# Otterbox issues cease and desist



## Tietje Creative (Jul 18, 2012)

Was just informed that Otterbox has issued a cease and desist to most of the companies that are offering customize cases. This is really a bummer for those of us who were buying through these wholesale companies for resale to consumers....


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## GordonM (May 21, 2012)

On the basis of?... Which designs were targeted?


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## Tietje Creative (Jul 18, 2012)

They are only authorized to sell to end users!


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## GordonM (May 21, 2012)

I'm still trying to understand the nature of the C&D. The decorator/customizer is the end-user, who just happens to sell it again in a different form else after adding value. Such reselling and value-adding is allowed under the first-sale doctrine. OtterBox may have legally-allowable language in their terms with distributors for selling to certain types of customers, but they can't set prices that a reseller charges for the item (e.g. "wholesale"), nor can they disallow third-parties from purchasing the products for after-market enhancement.


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## deehoney (Dec 16, 2010)

I read about something like this on FB today. I'm really surprised.


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## chartle (Nov 1, 2009)

mgparrish said:


> As for Otterbox what I am seeing on the web is _counterfeiting,_ which is a crime_._
> 
> OtterBox Lays Down the Law on Counterfeiters — That's So Fake! | How to spot a fake...
> 
> ...


I found these too, but what about the last link. 

Any lawyers out there? I have trouble reading legal briefs. My eyes shut down the first time I see one of these. *§*

I guess they are saying "Oh no we didn't".


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## mgparrish (Jul 9, 2005)

chartle said:


> I found these too, but what about the last link.
> 
> Any lawyers out there? I have trouble reading legal briefs. My eyes shut down the first time I see one of these. *§*
> 
> I guess they are saying "Oh no we didn't".


You are correct, they are saying "no we didn't".


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## missswissinc (Feb 21, 2012)

I think someone complained on some end of the spectrum and that is why they did the CD. Look at underarmor they did the same thing. Bet some sports store complained that we have seen some people sell your product at some other price lower then what it should be and well now the guy told us that he no longer can sell underarmor. Here is what sanmar says regarding the Nike Line "In addition, online sales of these products may be made only from your own site. Sales on or through eBay, Amazon, Craigslist or any other third party site are prohibited. Failing to comply with these policies will result in loss of privileges for selling these brands." Which to sounds like what happend to otterbox. someone screwed a pooch and now you and I have to pay the price.


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## chartle (Nov 1, 2009)

mgparrish said:


> You are correct, they are saying "no we didn't".


I forced myself to read a little more.

At first I thought it was a you got the wrong guy, we don't make or sell anything that should be an issue for Otterbox.

Then it seems like the plaintiff is saying we didn't do anything wrong because the case in question doesn't infringe. 

I don't know there is one pic of the case in question and all I can see is that there are three tabs in the exact same place as the true Otterbox. 

But still this doesn't have anything to do with the OP's issue of buying something adding some bling and reselling it.


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## mgparrish (Jul 9, 2005)

chartle said:


> I forced myself to read a little more.
> 
> At first I thought it was a you got the wrong guy, we don't make or sell anything that should be an issue for Otterbox.
> 
> ...


Yes, I agree it is a different issue, do you (or anyone) have a link or doc showing about redecorating legitimate Otterboxes? 

Lawyers can send "cease and desist" letters (sometimes just to scare and harass) but it takes a court decision to give them "teeth". 

I offered those links because the question of counterfeiting is the only thing I could find.


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## GordonM (May 21, 2012)

chartle said:


> Then it seems like the plaintiff is saying we didn't do anything wrong because the case in question doesn't infringe.


OtterBox has a couple of utility patents mostly related to a capacitively-coupled covering for the touch screen that allows the case to be fully enclosed and substantially water-tight. Most cases are just open in the front.

The bulk of their patents are design patents, and these are much easier to prevail on if there are enough similarities that a reasonable person would be confused as to its source. These things are very subjective. Coke has one of the most famous design patents, their unique bottle shape which is also used in their logo. You can't even get half-way close to designing a similar bottle without getting thoroughly whacked.


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## GordonM (May 21, 2012)

I was not careful with the term "brand name." My experience is such that a "brand" is more than the trademarked name, so I tend to use the term a little loosely. The brand is everything that makes a customer believe a product comes from where they think it does. Sorry for any confusion.

Your pharmacy analogy really doesn't wash because A) their bottles are sterilized (by law must be), and B) you must be licensed or certified to dispense medicines, and the licensing involves training on how to prevent contamination. (Plus C,, water-based medicines that could be contaminated by bacteria either have a microbial additive, carry instructions to keep refrigerated, etc. OEM inks have microbial additives, but they're really only effective when the ink remains sealed in the cartridge. They have marginal efficacy in an open system like a CISS.)

But as I said, I'm being hypothetical in the argument, regardless of personal experience. Proof of dilution via quality reputation does not require hard data, but can also be from established business practice. It doesn't matter what your or my actual experience is, but what's accepted in the business as best practice. That's enough to make a prima facie claim of dilution, and the onus moves to the defendant to prove their procedure meets the standards.

I will agree this discussion is now far off topic!


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## mgparrish (Jul 9, 2005)

chartle said:


> I forced myself to read a little more.
> 
> At first I thought it was a you got the wrong guy, we don't make or sell anything that should be an issue for Otterbox.
> 
> ...


So I guess the real questions are ...

Was Otterbox going after people that they though were decorating bootleg cases?

Does Otterbox provide a "license" when you buy the genuine product and not allow you to decorate even "genuine" product?

Staying on this topic I recall Zippo being real Nazis about their stuff. Saw this on their website regarding selling their stuff at "auction". The first parts go toward counterfeit items, which is reasonable, but the issue of redocorating their "genuine" items looks like a lot of BS and scare tactics.

So could be that Otterbox is taking a simlar position?

After all the trademark stuff I just posted and read and I don't see how anybody can restrict what you are doing unless you are buying and signing a license not to do something. Imagine if I bought blank tshirts and Hanes made me submit my decorations for their review first.

Get a load of this ....

"3. Unauthorized alteration, decoration, engraving of Zippo lighters and sales of Zippo lighters that have been engraved, decorated or otherwise altered without ZMC’s consent, infringe it’s trademark rights. 

Specifically, the alteration, decoration, engraving and sale of Zippo lighters, using images and designs that have not been authorized by ZMC, directly infringes Zippo’s trademark rights. 

Furthermore, the use of the ZIPPO name and of the famous registered Zippo lighter shape in auction website listings, including those on eBay, without ZMC’s consent, are also infringements.

Such infringements are likely to cause consumers to be deceived into believing that these offered products are authorized, approved, or in some other way associated with ZMC. They are not. The unauthorized alteration or decoration of a Zippo windproof lighter has rendered it to be no longer genuine.

In addition, the decoration of Zippo lighters with images and designs not approved by ZMC is likely to tarnish the reputation of the ZIPPO trademark which for some eighty years has been perceived as an All-American icon. The Zippo brand is associated with the images that ZMC selects and affixes on them in its sole discretion. 

ZMC owes to its customers and to the many collectors of its Zippo windproof lighters the assurance of the integrity and authenticity of the designs and decorations on a Zippo windproof lighter.

For any of the above reasons, ZMC will demand that the commercial seller of such products cease & desist all such activities without any further delay. If such seller does not comply, ZMC will take whatever action is legally appropriate to enforce its legal rights."


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## Riderz Ready (Sep 18, 2008)

Just curious - what does all this mean to those making and selling custom dye sub phone cases sold by so many vendors? Not sure if this has a bearing or not related.


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## GordonM (May 21, 2012)

mgparrish said:


> "3. Unauthorized alteration, decoration, engraving of Zippo lighters and sales of Zippo lighters that have been engraved, decorated or otherwise altered without ZMC’s consent, infringe it’s trademark rights.


Obviously an over-zealous corporate lawyer abiding by the unqualified demands from his or her boss to "get tough on this stuff." Wouldn't hold up in summary review.

They also don't know the difference between its and it's.

If Zippo is going to be this obnoxious, engravers are well advised to promote another product for customers wanting to give that special personalized gift.


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## GordonM (May 21, 2012)

Riderz Ready said:


> Just curious - what does all this mean to those making and selling custom dye sub phone cases sold by so many vendors?


Haven't a clue!!

My guess -- and it's only a guess -- is that some of the wholesalers offering OtterBox cases were in fact importing fakes. Not seeing the C&D in question, it's unclear what they wanted ceased and desisted!


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## mgparrish (Jul 9, 2005)

GordonM said:


> Obviously an over-zealous corporate lawyer abiding by the unqualified demands from his or her boss to "get tough on this stuff." Wouldn't hold up in summary review.
> 
> They also don't know the difference between its and it's.
> 
> If Zippo is going to be this obnoxious, engravers are well advised to promote another product for customers wanting to give that special personalized gift.


Yes, looks like a bunch of scare tactics to me. I don't engrave though but seems Zippos are in high demand engraved.


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## mgparrish (Jul 9, 2005)

Riderz Ready said:


> Just curious - what does all this mean to those making and selling custom dye sub phone cases sold by so many vendors? Not sure if this has a bearing or not related.


My guess, and only a guess too is that the believe their design patents are being knocked off by the Chinese for the stuff being subbed. ???

The issue becomes of supply if they are trying to get all the aftermarket cases not made by them off the market. I would presume some of the sublimation suppliers know what is going on but will they share their insight?


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## Rodney (Nov 3, 2004)

Thread note: the off topic Sawgrass posts have been moved here: http://www.t-shirtforums.com/dye-sublimation/t203596.html


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## mgparrish (Jul 9, 2005)

Tietje Creative said:


> Was just informed that Otterbox has issued a cease and desist to most of the companies that are offering customize cases. This is really a bummer for those of us who were buying through these wholesale companies for resale to consumers....


This thing looks huge, it's not really just focused at decorators, they are trying to monopolize the entire cell phone case aftermarket.

The filing with the ITC is to either choke off permanently any import or asking at minimum for a temporary injunction. 

http://www.mgparrish.com/otterboxcomplaint.pdf

The ITC has set a final review date of October 30 2012 for completing the investigation 

http://www.martindale.com/administr...-Spivak-McClelland-Maier-Neustadt_1328438.htm

I don't see an ITC review or order yet. 

They have around 15 lawsuits pending then a bunch they already forced settlements with.

They are claiming about 76 issued patents and 70 pending patent applications as April 2011.

It's more than counterfeiters, where people try to duplicate the look exactly and even use the Otterbox trademark, looks like to me they got patents for so many design variations they are able to cover just about any design out there, so they are crying "Chinese Copycats". Not a blatant intent to counterfeit, but claiming others are trying to make their products just look very similar. Some of the complaints also relate to a utility patent that covers the function of something not just the aestetics covered in the design patents.

Just checked my cell phone case, it's not decorated just a ruggedized case, it's made by "Ballastic", that brand is named in the ITC complaint and a patent suit.


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