Ford Responds: Car Owners Are *Not* Pirates (They Just Can’t Sell Merch With Our Logos On)
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:
“Weâ€™ve been watching this discussion with interest and Iâ€™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 Clubâ€™s calendar) to everyoneâ€™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 Fordâ€™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 â€œcease and desistâ€ 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 donâ€™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.
Iâ€™m looking forward to purchasing a copy to hang in the garage next to my Mustang (even if mine isnâ€™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.