By Adam McFarland
The growth in the popularity of custom McFarlane figures over the past few years has been astounding. An enormous demand for customs, coupled with thousands of eager people wanting to try their hand at customizing has resulted in an extraordinary number of customs currently for sale online.
But as the popularity increases, the question of legality is becoming more and more of an issue. Customizing is no longer a hobby that can fly under the radar. I was recently exposed to this first hand. A few months back SportsLizard.com removed the section of our customizing site that allowed people to order customs and decals, essentially making it a reference site.
The decision was made after our customizer had been contacted by Ohio State University and been temporarily told to stop making figures with their players likenesses. After explaining that he was not mass-producing the figures as Ohio State had suspected, he was able to avoid any further problems. But I decided that it was in the best interest of SportsLizard.com not to pursue bringing custom sales back because of the potential hassle of performing a service that seemed borderline illegal. The whole episode piqued my interest so I decided to look further into the issue.
The first thing that customizers need to understand is that there are actually two potential licensing problems here – those with McFarlane Toys and those with the individual teams, universities, and players. The good news for customizers is that Todd McFarlane is on record saying that he doesn’t mind customizing.
In the September 2004 issue of Beckett Hockey, Todd says “I think that it’s cool and interesting that our fans are using our figures as a base for their own creativity.” He goes on to talk specifically about selling customs “In general, I have no problem unless someone is trying to pass a custom off as some sort of official McFarlane action figure.”
Let’s assume for a second that because of those comments you are in the clear with McFarlane (which you may not be), you still have to deal with the massive empire of teams, universities, and players. Some of which have different sensitivities to the use of their likeness and nearly all of which appear to have different interpretations of licensing laws.
Take for instance the difference between Ohio State and Notre Dame. Ohio State, after some investigating said that they were fine with it so long as a customizer does not use the players names for commercial gain. On the other hand, Notre Dame is becoming notoriously known for getting eBay to take down Notre Dame customs auctions because, as eBay puts it, “Using someone else's trademark without their permission could be considered intellectual property infringement.”
But are you really committing intellectual property infringement? A similar issue has come up recently regarding patch-switching on Upper Deck cards that would lead me to believe that you are not.
The January 2006 issue of Tuff Stuff has two articles regarding Upper Deck suing sellers who were removing plain uniform swatches from a player’s card and replacing them with a premium swatch to increase the perceived value of the card. By doing that they are making the card a non-game-used counterfeit. Now, misleading consumers like that IS illegal. Where it gets interesting is in T.J. Schwartz’s column on page 54 about the problem.
For those of you who don’t know T.J., he writes a very candid column each month entitled On Your Side where he exposes problems in the hobby. As his website states, he is “The Sports Collecting Hobby’s first and only consumer advocate”. His trouble with the patch-switching is that eBay sellers are misleading consumers because their item titles (and sometimes their descriptions) give the impression that the card is unaltered. “Make them up yourself, tell everyone bidding that you did just that, and you’d be sludge, but within the basic parameters of legality.”
He goes on to say “I’ve interviewed most of the big licensors during the past 15 years of this column. Original artwork of anyone is fine and does not require a license as long as there is only one of them. In other words, if an artist paints a picture of anyone famous, he/she can sell it without paying that person any royalties or licensing fees. As soon as there is more than one, the licensing kicks in. The rights of the person in question, also kicks in. This spells cash owed to someone.”
Now, any customizer will certainly agree that a custom is a one-of-a-kind work of art. Based on what T.J. said, wouldn’t customs be immune from licensing problems assuming the customizer isn’t mass producing the piece?
The whole thing is obviously a touchy subject with no clear cut answer. I certainly encourage everyone interested in the hobby to take advantage of the resources available on Jomo's Customs, SportsLizard.com, and other sites so that they can learn how to paint them for themselves. It is a great hobby and can be extremely satisfying to make them as gifts for friends and family.
If you really want to go into the “business” of customizing, I would advise consulting a lawyer. At the very least, a customizer looking to profit is going to have to fight battles with teams, schools, and players. Even if it is legal, those teams and players aren’t going to like it and are going to cause you as many problems as they can.
Follow the discussion about this article on the Spawn.com message board.