Commercial use of artwork from foreign (Cuban) trademarks

Commercial use of artwork from foreign (Cuban) trademarks

gmp@adres.nl (Hua Kul)	4/18/2004 7:53:43 AM
(Note to moderator: The email on my post header is no longer operable but I use it to log in to Google. A good current email is huaREMOVEkul@hotmail.com. If you require posters to this group to register at Google with their good email I will. Otherwise I will just use my good one in the body of my posts.) I would like to market a product in the US that would picture some classic Cuban cigar bands. I have several questions about this and would appreciate input. 1. Can I do this legally without a license from the Cuban company? 2. Would it be technically illegal but without any way for a Cuban company to touch me in a US court? 3. Would it even be legal for me in the US to enter into a license agreement with a Cuban company? 3. If the original trademark/copyright owner fled Cuba and is producing products with the same design in, say, the Dominican Republic, would I need to obtain a license from him, even if the label I want to use is different than anything he produced outside of Cuba (e.g., the Cuban label would have the word "Habana" on it)? Thanks for any input. --Hua Kul huaREMOVEkul@hotmail.com



brotbacken@hotmail.com (Fred Richards)	4/20/2004 8:38:26 PM
gmp@adres.nl (Hua Kul) wrote I would like to market a product in the US that would picture some classic Cuban cigar bands. I have several questions about this and would appreciate input. 1. Can I do this legally without a license from the Cuban company? 2. Would it be technically illegal but without any way for a Cuban company to touch me in a US court? 3. Would it even be legal for me in the US to enter into a license agreement with a Cuban company? 3. If the original trademark/copyright owner fled Cuba and is producing products with the same design in, say, the Dominican Republic, would I need to obtain a license from him, even if the label I want to use is different than anything he produced outside of Cuba (e.g., the Cuban label would have the word "Habana" on it)? You should consult a U.S. lawyer, particularly about whether your use would infringe on a U.S. trademark held by a Cuban company. This issue was just addressed in a federal court case, decided a few weeks ago, in which a Cuban (government-owned) cigar company successfully prosecuted a tradememark infringement suit against a U.S. company that was selling cigars under a famous trade name owned (and registered in the U.S.) by the Cuban company. http://www.law.com/jsp/article.jsp?id=1080681913225. So, in spite of the fact that a trademark is owned by a company in an ostensibly-hostile country, or even by the government of that country, a U.S. court will apparently enforce it. As for licensing with the Cuban company, the Trading with the Enemy restrictions on doing business with Cuba and Cuban companies is pretty broad, and probably excludes U.S. citizens licensing Cuban intellectual property rights in the U.S. See, e.g. 31 CFR 515.201, et seq. As for the question of the ex-pat Cuban company in the D.R., here, too, you should consult a lawyer. He may well have trademark rights in the U.S., and in the event that his trademark/trade dress is similar to that of the Cuban company (as is true of several cigar brands made both in Cuba and elsewhere), you may well be infringing on the U.S. rights of _both_ companies. In short, consult a lawyer who specializes in trademark law; he'll be familiar with the issues raised by your project. FR



horrigan@aol.com (Horrigan)	4/21/2004 9:30:16 PM
I would like to market a product in the US that would picture some classic Cuban cigar bands. I have several questions about this and would appreciate input. I see a couple of potential hassles aside from the obvious one (i.e., the fact that you are infringing on the Cuban cigarmakers' trademarks.) Hassle #1: The US government might think you are doing business with Cuba. You would basically be expected to prove that you are using the trademarks without compensations. That means you would have to prove that you are infringing on the trademarks. Hassle #2: There is a good chance that there are Cuban expatriate here in the US who think they own the trademarks. You could definitely get sued by descendants of the pre-Castro owners of the cigar factory... The issue of property rights is one of the main reasons why we haven't made piece with Cuba. All the property left behind by Cubans who feld the country was seized by the state, and in most cases is now owned by someone else. But the US government takes the position that this property rightfully belongs to the the original refugees and restoring this property is a necessary condition for making peace with the Castro regime. *** Tim Horrigan <horrigan@aol.com> ***



sethb@panix.com (Seth Breidbart)	4/23/2004 3:07:03 PM
In article <rs7e80ttmkb2dr2rn7gacgf3gssis1935i@4ax.com>, Horrigan <horrigan@aol.com> wrote: I would like to market a product in the US that would picture some classic Cuban cigar bands. I have several questions about this and would appreciate input. I see a couple of potential hassles aside from the obvious one (i.e., the fact that you are infringing on the Cuban cigarmakers' trademarks.) Don't those trademarks apply to cigars? What if he marketed posters? Cigar boxes? Coffee-table books? Hassle #1: The US government might think you are doing business with Cuba. You would basically be expected to prove that you are using the trademarks without compensations. That means you would have to prove that you are infringing on the trademarks. That assumes validity. Anyway, not taking any sort of tax deduction for paying for use of the trademarks should suffice here (absent proof otherwise). Hassle #2: There is a good chance that there are Cuban expatriate here in the US who think they own the trademarks. You could definitely get sued by descendants of the pre-Castro owners of the cigar factory... If they aren't marketing stuff using the trademarks, then they've let the trademarks lapse. Seth

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