All Questions in Branding >> Fair Use Rights - taking 2 products and making 1 for reselling

Fair Use Rights - taking 2 products and making 1 for reselling

Posted by . updated on 11/11/2009
If you can take 2 products that have IP rights and combine them into your own single product and get your own IP rights (possibly) then this doesn't give you the right to sell the resulting item?

What example cases is this legal for and not legal for?

Thanks for your time
(california)
Answers (10)
fair  use  rights    taking  2  products  making  1  reselling 
 
JSonnabend
Generally speaking, as long as you don't step on any patent rights, you likely can do what you propose.  Of course, you've provided only the most generalized description of your situation, so you shouldn't rely on advice here if you feel there might be issues.

- Jeff
 
 
bcapehart
Just taking Jeff's comments a bit further - (and this should probably be in a patent forum....)

The US patent law allows the owner to exclude others from making, selling, offering for sale, etc.  Since you would need to make both products in order to make your new product, and assuming these two products had valid, enforceable patent rights, you would probably run afoul of those rights, irregardless of how you used those products.

Brent
 
 
mrsam
That is the very first I have heard of that from anyone.

What happened to First Sale and Fair Use laws?

If I am under no contract with them, and I purchased the items legally then they are now owned by me and should be able to resell them, or so I thought.

What about selling kits that have parts not owned by company x and instructions that I created and owned by me to sell to customers for upgrading company x's product?

Or a service were I perform the upgrade when the customer sends me the product? For example a hard drive replacement to a larger sized hard drive, or memory stick replacement to a larger stick, etc.


 
 
JSonnabend
You are absolutely correct about the first sale doctrine.  My point was simply that the combination of the purchased items can infringe patent rights.  I'm not suggesting that such is the case here -- I have absolutely no way of knowing -- but I wanted to raise the issue.

- Jeff
 
 
mrsam
I am confused thouroughly. and it wont be a problem in the end since I need to find an attorney for a final say so since they will have all the facts presented unlike I can do here.

Does the First Sale doctrine cover modified items?

Can someone explain how taking 2 items combining them in the case of say a GPS unit and adding a larger memory stick would be a problem?

I do not undertand what the last couple posts meant, I am sorry.

 
 
JSonnabend
Your confusion stems from the abstract nature of this conversation, I believe.  If you purchased a bunch of wood, bicycle wire, canvas and a tractor engine and made an airplane, you would have infringed the Wright Brother's patent, even though all the components were free to use.

As for modifications (and repairs/restoration), that's a sticky subject without clear answers.  Sometimes repairing or modifying a patented product for resale is legally akin to making an infringing product, other times it is not.

Adding more memory to product in the form of a bigger hard drive or solid state memory is likely not infringement, but you should clear it first with a qualified attorney who has all the facts.

- Jeff
 
 
mrsam
Yes I am not moving forward without an opinion letter. Just researching how infringement cases work in the meantime.

My confusion also probably comes form not understanding if they do or do not have a patent over the entire product.

For example, a GPS unit for cars and larger memory sticks to go inside of it. Those objects must have patents somehow. In fact, everything electronic must have patents. So how can anybody modify them and resell them or just straight resell?

Assume retail purchase in US with no dealer or wholesale relationship or contract:

If it is a straight resell then it would be a First Sale law that might allow it?

As for modification and reselling, which is done all over the country without manufacture authorization - how or under what laws is this being done since both items being combined into one have patents?

 
 
DJoshEsq
Under the first sale doctrine, the first unrestricted sale of a patented item exhausts the patentee's control over that particular item. It generally is asserted as an affirmative defense to charges of patent infringement.

Of course, these situations are very fact specific.  For example, recent court decisions have held that companies may place disclaimers/license terms on its products that are accepted upon sale.  A good example is printer cartridges - a federal court held that Lexmark could impose post-sale conditions on purchasers such as prohibitions preventing refilling of the cartridges.

There are likely many patents involved ina GPS device. You should speak to a patent attorney to discuss the specifics of your situation.
 
 
mrsam
Was the "purchaser" a dealer, had any other then normal agreed to contracts, or simply a retail customer.

What were their objections or reasons given? Product degradation issues?

Again, all electronic equipment has patents in there somewhere so what is a sample argument for a electronic device that could be upgraded and resold that is a pretty sure thing?

 
 
JSonnabend
Mrsam, I think you're looking for concrete guidance here, and that's about the worst thing you can do.  This forum is a great resource for general information and discussion, but it absolutely does not stand in for competent, specific legal advice.

- Jeff
 

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