Jalopnik has the latest in the ongoing “Ford sues everybody over use of its logo” story. Having already sued the Black Mustang Club (in a move that PR Squared called a reminder that “customers are in control of the brand”) and the Calgary Stampeders (whose stampeding horse was trademarked twenty years before the Mustang) Ford’s lawyer are continuing their reign of pathos. Therangerstation.com and nearly every website with “mustang” in the url have been targeted by Ford’s lawyers, demanding “the relinquishment of all Ford trademarks including domain names, banners, signs and merchandise as well as a restitution payment of $5000 by December 19th, 2008.” The huge irony in this is, of course, that Ford doesn’t really even own its logo, having mortgaged the blue oval during its $23b borrowing spree. Meanwhile, Mustang Evolution appears to have contacted Ford’s Scott Monty who reveals that some sites may have been selling “unauthorized Ford decals.” Still no word on whether or not it’s illegal to have a ford product name in your domain name.
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Most don’t own their house or car, but that doesn’t stop people from saying they “own it.”
I actually do own a Ford logo…it is on my car…sitting in the drive way…broken.
Bold Moves.
I wonder how much of Ford’s money that they don’t have is being wasted on this petty issue?
re: “I wonder how much of Ford’s money that they don’t have is being wasted on this petty issue?”
I’d have to guess a few hundred round trip flights from Detroit to Washington via private jet….
Having a mortgage doesn’t mean you don’t “own” the property. It does put certain limitations on what you can do with it, but you’re the “owner” as long as you fulfill the obligations that you willingly undertook.
Ford still owns their logo. They just used it as collateral for a loan. If they default on the loan, then it may transfer to the creditor, but who would want it, really?
One of the more unfortunate aspects of trademark law is that Ford does actually have to do things like this.
Once you take out a trademark, you have to defend it, lest it become genericized. Of course, the fine line between defending your trademark and being a dick depends upon the trademark lawyers in question, and how much of their brain they’re using, if any.
The Calgary Stampeders suit is probably in the “dick” category.
I think any lawyer will tell you this is hardly a petty issue. Either you protect your trademark, brand or logo assiduously or you lose it–it becomes generic, like band-aid, kleenex, sheetrock, xeroxing and hundreds of others that are now in the public domain. It’s why Porsche is crazed about people doing so much as putting its badge even on Porsche-club (PCA excepted, since they’re a quasi-factory arm) napkins, much less floormats.
Having a mortgage doesn’t mean you don’t “own” the property. It does put certain limitations on what you can do with it, but you’re the “owner” as long as you fulfill the obligations that you willingly undertook.
Its been a while, but wouldnt Ford legally be the “equitable” owner and the creditors an owner of a “contingent interest”.
Right, Stephan Wilkinson,
They can’t let people write their brand names. And they shouldn’t let people use them too much in conversation either. Probably better to outlaw the use of all brand names in writing and speech.
For Ford’s sake, I suggest we now start calling them “The Company Which Must Not Be Named” and refer to the Mustang as “You-Know-Which-Car.”
Ford even had the temerity to go after old Jag enthusiasts with cease & desist letters. Thank gawd they sold it off to Tata, who has the good sense to understand and reward loyalty, rather than punish it!
Idiots.
–chuck
@psarhjinian, Stephan Wilkinson,
I had this aspect of trademark law explained to me recently. It makes total sense. I wonder if the defendants in these cases are aware of this.
In a sense, the Ford script logo was never Ford’s. It was the idea of C. H. Wills, the man who deserves the most credit for the Model T.
If Wills had possessed the farsightedness of Bill Gates, he would have just licensed the logo to Ford Motor Company and retained all other rights to it.
You’re flat out wrong on this one Edward.
Ford put the logo up as collateral for the loans; they own it unless they default on those loans.
I wonder how much profit Ford makes on a sale of a Mustang and multiply that by the number of members at the enthusiast websites who buy and promote Ford products. Now let’s compare that to the amount of money they make by “defending” their trademark. Which do you think is bigger?
It’s never a smart mmove to piss off the people who buy your products, promote your products, and defend your sorry a– company to others.
Well, they do have to protect the trademark. Asking 5g in payments for use is kind of bull though, and unfortunately for Ford the Mustang is still the Mustang and has not achieved the level of ubiquity that gives Xerox lawyers ulcers.
“Right, Stephan Wilkinson,
They can’t let people write their brand names. And they shouldn’t let people use them too much in conversation either. Probably better to outlaw the use of all brand names in writing and speech.”
Cute, but hardly the same thing. There is a difference, actually, between saying “Ford” and using the blue-oval logo on your letterhead.
These websites aren’t threats, they’re brand ambassadors as Lumbergh21 said above. Given Ford’s less-than-favorable position among car buyers and taxpayers in general, Ford should be identifying these site owners and sending them their sincere thanks instad of cease and desist orders.
This is Marketing 101 stuff, but this is also Detroit we’re talking about…
I had this aspect of trademark law explained to me recently. It makes total sense. I wonder if the defendants in these cases are aware of this.
They are. Trademark trials are a form of guaranteed employment for trademark lawyers on either side of litigation. Unlike patents and copyright, trademarks have to be actively (some might say proactively) defended. This pretty much guarantees, if not actually institutionalizes, this kind of nonsense.
It’s a bit of a necessary evil. Patent or copyright are much more black and white: either you’re infringing or your not, and they only get ugly when you get into disputes of interpretation, which are rare, or fair use (which is very strongly defined for copyright and inapplicable to patents). By comparison, every trademark case is one of interpretation, and “fair use” is very much up for debate.
The only way around this is to effectively eliminate trademark law in favour of copyrights. You can do it, but you damage the ability to market your brand, and you make copyright management into a clerical nightmare.
Again, this is something Ford has to do as part of intellectual property due diligence, or risk a future court invalidating the trademark. I think it’s unneccessary, legally dubious and a make-work project by lawyers for lawyers, but I honestly can’t think of another way to do it without invalidating IP trademark law entirely.
Stephan Wilkinson,They can’t let people write their brand names. And they shouldn’t let people use them too much in conversation either. Probably better to outlaw the use of all brand names in writing and speech.”
Cute, but hardly the same thing. There is a difference, actually, between saying “Ford” and using the blue-oval logo on your letterhead.Thanks, I was hoping it would come out cute.
The real point is that use of a name – even ubiquitous use – doesn’t necessarily lead to genericide.
If the “Mustang Club” was really a fan club for all pony cars, that might threaten to make it generic. (Like Kleenex, which now refers to all facial tissue.)
A club all about the Ford Mustang can hardly call itself something unrelated and is in no way diluting the Mustang brand. In fact it probably strengthens it by adding to an image of popularity and fan loyalty.
That, of course, is what Ford is failing to understand.
Now this is funny. I wonder if Fords rights do also reach into the European Union ragarding the “Mustang” brand.
Just take a look here:
http://www.mustang.de/
In Northwestern Washington State you will find the Olympic mountain range. If you think your “Olympic Dry Cleaners” store at one of the gateways to this national park is immune from a barrage of threatening letters from the International Olympic Committee, think again.
Best just to offer the hugely court-friendly solution of posting the disclaimer “Not affiliated with the Olympic Games.” on the door and consider the matter dropped.
In the same vein, Ford management may find it is easier for those using the term “mustang” to keep doing so then their boneheaded make-work lawyers are letting on.
I think any lawyer will tell you this is hardly a petty issue.
True, but lawyers tend to suck at marketing and brand building.
Companies benefit from having loyal consumers who evangelize their products for them. As it bleeds cash and stares at the abyss, the last thing that Ford needs is to beat up its fans with demands for payment and threats of litigation.
If Ford was smart, they would work with the fans to promote their clubs and bolster their support for the brands and the badges.
It’s hard to cheer them on through these tough times if they are going to be move so boldly against their own interests. I should have billed them $300/hour for this advice instead of providing it online for free, then maybe they would appreciate it.
I think the real issue here is not what is legal or illegal, required or possible, etc. under existing law.
The real issue is that something is broken in our so-called intellectual property system.
Maybe this is or maybe this isn’t a boneheaded move by Ford in today’s IP climate.
What’s boneheaded for sure is that IP as we deal with it now causes (or “requires,” if you like) companies to alienate fans and shut down free advertising.
So, what stops Ford from letting the fan clubs use the trademark pro bono? Make them sign a waiver that they’re aware of the legal technicalities, and then be done with it. Even an idiot could see that this kind of fair use is good for the company and actually strenghtening the brand. Or are they all idiots? You don’t have to take people to court, or even threatening to do so, every single time, just because you can. Somewhere, someone could actually pick up a phone and call someone else and say: “Hey! These guys are on our side. Make the lawyers understand and get them to sort it out”. Why, oh why, are this world full of idiots?
I’ve published sites with automotive trademarks in the domain names. It really helps with Search Engine Optimization if the search term is in the domain name. I remember asking Chevy if they minded me hitchhiking on their dime, they said that as long as the site wasn’t hostile to Chevy or making money off the trademark directly, they didn’t mind. That’s sufficient legal protection in terms of due diligence to avoid genericide.
Now, Now.
You really don’t OWN your home until the mortgage is paid off. Until then, the bank or the bank and the home user own the home jointly. Glad we have that straight. Seems 2/3rds of American households that have a mortgage don’t quite understand what a clear title means. Same for those who think they OWN a car that still have a loan on it. This is a huge point and it is all about control over the asset. This also seperates the pretenders from the players or as those in Texas might say “All Hat and No Cattle” for the pretenders.
Next topic.
Perhaps Ford could play the Prince game. Could they become something like “The car company formerly known as Ford”.
Happy Hump Day!
@gary numan
You don’t know what you’re talking about when it comes to this situation.
Ford owns the Ford trademark and logo. They did put them up as collateral for loans earlier this year, but will not relinquish the ownership of those trademarks unless they default on those loans. Until then, Ford most definitely DOES own its logo and trademark.
Well if China takes over, at least we won’t have to worry about this kind of BS anymore.
psarhjinian,
First off IANAL, but I do hold a US patent (4,253,475) and numerous trademarks and copyrighted designs, so IP is a personal interest.
The problem as you pointed out is that patents and copyrights are either infringed upon on not. Trademarks are protected with the “likelihood of confusion” standard, so it’s a very gray area. Add the insistence of courts on due diligence and you end up with a lot of cease and desist letters.
I do embroidery and get asked to violate trademarks frequently, which I generally don’t do, but a guy who owns a 25th Anniversary 1978 Corvette didn’t just buy a license to use the car like with software, he bought a physical item and he gets some rights to that item’s image or publicity rights. After all, it’s his car, not GM’s. So while I won’t generally reproduce trademarks, I would embroider the 25th anniversary logo on his upholstery.
Generally if I’m asked to do Ford’s blue oval logo, I decline and offer to do a picture of their car on the back of the jacket and a blue oval on the left chest, with the owner’s name in a Ford script. Only if his name is Fred could Ford argue likelihood of confusion, and then they’d have to argue around the parody and satire provisions of trademark law. Sometimes the IP owner can increase protection by registering the mark for other uses, for example apparel. You can’t use the parody exception to compete directly with a trademark holder. So even though the original registration may have been for cars, if they register it for apparel, I risk a suit if I put a parody of their mark on apparel.
I have gotten a couple of cease and desist type threats over my original artwork, embroidery designs of Big 3 cars. I told both Chrysler and GM that I’d be happy to hold up one of my shirts and a copy of Car & Driver and let 12 Americans decide which one isn’t a picture of a car. Prosecuting me and not Car & Driver puts them in a bind vis a vis due diligence. I’m a publisher as much as a magazine or a web site is. The Bayeaux Tapestry (actually a very large embroidery) predates the Gutenberg Bible.
Intellectual property rights are not absolute. I can stand on the sidewalk/easement adjacent to your property and sell things to your customers all day long without trespassing on any of your property or commercial rights. While lawyers may want to extend those property rights into the public domain or ever worse, other’s own property rights, the fact remains that as long as I’m not really trespassing, they can pound sand.
Of course the ultimate determinant in most IP cases is who has the most money to pay lawyers.
Still no word on whether or not it’s illegal to have a ford product name in your domain name.
How else is an on-line tribute to the Mustang Ranch supposed to work?
http://mustangranch.org/forum/index.php
@Gary:
You really don’t OWN your home until the mortgage is paid off. Until then, the bank or the bank and the home user own the home jointly.
Untrue, at least in the United States. From the late Tanta at Calculated Risk:
First of all, we need to understand what a foreclosure really is. We talk about lenders “taking back” a property at a foreclosure sale, but that’s misleading. Foreclosure is the forced sale of a property owned by the debtor in order to satisfy the debt(s) secured by the property. The owner of the property, on or before the date the mortgage loan is made, is the borrower. The borrower continues to be the owner of the property until that property is sold one way or another.
A secured loan grants a security interest in the property. It does not make a lender a joint owner.
http://calculatedrisk.blogspot.com/2007/04/foreclosure-sales-and-reo-for-ubernerds.html
Again the blogsphere has failed.
Let’s do a little thinking back to when Black Mustang was asked to stop selling. A response from Ford was finally posted to clear up a lot of the misinformation spread by the blogsphere like wildfire.
Black Mustang Fiasco
Basically it says that Ford did not send a cease and desist letter to the club, they did not try and sue them, they did not try and do anything to them – all dealings were through Cafe Press. And while they have no problem with users sharing pictures of cars, they do have a problem with people profiting from their trademarks.
And that’s exactly what the Ranger site was doing.
The basic rule is that if you don’t defend your trademarks proving they’ve been violated becomes more difficult (you let xxx make money off your trademark, why not this company). The legalese of trademark less is less defined than, say, patent, but it is no less important.
If they were selling shirts to raise money for the club, that’s one thing, but if they were selling shirts to profit the people who run the site, that’s illegal without Ford’s consent. No other way around it. And even if enthusiast sites use Ford’s logo for profit with Ford’s knowledge, Ford cannot control the actions they take while brandishing that logo (and that hurts your corporate trademarks and brands).
While everyone jumps on Ford’s back because of course they are the devil, they’ve completely ignored the arrest of the administrator of a Civic site when Honda pressed charges and Toyota’s move to block the sale of wallpaper with owners’ vehicles on it claiming they owned the rights to the wallpaper (computer variety).
All companies must defend their trademarks or risk losing them. There’s not much Ford *can* do if someone is using their trademark for-profit. They have to prosecute it.
This is not some petty attempt to get money. It’s an attempt to keep their trademarks under control. Ford has had a lot problems with trademark disputes in the last decade, and now they are getting control of things. This is no different than what we see out of Honda and Toyota regularly. If you want to profit off a trademark, you MUST get corporate permission.
As far as owning their logo, the contention that they don’t is completely misinformed. If you are mortgaged to the gills on your house (like most Americans), you don’t technically “own” your house. But does that mean you let anyone come in and steal objects? Just let people vandal it? Just let people walk in and use your bathroom? Same thing. It’s Ford’s logo until they default – just like the house is your’s until you default and the bank reposesses it.
Thank you. That’s what I tried to suggest three dozen posts ago.
So TTAC has the guts, huh?
Southern Methodist University has had the same logo–albeit facing the opposite direction–since before the Ford Mustang.
Nice way to shoot yourself in the foot, Ford. Put yourself squarely in the same group with musicians who sue their fans and software companies who punish their customers. Quality, indeed.