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Ford Responds: Car Owners Are *Not* Pirates (They Just Can’t Sell Merch With Our Logos On)

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I thought this comment which I received from Whitney Drake at Ford on my previous post about the Black Mustang Club’s 2008 Calender was worth publishing here. Whitney writes:

“We’ve been watching this discussion with interest and I’d like to clarify what is essentially a misunderstanding.

Yesterday we spoke to both Cafe Press and the Black Mustang Club and explained the situation (about the Black Mustang Club’s calendar) to everyone’s satisfaction. Ford has no problem with Mustang or other car owners taking pictures of their vehicles for use in club materials like calendars. What we do have an issue with are individuals using Ford’s logo and other trademarks for products they intend to sell. Understandably, we have to take the protection of our brands and licensing very seriously.

Ford did not send the Black Mustang Club a “cease and desist” letter telling them that they could not use images of their own cars in their calendar. The decision not to allow the calendars to be printed was made by Cafe Press, because we had gotten in touch with them in the past about trademark infringements on products they sold.

The Black Mustang Club, and any other Ford enthusiast club, are free to take pictures of their own vehicles for use in calendars or other materials as long as they don’t use Ford trademarks in products that will be sold.

I think it is great that the Black Mustang Club, and any other enthusiast club, would take pictures of their own vehicles for use in calendars or other materials.

I’m looking forward to purchasing a copy to hang in the garage next to my Mustang (even if mine isn’t black).

Thanks for giving us the chance to have our say.”

Protecting trademarks while allowing customers and fans to express themselves and create media with your products is certainly a difficult balancing act. I agree with Whitney that third parties producing Ford-branded merchandise, without obtaining permission from Ford, is an infringement of some kind, and a problem Ford needs to address in order to protect its trademarks. Legally Ford do own some rights to the “trade dress” of their products, even after they have sold them, and others can’t use that trade dress for profit. But in reality this gets a little more tricky.

Taking pictures of your Mustang with the logo clearly visible isn’t the same as selling these (can’t believe this is still on Cafe Press after all this). But you could interpret the law to mean that selling a second-hand Ford in your local paper with the Ford logo visible would be a tradmark infringement – after all, you would be reproducing a Ford logo and trade dress in the hope of earning a profit, would you not? It’s clear Ford doesn’t take this view, but legally it’s not so clear, and this is where the problems start.

The problem here isn’t what Ford did, it wasn’t Ford who stood in the way of BMC. The real problem is what Cafe Press did. Because they had been spoken to by Ford before about trademark infringement, they stopped BMC in their tracks without even consulting Ford. A decision that had nothing to do with anyone at Ford turned into a PR snafoo for them, because Cafe Press tried to act in Ford’s best interests. Sites like Cafe Press or YouTube, where third parties can upload content they may not own the rights to, are under pressure to police what people upload more effectively. This is causing sites which feature user-generated products and content to impose draconian measures, preemptively prohibiting some content without checking if it’s ok or not, which in this case turned into a PR problem for the actual trademark holder.

Like I said, a difficult balancing act.

7 Responses to “Ford Responds: Car Owners Are *Not* Pirates (They Just Can’t Sell Merch With Our Logos On)”

  1. Latino Zero Says:

    More question than comment…Ford Mustangs are iconic automobiles with very distinct and easily distinguishable bodies. Without Ford or Mustang logos, I believe most people could identify a Mustang – especially the classics made popular in movies and the slick Shelby’s featured in Michael Bay Presents: Transformers and now Knight Rider. Agree? I’ll assume you do, and wonder: If everyone knows it’s a Ford Mustang and someone makes money off a picture of what everyone knows is a Ford Mustang, but without a logo, does Ford have the right to claim violation?

  2. mattmason Says:

    Iconic designs can also be protected, Ford has gone after people for using the silhouette of a car in adverts before. So in theory yes, Ford may have a case in this instance. But if a vehicle has been heavily modified, it could be argued it was a one-off artistic creation.

    The press are given greater freedom over things like this, press coverage counts as fair use, and I think film making falls under similar fair use laws as well. It would be hard to prosecute someone for making a film in which a certain brand of car drove past. Having said that, there was a case mentioned in Free Culture by Lawrence Lessig where Fox wouldn’t let a film maker use some footage which happened to have a TV in the background of a shot playing a few seconds of The Simpsons.

    As for Transformers and Knightrider – I’m pretty sure these were product placement deals Ford and Bay worked out beforehand.

  3. Trollkiller Says:

    The second hand Ford with the visible logo falls under the color of fair use for both the trademark and the copyright.

    Cafe’ Press in my opinion did not try to act in the best interest of Ford but in thier own best interest. They did not want to be involved in any disput between BMC and Ford and/or they did not want to be sued by Ford for producing the calender.

    The Fuct hat may be protected under the parody rulings or it may be protected because there is no way a resonable person would confuse the two.

  4. urpy Says:

    see also http://www.logohallucination.com

  5. Nick Says:

    In the case of selling a used car that has a logo, you are not reproducing it. The car maker made that one copy of the logo under their own authority. Selling something like this is covered under the First Sale Doctrine in the US. http://en.wikipedia.org/wiki/First-sale_doctrine

  6. Chris Tregenza Says:

    I think that Trollkiller is spot on in saying the CafePress is protecting itself and not Ford. By having a blanket band on any 3rd party logos they are trying to avoid a lot of potential trouble.

    Of course they also lose a lot of business.

    I run a CafePress store for my art / design blog Poosk.com. A design based on Hello Kitty [ http://poosk.com/2007/11/28/hello-allah ] was rejected by them. I can understand why but I would argue it is fair use / parody. However someone noticed the design and post it on Pline and as a result I got 500 new visitors. How many would of brought the T-shirt? From past experience only one or two but this sort of incident must be happening on Cafepress all the time.

    Cafepress also have an odd attitude to Nazi symbolism. You can find t-shirts supporting or attacking just about every political, moral and religious view on Cafepress but not racism. Images of Hitler are allowed but images including the swastika are not.

    I found this out when I used a swastika in a design of a surreal sweet ad [ http://poosk.com/2007/11/08/gummicons/ ] but their checking method appears to be very hit & miss as they haven’t stopped this one [ http://poosk.com/2008/01/15/what-would-nazis-do/ ].

    Cafepress’ attitude is understandable. It doesn’t want to be features on Oprah for selling white-supremacist t-shirts. But by poorly filtering designs out on an arbitrary basis that has no relation to the law of copyright or freedom of speech I think they are making the situation worse. If something does slip through and CafePress get sued then they will have no defense. If they stuck by principal of anything goes as long it isn’t a straight copy of someone else’s design then they would be on a better legal footing and a lot more successful commercially.

  7. Chris Says:

    The Fuct ford logo hat is clearly protected by Hustler Magazine v. Falwell as parody.

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