almost inevitable that this test will be satisfied. As previously pointed out the test is on objective one that is based on the reaction of ordinary people so to be effective any disclaimer would need to be obvious to any observer (i.e. small print in the contract of sale or a notice discreetly located on the product such as under the scratch plate or in the neck pocket is no good, but spraying ‘fake’ across the front in red paint would probably do it).

Criminal Law

Both passing off or trade mark infringement although themselves civil actions can be relevant in criminal counterfeiting cases. Such cases are pursued under the Fraud Act of 2006. Generally speaking fraud requires that a person either; (1) dishonestly make a representation that he knows it is untrue or misleading or knows it might be untrue or misleading for the purposes of gain or (2) dishonestly fails to disclose information that he is legally obliged to disclose for the purposes of gain. Thus claiming you partscaster is a genuine 'F' is actually a criminal offence (again no surprise there), but so is claiming that your guitar is genuine if you have some doubts about this fact, even if you bought it as genuine. In these cases a disclaimer communicated to the recipient that the guitar is a fake or suspected fake prior to a sale is effective as it negates any alleged misrepresentation.

What may come as a surprise to some is that possessing, supplying or making items for the use in fraud is also a criminal offence in its own right. In this instance proving that your ‘fake’ guitar is owned for the purposes of fraud is probably impossible until you actually sell it (in which case you have committed actual fraud), and as this provision is really aimed at people who have credit card cloning machines in their house it is probably not that relevant. It might be an issue if you have a big box of unused 'F' decals under our bed, but even then it is easy to claim a legitimate use (restoring legitimate guitars with damaged logos) that would be virtually impossible to disprove. Making or supplying articles for use in fraud is potentially more relevant as it is possible that you could sell your fake guitar on (disclosing that it is a fake), but your buyer then resells it as genuine, at which point you have supplied goods for the use in a fraud, however the law in this area requires intention that it was supplied for the use in fraud, or knowledge that it was made for the use in fraud which again are difficult to show

The fact that the crown prosecution service must be satisfied that they have a reasonable change of a successful prosecution and that prosecution is in the public interest before pursuing a case means that most prosecution is more likely to be limited to actual cases of fraud or larger scale counterfeiting operations that are churning out fakes, rather than small independent builders who are applying ‘F’ logos at a customers request with full disclosure.

jd0272

My partsa's are safe. Splendid.

fretmeister

^ very nice!

Thank you.

How many sharks have we got on here now?

We should have a poll to see how many of us own PRS guitars....

randomhandclaps

jd0272 said:

My partsa's are safe. Splendid.

Why?  Did you have a Fender logo tattooed on your knob?

Cyberlawyer

Ok I'll admit to owning 2 PRSs ;-)

hubobulous

Cyberlawyer said:

Ok I'll admit to owning 2 PRSs ;-)

Noob. Everyone knows that the 'in-crowd' uses PRSi to denote multiples. Its a whole secret language because normal English punctuation confuses them. ;-)

jd0272

randomhandclaps;446609" said:

jd0272 said:

My partsa's are safe. Splendid.





Why?  Did you have a Fender logo tattooed on your knob?

Nah. Got aTelecaster done