Dakota Collectables Lic (Personal use ONLY)

[Impressions Embroidered Apparel]

Hi,

We recently purchased Dakota Collectables latest designs "Happy Bunny" from their "Licensed Design Series" for $69.95 for 20 Licensed Designs.

After reading how popular Happy Bunny is in department stores from the Dakota Site:

http://www.dakotacollectibles.com/co...HappyBunny.asp

We decided to invest in a Happy Bunny web site, Google and Yahoo marketing, Tee Shirt and Hat stock, only to just get the site just up and running and then get a legal notice from Dakota Collectables that the designs they sold us are for "Personal Use Only".

If it would have been clearly stated "Personal Use Only" we would not have purchased them. Why would embroidery companies buy designs from a digitizing company that you can not sew on items for sale.

Now we are worried about the $2,000+ dollars we spent with Melco to get some Dakota Designs when we bought our embroidery machines. Are these "personal use only"?

Letter from Dakota Collectables:


October 18, 2006



Steve and Lisa:

Please be advised that Jim Benton, acting through the J.K. Benton Design Studio, Inc. (The Studio) is the owner of the copyrights (and other intellectual property rights) in and to "It’s Happy Bunny™" and "It’s Happy Bunny Baby™". I am advised the copyrights to these designs have been registered with the United States Copyright Office. Dakota Collectibles has obtained a license from The Studio, to create and distribute embroidery software, for the It’s Happy Bunny™ and It’s Happy Bunny Baby™ designs, "for personal use only". We recently began to distribute this licensed product.

Dakota Collectibles made it very clear, in a notice to our Distributors and Retailers, and in the Embroidery Software License the end user receives, that these licensed designs "cannot be sewn on items for resale". (See attached Notice and License.) This means these designs can only be sewn, by the purchaser, on their personal items for their personal use. Commercial reproduction and resale of these designs is prohibited.

I am the General Counsel for Dakota Collectibles. I was recently directed to your website at www.gethappybunny.com where you are selling these copyrighted embroidery designs. I have been advised by The Studio that you do not have a license to reproduce and sell these designs. I have received authorization and directions from The Studio to take action and stop this unlicensed use.

The unauthorized copying and/or use of copyrighted materials constitute acts of infringement under the Copyright Act, Title 17 U.S.C., and, in particular, 17 U.S.C. §501 et. seq. Only the copyright owner, and its assigns or licensees, is permitted to make copies of its works. Each and every time you sew out a It’s Happy Bunny™ or a It’s Happy Bunny Baby™ design, you are making an illegal copy, and this constitutes an infringement.

The civil remedies provided to a copyright owner for infringement include statutory or actual damages. Actual damages are the owner’s lost profits, or the infringer’s profits from the illegal use of infringing copy, 17 U.S.C. §504(b). If the owner elects to recover statutory damages, the court awards damages, with respect to any one work, in a sum of not less than $750.00 or more than $30,000.00, as the court considers just. 17 U.S.C. §504(c)(1). In addition, the copyright owner can obtain an injunction against further infringement, 17 U.S.C. §502, and attorney’s fees and costs, 17 U.S.C. §505.

The Studio demands that you immediately CEASE and DESIST the sale of the It’s Happy Bunny™ and It’s Happy Bunny Baby™ embroidery designs. You have now received actual notice of this infringement claim. The Studio will consider any further sales as "willful infringement". In cases of willful infringement, the court, in its discretion, may increase the award of statutory damages to a sum of not more than $150,000.00. 17 U.S.C. §504(c)(2).

Please notify me, no later than the close of business on Friday, October 27, 2006, of the steps you have taken to comply with this demand. In addition, we require a complete list of all of the It’s Happy Bunny™ designs sold, and the revenue derived from these sales. I await your prompt reply.

Sincerely,


Timothy J. Austin

General Counsel

Dakota Collectibles

2000 Schafer Street

Bismarck, ND 58501

(701) 255-2409, x3141

[email protected]

[Impressions Embroidered Apparel]

Dakota Collectables Lic Agreement from their web site:

http://www.dakotacollectibles.com/comm/terms.asp
__________________________

EMBROIDERY SOFTWARE LICENSE


REPRODUCTION AND SALES OF EMBROIDERED GOODS: This license allows you to sew the designs on fabric. You may then sell, trade, or give away the embroidered goods which have the designs on them.
_____________________________


So one of two things, the email we got from Dakota Collectables (in post earlier) is not real, or the "Embroidery Software License" at the bottom of the Dakota web site is only for certain designs, and not all designs they sell.

[levelbest]

I am guessing it is real - and that their licensing deal is similar to what we bought when we purchased our first embroidery machine almost 5 years ago, a Brother ULT 2002 D. The D in the serial number was Disney. The machine came with a ton of stock Disney designs - the only catch being - you couldn't use them on items for resale. They now sell a huge line of designs - but all are licensed the same way.

I run one of the largest walt disney world travel sites on the internet, INTERCOT.com and would love to sell disney embroiered stuff there - but I just can't... even though I own the machine.

[susan]

Hi,
I know exactly what you mean. My husband was extremely excited when he saw the Happy Bunny advertisement. Within 15 minutes of seeing them, he had visions of doing what you actually did. From my past experience, when I was just doing embroidery as a hobby, I expected that we could stitch them but not sell them. I had to look hard to find the the statement where we couldn't sell them. My husband was furious that Dakota would send an embroidery business an advertisement for something they couldn't sell in the end!!

You should be O.K. to sell things with your other Dakota designs on them. But any legit licensed designs like Happy Bunny, Disney, Warner Brothers etc can not be sold. Legally, I can not buy licensed fabric prints (like Pooh or Batman), make a blanket out of them and sell them. The same rule applies to the fabric. You can make things with them but only for personal use, not for resale. The same goes for licensed character cake pans. When Krogers makes licensed cakes they have to purchase the right to do so.

I think it stinks, but that is the law.

Susan

[Impressions Embroidered Apparel]

Thanks for the emails.

I don't disagree about copyrights and the copyright laws. We would have never purchased or offered for sale Dakota Collectable Happy Bunny Designs if we would have known these Dakota Designs are for personal use only.

The thing I disagree with is how it is presented on Dakota's web site now that we know they are not for resale and looking back I feel like we got suckered into buy something that is worthless.

The Dakota site talks about how well Happy Bunny does at Koles and Sears, how is it a top licensed product, they show the designs sewn on clothing items in a photo gallery. They even call the product the "Licensed Design Series" and for $69.95 you get 20 "Licensed Designs". So you think, a company that sells $5,000 software collections to embroidery companies wants to extend some great offer to your embroidery shop.

Then you read the Dakota Terms on their web site just to make sure you can resell these and it says:

"EMBROIDERY SOFTWARE LICENSE


REPRODUCTION AND SALES OF EMBROIDERED GOODS
This license allows you to sew the designs on fabric. You may then sell, trade, or give away the embroidered goods which have the designs on them. "

So after reading that you think, these designs on their web site are ok for resale.

Then on one Happy Bunny Page on Dakota's site there is some legal mouse type about only being able to resell in the US and Canada, so you read that and think ok, I can resell these Dakota Designs, I am only going to sell my shirts in the US.

I have not read the page that prob. came with the Happy Bunny Designs in the box, but am guessing that states you can not resell these Dakota Designs. But by then Dakota has already made their $69 dollars.

[Impressions Embroidered Apparel]

After searching long and hard I did find one page on the Dakota site that says "Personal Use Only" for Happy Bunny. So it is there. I would say it is not easy to find since it is NOT on the main Happy Bunny page under the Happy Bunny legal disclaimer section and most people would read the "EMBROIDERY SOFTWARE LICENSE" page instead of this which leads you to believe all designs on this web site can be sewn for resale.

Here is the Happy Bunny Page that tells you they are for personal use only:

http://www.dakotacollectibles.com/co...ackcode=LS0101

So it looks like I will be taking down our Happy Bunny web site that I just got up and running.

[Steve]

That is a legal DMCA notice for takedown. I would suggest you take the gethappybunny.com website down today before you get yourself in big legal trouble. Your web hosting company has the right to remove the website(s) also, so I would take it down before they do to show you are making the attempt to discontinue the use of the products and reponded to their request. I would also remove the content on your ImpressionsWear.com website also.
Dakota website says in red letters "Designs cannot be sewn for resale." when you purchased it.

I like how your website is layed out. Did you design it yourself?

[signman]

Have you tried contacting the Happy Bunny agency listed on the Dakota page and see what they say? Its a long shot, but maybe it won't cost an arm and a leg to get the rights from THEM to do your sales!
Always worth a couple of phone calls!

[Steve]

I have dealt with DMCA notices a lot (not for my business but dealing with our customers at my full time job who post or sell trademarked or copyrighted material or use peer-to-peer software to trade mp3's and software.) This is a legal counsel you are dealing who has the right to contact your web hosting company and have your whole website pulled down in seconds (I have done it before many times.) Once you are in violation of the DMCA, you have no recourse. The legal counsel will make your life hell if you don't comply and it isn't worth your time, money or trouble to call Happy Bunny. Dakota has the agreement with Happy Bunny that anyone who buys the software can not resell the designs and it is written clearly on thier website. Web Hosting companies must comply with notice for takedown if they have received the notice also or they could face legal trouble as well. It is not something you want to mess with.

[lfrazier]

Interesting discussion. A portion of my business is embroidery and I usually upgrade every other year with the newest Dakotas big collection. I received a flyer advertising the Happy Bunny designs a few weeks ago and as other people have said here, I too envisioned some cute kids garments to sell. It would never have occurred to me that these designs were for personal use only. I understand the trademark, copyright issues of logos, etc. My problem is with the way these designs are being marketed - to embroidery businesses. What the heck do they think we would want them for?

[picphoman]

Hi I think that as a group we should support our member who is having trouble with Dakota Designs. I agree that Dakota did say for personal use only but it also says you can sell the designs. sWhat do they think that a professional embroidery business needs with designs that they can't sell. On Dakota's website it makes a big deal about not being able to refund. I think they should issue a refund and an apology for mismarketing. I agree that the member should take down the website but that no further action other than a refund for the designs be tgaken by Dakota. If that does not happen as a group we should lobby Dakota and if Dakota tries to persue legal action for something member did by mistake we should press Melco to drop Dakota. I can't believe the guy a copyright for such a generic looking bunny and the saying I have seen a thousand times.

[monogramgifts]

We run an embroidery business and received a flyer about the Happy Bunny Designs from Dakato and were very excited.

I did not see legal copy on the flyer about being for Personal Use Only. But it could have been in small text tucked away.

The flyer showed fun new Happy Bunny Licensed Designs and we were ready to call Dakota and buy them so we could sew them on shirts, etc. After reading this I know now not to make the call. If the legal text was on the Flyer, it was not in your face so you would instantly know these are for personal use only.

We have bought other licensed designs from Dakota and we thought all designs Dakota sells CAN be sewn on items for resale. It states this on the Dakota web sites main page under the designs TERMS OF SERVICE link at the very bottom of the page. If you have not read the terms Dakota list here you should. It states clearly that: (This license allows you to sew the designs on fabric. You may then sell, trade, or give away the embroidered goods which have the designs on them.)

It sounds like this not the case after reading this thread and Dakota needs to state on their web site Terms of Service page which designs are NOT for resale, or sell designs we can actually sew and sell.

[jimrockford]

court rules you can resell dakota designs.

http://www.ca8.uscourts.gov/opndir/06/08/053309P.pdf

[Don]

You need to re-read the decision. First, the case and decision is against Great Notions, not Dakota Designs. Second, it doesn't address reselling designs at all. The case was about RENTING design cards. The court specifically refuses to address the validity of either side's arguments. Instead, they ruled that Great Notions was suing under provisions in a new law regarding the rental of software programs, but had failed to register the design cards as software prior to filing suit.

Reading and understanding court rulings can be difficult, but you can't make them say something that they don't.

Don
Terradon Embroidery

[Theresa S.]

You always need to be careful with intellectual property. Here is from the main page on Dakota which shows all the "licensed" designs. Front and Center of the main page:

Dakota Collectibles Licensed Series Products

Licensed Products embroidery design software is licensed to the original customer for personal embroidery use. These embroidery designs cannot be sewn on items for resale.

Dakota has other items, that are their own designs, and when we purchase the software, the license says you can stitch them out for resale. This is no different than, for example, wanting to stitch out sports team logos...and not have the license to do it.

I, too, thought the Happy Bunny and some of the others would be fun to stitch out and sell, but when I saw the restriction, decided against it because I knew I would never get my ROI just sewing gifts.

Buyer be cautious: Always read the license info before buying software. If you can't find it, ask the seller before buying it.