Legality of Selling Custom sets of Licensed Themes

[Bagg]

Hi all,

I have done an extensive EB search but can't find the answer to this question. Sorry if it has been done to death before!

I have a few custom SW, Batman and HP sets that friends and relatives always ask to buy off me. I was thinking about doing a small run on ebay. I note that some folk do sell custom stuff like this but isn't it some sort of infringement? I can see how it would probably be ok to sell custom generic stuff like cars, bridges etc but TLG has expensive license contracts with various big players (Lucas Arts, film studios etc). Isn't it infringement against TLG and/or the Theme owner to release in these lines?

Would the same relate to selling instructions for a themed custom set?

I don't want to make $50 but end up in Jail :) !

Thanks for any enlightened responses

Bagg

[Omicron]

Nothing wrong about it. It is your own custom set, or MOC, and you have the right to sell it. People resell actual LEGO sets and nothing stops them, so what is to stop you from selling your own?

-Omi

[Siegfried]

Nothing wrong about it. It is your own custom set, or MOC, and you have the right to sell it. People resell actual LEGO sets and nothing stops them, so what is to stop you from selling your own?

-Omi

I'm not so sure. Did you hear about this case?

[tedbeard]

Nothing wrong about it. It is your own custom set, or MOC, and you have the right to sell it. People resell actual LEGO sets and nothing stops them, so what is to stop you from selling your own?

Nothing to stop you except lawyers and the courts. If you sell anything with logos or trademarks that belong to someone else you are subject to legal penalties and civil action. Using LEGO elements to create custom sets is one thing but LEGO pays license fees to use characters and trademarks associated with Harry Potter Star Wars, etc. If Lucasfilm catches you trying to sell anything with "Star Wars" on the box you will be shut down as soon as they find out.

If you sell custom sets for "Wizard Adventures", "Night Vigilante" or "Space Battles" then you would probably be OK so long as you do not include any licensed figs or elements in the set.

[vexorian]

Well, just do not name your mocs and sell them as if you were selling a collection of parts. People sell licensed themes' parts all the time and there is no reason it should be a infringement.

[Omicron]

Nothing to stop you except lawyers and the courts. If you sell anything with logos or trademarks that belong to someone else you are subject to legal penalties and civil action. Using LEGO elements to create custom sets is one thing but LEGO pays license fees to use characters and trademarks associated with Harry Potter Star Wars, etc. If Lucasfilm catches you trying to sell anything with "Star Wars" on the box you will be shut down as soon as they find out.

If you sell custom sets for "Wizard Adventures", "Night Vigilante" or "Space Battles" then you would probably be OK so long as you do not include any licensed figs or elements in the set.

Run a search on ebay. You will find so many licensed MOCs and sets being sold. Not only tat, but you will also see custom figs as well.

No one is sellng custom Space Battle figs, but there are quite a few loads of custom Star Wars Clone Troopers. Two ways to loophole the legal system. One is to say that it is not a real but custom set using Lego parts (and whatever else you use). The other is to state that the characters are trademarked by Lucasfilms, etc.

People have been doing this for years. If nothing has been done then, nothing can be done now. I can name so many customizors that legally sell stuff based off of licensed products.

-Omi

[tedbeard]

Omi, I think you missed something - or I did.

The original question, as I read it, was about creating multiples of custom sets with printed instructions. Selling modified figs and used elements are both very different than printing instructions and labeling things as being "Star Wars" or "Batman" sets. If the lawyers get wind of such a thing they will shut it down.

Advising someone to break the law because others appear to be getting away with it seems to me to be poor advice.

[Omicron]

Omi, I think you missed something - or I did.

The original question, as I read it, was about creating multiples of custom sets with printed instructions. Selling modified figs and used elements are both very different than printing instructions and labeling things as being "Star Wars" or "Batman" sets. If the lawyers get wind of such a thing they will shut it down.

Advising someone to break the law because others appear to be getting away with it seems to me to be poor advice.

Instructions can be printed as long as the logo has the trademark.

And not really telling them to break the law, just to loophole it by mentioning the trademark. That is completely legal to do.

-Omi

[tedbeard]

Instructions can be printed as long as the logo has the trademark.

And not really telling them to break the law, just to loophole it by mentioning the trademark. That is completely legal to do.

Actually no, it is not. It is illegal.

If you create anything with someone else's trademarks and sell it without their permission you have broken the law. Re-selling something with a trademark already approved and paid for is fine but we are talking about creating something new and adding a trademark. The whole point of trademark law is to stop exactly this sort of theft. Just because owners of these trademarks cannot prosecute every single infringement does not mean it is OK. It is not a "loophole" you are describing but evasion. If they find such a use they have to prosecute or risk losing their trademark protection.

Please stop posting any more on this subject until you have spoken to a trademark lawyer or at least done some actual research on trademark law because at this point you are advocating illegal activity.

[ie10421]

Mu understanding is that the law differentiates between custom works of art, so to speak, and production goods. Think about craft fairs, where 40+ year old men and women sell custom made craft items. Many of these include things like Pro Sports team Logos and licensed characters. These are perfectly legal to sell, as they are 1-off or very low number custom creations. I believe your Batman, HP or Star Wars sets would fall into the same category. The law is meant to stop companies from producing large numbers of items using others trademarks etc.

Chris

[tedbeard]

Mu understanding is that the law differentiates between custom works of art, so to speak, and production goods.

I would be interested in where you get your understanding of the law.

I know that various brick artists have been prevented from selling one-off works of art because they infringed trademarks. For example, from Eric Harshbarger's site:

Please note that certain images and characters are trademarked by other entities. I cannot build such sculptures commercially unless permssion is obtained from the trademark owner. Models such as R2D2 are only sculpted for my personal enjoyment. If you would like a sculpture/mosaic constructed, either pick a public domain image (like Alice or Mona), or obtain permission from the owner of the trademark/copyright.

- from LEGO Sculpting FAQ

These exemptions and loopholes are myths. They may sound reasonable and be something we would all prefer were true but the law is not based on wishes and dreams.

[Bagg]

Thanks for all replies so far. My very basic understanding of copyright law accords with yours Tedbeard. It seems to me that people selling sets and figures of licensed themes are actually breaking the law - they just haven't been caught yet.

Some are getting rather blatant with it. The well known sites currently selling custom minifigs of many licensed themes come to mind particularly. I'm actually surprised these have not had a problem yet as they seem to be now generating significant traffic and profit.

I have a distant connection with a lawyer in the field so I'll see if I can get some definitive info from them and report back.

Cheers,

Bagg

[Omicron]

Actually no, it is not. It is illegal.

If you create anything with someone else's trademarks and sell it without their permission you have broken the law. Re-selling something with a trademark already approved and paid for is fine but we are talking about creating something new and adding a trademark. The whole point of trademark law is to stop exactly this sort of theft. Just because owners of these trademarks cannot prosecute every single infringement does not mean it is OK. It is not a "loophole" you are describing but evasion. If they find such a use they have to prosecute or risk losing their trademark protection.

Please stop posting any more on this subject until you have spoken to a trademark lawyer or at least done some actual research on trademark law because at this point you are advocating illegal activity.

Lets provide an example shall we?

Bricklink is a site that not only resells Lego sets, parts, and instructions without the approval of Lego, but also sells custom sets, parts, and instructions without the approval of Lego. They can be shut down. What prevents this?

LEGO® is a trademark of the LEGO Group of companies which does not sponsor, authorize, or endorse this site.

At the bottom of the site. BZPower has the same thing, but its mainly about images. Same with Brickshelf. EB can technically be stopped because they are using Lego's images without their approval, since they lack the disclaimer.

Also you misunderstood me. If you plan on using an image if say Han Solo you have to have to have the disclaimer. Never said sell it with the trademark, but you have to let people know that the product you are selling is different. Because technically speaking, people showing off their LDD instructions is infringement because they don't use the disclaimer. This is simple stuff you learn in high school and college.

-Omi

[tedbeard]

Bricklink is a site that not only resells Lego sets, parts, and instructions without the approval of Lego, but also sells custom sets, parts, and instructions without the approval of Lego. They can be shut down. What prevents this?

This has nothing to do with what we are discussing. We are NOT discussing re-selling of previously existing products.

We are discussing creating something new (instructions, box art, set names) using someone else's trademark.

[Masked Builder]

I see nothing wrong with it. Lego has been payed for the bricks so you fine.

[CMP]

This has nothing to do with what we are discussing. We are NOT discussing re-selling of previously existing products.

We are discussing creating something new (instructions, box art, set names) using someone else's trademark.

Actually, it kind of does. Bricklink has a 'Custom Set' area, where people can sell custom sets and figures. I've seen a bunch of 'Aliens' custom sets on it.

Edited September 29, 2010 by CallMePie

[MetroiD]

Is it just me or has there really been a huge rise of interest pertaining to the legal side of MOCcing & LEGO in general over the last few weeks?

Bagg, for the things you have described this far, you'd best heed tedbeard's advice and be careful about it, especially considering it's Star Wars custom sets we're talking about here which you want to sell separately, without the consent of TLG or Lucasfilm. Omicron is right regarding many of the things he's discussing, but the problem is that they do not really apply to your case here.

[CMP]

I doesn't matter to me, anyway. A true MOCer/AFOL doesn't sell their work.

[Bobskink]

I somethimes sell customs on eBay from time to time (only with the intention to buy other Lego sets and parts).

I heard that selling customs is okay, but you have to mention that it's a custom.

When you reproduce actual Lego parts, use logo's etc, you go to far.

I don't know how it goes when you reproduce your own parts, when they are a certain existing character. I think it's not permited. Because then you make multiple versiosn with the intention of selling, it goes beyond customizing, for instance, you don't have to pay the liscence fees that others have to pay. But it seems some people can get away with it, just to be safe I always make unice customs, even if I do know how to cast and recast...

In general, I think you can sell a custom on eBay, you can sell anything on eBay, who is to tell what is the origin of the object. If you can't seel a customs Star wars Character, you can't sell a regular Star wars character. It's just Dangerous when you make a bussynes out of it and become a profesional seller.

If it was illegal, I am sure Mr Lucas or TLC would already be on it. The only people who can get away with it live in the kind off country's were they don't really care about trade marks etc...

[Omicron]

This has nothing to do with what we are discussing. We are NOT discussing re-selling of previously existing products.

We are discussing creating something new (instructions, box art, set names) using someone else's trademark.

Ummmmmm

Look again. Custom Sets, Custom Parts, Custom Minifigs, Custom Instructions, and even Custom Original Boxes. Most of these are licensed.

And not only that, but have you ever been to a Lego convention? Lego has a strong presence at these things and they witness the selling of custom figs and mocs AND instructions.

The well known sites currently selling custom minifigs of many licensed themes come to mind particularly. I'm actually surprised these have not had a problem yet as they seem to be now generating significant traffic and profit.

While technically their inspiration is derived from licensed products, their design on their stuff is completely their own. Take Kaminoan as a fine example to this. He makes a boatload of decals based on Star Wars, Star Trek, comic books, etc. He designed them all, but they are inspired by the characters. BrickForge's Space Marine armor is inspired by the armor worn by Master Chief in Halo.

-Omi

[AndyC]

As is often the case, there are a million shades of grey here and where you find yourself will depend on what you're doing. The laws covering this include trademarks, copyright, passing off, counterfeiting and patent infringement. In some cases, like customising a minifig to look like a licensed character, the argument is about design copyright and passing off, as it could be argued that you have reproduce someone else's design (to some extent, naturally a minifig is going to look a bit different) or that you are trying to make someone think they are buying a legitimate Lego figure. To some extent what's likely to happen to you largely depends on whether anyone thinks there is enough money involved to justify the lawyers.

Reproducing trademarks, like the Star Wars or Lego logos for example, is a whole different kettle of fish. In many countries failing to protect a trademark can result in losing it, so companies are far more likely to send in the lawyers. There is also the possibility that you could find yourself selling what are, in the eyes of the law, counterfeits and that's somewhere you really don't want to be.

Caution is definitely advised and if you're serious about going down this road, consult a lawyer rather than getting advice from the internet.

[tedbeard]

I see nothing wrong with it. Lego has been payed for the bricks so you fine.

And no one is objecting to selling the bricks nor are we discussing legal issues with The LEGO Group.

The objection/warning is for creating something new (ie: printed instructions) that use trademarks that belong to third parties such as Lucasfilm, or Disney etc. You cannot sell something for which no licensing agreement has been reached with the owner of the trademark. A Toy Story figure has already had the license fee paid by LEGO to Disney. A box created by you with the "Toy Story" artwork on the front has not had any license fee agreed or paid and would thus be a trademark violation and, in some jurisdictions, considered theft.