letter

The PTG Board of Directors received the following letter from Steinway & Sons on December 10 regarding the use of their decals https://www.steinwaycontent.com/images/decals-unlimited-letter.pdf. The letter was discussed during a PTG Board of Directors conference call that evening. Several questions came up during the conference call, and those questions were forwarded to the PTG attorney before the Mid-Year Board Meeting.

Additionally, two PT Journal articles dealing with trademarks and rebuilder's rights that were published in June of 1997 (pages 33-35, authored by Charles E. Miller, JD), and January of 1999 (pages 20-21, authored by Morgan Malino, JD). Quoting from our attorney's letter received on January 24, 2019:

"In that letter, Steinway advised that (a) it will no longer license the use of its trademarks or logos (either past or present iterations thereof) to Decals Unlimited for the creation of decals for use on the soundboards and fallboards of Steinway pianos, and (b) Steinway will not make available decals through its parts department or any other Steinway channel.”

“In addition, Steinway argues that it is a violation of Steinway's trademark rights for someone to market or sell a restored/rebuilt piano as a "Steinway" piano unless: (a) the piano uses only genuine Steinway replacement parts or (b) the non-Steinway replacement parts used are incidental to the function of the piano and any such non-Steinway parts used are specifically disclosed to the consumer, and that in either case, it must also be specifically and fully disclosed to the consumer that the piano has been rebuilt and by whom.”

“Steinway has overstated its trademark rights. As your Board has pointed out, this was the topic of two articles in Piano Technicians Journal, which are also attached. Although the articles come at the topic from different viewpoints, their conclusions are not that different, but since the date of those articles, there has been additional case law on this point.”

"Further, Steinway may have antitrust liability for its attempt to corner the market on the servicing of Steinway pianos."

Here are additional remarks from the attorney regarding Trademarks:

"I agree with Steinway's assertion that if a Steinway piano is being refurbished/rebuilt for the purpose of selling that piano (especially if it is being sold alongside new Steinway pianos), the consumer must be made aware that the piano is not "new" and that it has been refurbished/rebuilt.”

"Of course, if a Steinway piano is being refurbished/rebuilt for the owner of the piano (without any intention of reselling the piano), the consumer (i.e., the owner) is fully aware of the condition of the piano.”

"I do not agree with Steinway's assertion that it is a violation of Steinway's trademark rights for someone to market or sell a restored/rebuilt piano as a "Steinway" piano unless: (a) the piano uses only genuine Steinway replacement parts or (b) the non-Steinway replacement parts used are incidental to the function of the piano. Just as you can put a rebuilt (or even a non-Ford) engine in a Ford Mustang and still sell it as a Ford, your members can use aftermarket parts when rebuilding a Steinway piano and still sell it as a Steinway, provided that the consumer is not misled into thinking that it is new or has only original parts.”

"What isn't clear from the case law (and what may be different in each factual situation and where the two articles in Piano Technicians Journal differed) is what must be done to inform the consumer."

"Given that your members have the right to sell restored pianos with the Steinway name and logo (as long as the consumers are made aware of what they are getting), the next question is whether your members can force Steinway to make the "Steinway" decals available, as without those decals, your members may be foreclosed from restoring Steinway pianos."

The attorney provides more recent examples of case law that supports the opinions he has provided. The PTG Board of Directors discussed the attorney's letter and expressed the urgency of keeping the membership informed. If membership has additional questions, please don't hesitate to contact your Regional Vice-President for advice.

Regards,

Paul