Discussion:
What is the name of your state? VA
I currently provide local Franchisees (in VA) of a nationwide Franchise (HQ is located in CO) with customized marketing materials with their Franchise branding.
In most cases, the Franchisees do not have high-resolution images to provide us for their requested projects. I end up trying to scrape up something or reproduce something for a project, which is limiting and time consuming.
I wanted to extend my “marketing materials” product line to better serve my clients. And I also want to expand my marketing to other states.
I emailed the Franchise a request to obtain high-resolution images to be able to provide their Franchisees with customized marketing materials when requested.
My email was forwarded to their legal team who basically told me they couldn’t comply with my request for images and not authorized to use their trademarks. After several emails trying to explain my case, they kept shutting me down.
My questions are:
1. What are my options? I though about having the Franchisee approach the Franchise for the images and then just use them on any project going forward.
2. How can they have the legal right to tell me that I can’t produce marketing products that help their Franchisees because I am not authorized to use their trademarks? To me, that seems wrong… basically saying that I don’t have the right to operate my business.
3. If I do obtain images somehow and continue on in my growth efforts, does this leave me liable for litigation from the Franchise?
Answer:
Q: What are my options?
A: Comply with what the Franchise told you.
Q: How can they have the legal right to tell me that I can’t produce marketing products that help their Franchisees because I am not authorized to use their trademarks?
A: Ownership.
Q: If I do obtain images somehow and continue on in my growth efforts, does this leave me liable for litigation from the Franchise?
A: Yes.
Answer:
seniorjudge with all due respect, what are your credentials for knowledge in this area?
There must be a way to make this happen.
1.
I know with every objective in life there are many ways to get from point A to point B... all with degrees of associated risk and reward. It is all a balancing act and how much risk you are willing to expose yourself to reach the reward.
2.
It is not my responsiblity for controlling the Franchisee and the way they seek to market their business and the Vendors the choose to partner with to do so. The Franchise is the one who regulates the Franchisee. And apparently they don't care what Vendors they use... my clients use many different Vendors. As well as all the other Franchisees who fall under that Franchise.
Answer:
seniorjudge with all due respect, what are your credentials for knowledge in this area?
There must be a way to make this happen.
1.
I know with every objective in life there are many ways to get from point A to point B... all with degrees of associated risk and reward. It is all a balancing act and how much risk you are willing to expose yourself to reach the reward.
2.
It is not my responsiblity for controlling the Franchisee and the way they seek to market their business and the Vendors the choose to partner with to do so. The Franchise is the one who regulates the Franchisee. And apparently they don't care what Vendors they use... my clients use many different Vendors. As well as all the other Franchisees who fall under that Franchise.
Please feel free to disregard my answer.
Answer:
seniorjudge with all due respect, what are your credentials for knowledge in this area?
There must be a way to make this happen.
1.
I know with every objective in life there are many ways to get from point A to point B... all with degrees of associated risk and reward. It is all a balancing act and how much risk you are willing to expose yourself to reach the reward.
2.
It is not my responsiblity for controlling the Franchisee and the way they seek to market their business and the Vendors the choose to partner with to do so. The Franchise is the one who regulates the Franchisee. And apparently they don't care what Vendors they use... my clients use many different Vendors. As well as all the other Franchisees who fall under that Franchise. seniorjudge was pretty much right on here. The trademark holder has a right to control the use of their trademark -- if they don't want you to use their mark, they don't have to work with you, or don't have to let their franchisees work with you. If you obtain and use the hi-res trademarks without their permission, you could be sued for trademark infringement.
Now, you could ask your customers to indemnify you in the case of a trademark infringement lawsuit, that's one way to mitigate the risk -- if you could get anyone to actually go along with it. You could also ask the franchisees to obtain the hi-res trademarks and obtain permission to use the hi-res trademarks in their marketing literature -- then you would likely be okay.
But you can't make the trademark holder give you permission to use the marks.
Answer:
Thanks for you insight...
You could also ask the franchisees to obtain the hi-res trademarks and obtain permission to use the hi-res trademarks in their marketing literature -- then you would likely be okay. According to my emails with their legal team (see below)... Franchisees do have the right to use these trademarks, but no one I have worked with seems to have an copies of the them... which leaves me limited and scraping for images to use.
If I did obtain the trademark images from a client (Franchisee), produce the product for the client, and then use that product design (image) to market the product to another Franchisee, would that be feasible? Then they see what we have done for another Franchisee and request that we customize the product in some way for them.
This route I obtained the images from an authorized Franchisee. And I am using the product produced legally for them to show other Franchisees who may be interested. Upon their request, we customize that product for them, so they we can continue to use the Trademark images without having to obtain them from every client.
Now, you could ask your customers to indemnify you in the case of a trademark infringement lawsuit, that's one way to mitigate the risk -- if you could get anyone to actually go along with it. If I use a "terms of use" and some sort of "disclaimer" when they order something and they have to accept before proceeding... like like on most websites... and it contains am indemnify clause in it for the use of trademarked material etc... would this work? (an extra layer of protection to the above)
Here is the email that they originally sent for anyone who cares to interpretate its contents and how it relates to my options:
Licensees of the XXX Marks are authorized to use the marks in accordance with specific guidelines and quality control standards. Because you are not licensed to use the trademarks of XXX, you may not use or display the XXX trademarks in a commercial manner or in any way that is likely to create consumer confusion that you are associated or affiliated with the XXX franchise network. You may only manufacture and supply goods that display the XXX Marks to XXX franchisees and their staff who are authorized to use the marks for specific orders submitted to you such XXX franchisees or staff, and only in accordance with images provided to you by such authorized licensees pursuant to applicable standards. Of course, you are absolutely prohibited from offering XXX branded goods or services to the public (or to anyone who is not a XXX franchisee or staff).
Answer:
Because you are not licensed to use the trademarks of XXX, you may not use or display the XXX trademarks in a commercial manner or in any way that is likely to create consumer confusion that you are associated or affiliated with the XXX franchise network.
Seems pretty clear to me.
Answer:
Thanks for you insight...
According to my emails with their legal team (see below)... Franchisees do have the right to use these trademarks, but no one I have worked with seems to have an copies of the them... which leaves me limited and scraping for images to use.
If I did obtain the trademark images from a client (Franchisee), produce the product for the client, and then use that product design (image) to market the product to another Franchisee, would that be feasible? Then they see what we have done for another Franchisee and request that we customize the product in some way for them.
This route I obtained the images from an authorized Franchisee. And I am using the product produced legally for them to show other Franchisees who may be interested. Upon their request, we customize that product for them, so they we can continue to use the Trademark images without having to obtain them from every client.
If I use a "terms of use" and some sort of "disclaimer" when they order something and they have to accept before proceeding... like like on most websites... and it contains am indemnify clause in it for the use of trademarked material etc... would this work? (an extra layer of protection to the above)
Here is the email that they originally sent for anyone who cares to interpretate its contents and how it relates to my options:
Licensees of the XXX Marks are authorized to use the marks in accordance with specific guidelines and quality control standards. Because you are not licensed to use the trademarks of XXX, you may not use or display the XXX trademarks in a commercial manner or in any way that is likely to create consumer confusion that you are associated or affiliated with the XXX franchise network. You may only manufacture and supply goods that display the XXX Marks to XXX franchisees and their staff who are authorized to use the marks for specific orders submitted to you such XXX franchisees or staff, and only in accordance with images provided to you by such authorized licensees pursuant to applicable standards. Of course, you are absolutely prohibited from offering XXX branded goods or services to the public (or to anyone who is not a XXX franchisee or staff). Actually, I disagree with seniorjudge here, and I also wonder why you didn't give us this information in the first place, since it appears the answer is in the email they sent you:
"You may only manufacture and supply goods that display the XXX Marks to XXX franchisees and their staff who are authorized to use the marks for specific orders submitted to you such XXX franchisees or staff, and only in accordance with images provided to you by such authorized licensees pursuant to applicable standards."
If a franchisee orders a flyer from you, it sure sounds ike you can print the fyer for the franchisee. Now, it does say that you need to get the trademark FROM the franchisee as wel to be legal. That's what it sounds like, but you should take this down to your own attorney, who can review it along with all of the relevant facts of your situation, and advise you accordingly.
Answer:
Because you are not licensed to use the trademarks of XXX, you may not use or display the XXX trademarks in a commercial manner or in any way that is likely to create consumer confusion that you are associated or affiliated with the XXX franchise network.
Seems pretty clear to me. Yes but they would be providing me with the materials.
Answer:
Yes but they would be providing me with the materials. Pay attention to what divgradcurl tells you.
Answer:
I also wonder why you didn't give us this information in the first place My orginal post was at a different computer than the one with my email.... I posted this email when I got back to my other computer. I only had my interpretation of it in my head and I wanted to have another opinion.
(paraphrased from my last post)
1. So would this be interpreted to mean that I can re-use the images in future work for other Franchisees versus having to re-obtain them?
2. And would it also be able to assume I could use the prior work for the prior Franchisee in marketing our products to other Franchisees?
Thanks for the opinion and advice.