Hello,

I'll tie this to MINI in a sec... Please hang with me...

Volkswagen has a reputation for shutting down the websites of VW enthusiasts for "misusing" their registered trademarks... and they claim A LOT OF THEM. My website has gone untouched so far... nine years and counting. I'm careful with what I post there. I refuse to register as an "authorized enthusiast." Doing so would only serve to identify myself as one who needs policing. And my website receives thousands of visitors a month and has been credited for many decisions to give VW diesel technology a try. But a recent cease and desist I received over a calendar has my dander up a bit.

I recognize why VW would have an issue with me producing a calendar at CafePress which features photos of friends' VWs. Although *I* do not make a profit on the calendars, CafePress does; and does so by producing calendars which have VW trademarks in the photos in the form of grill badges. Okay, I get it! But, even when I offered to remove the badges from the photos, something I can do VERY tastefully, VW attorneys claim that the mere shape, outline, or cararcture of a VW product is a trademark and subject to protection. This is true even on a personal website that sells no product. WHAT? So even with all VW trademarks removed from my website, I'm still violating VW trademark rights because I have photos of MY car there?

Here is their reference:

Quote:

Trade dress is a trademark that is protectable under the federal trademark law. See, e.g., Liquid Glass Enters., Inc., v. Porsche AG, 8 F. Supp. 2d 398, 402 (D.N.J. 1998) (enjoining the use of images of the Porsche 911 automobile on defendant’s products and packaging); Volkswagen AG v. Rickard, 492 F.2d 474 (5th Cir. 1974) (affirming injunction barring, among other things, use of “any silhouette, picture, caricature, or reproduction of the shape or appearance of the Volkswagen sedan” ); Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235, 1240 (6th Cir. 1991)(“[T]he unique exterior design and shape of the Ferrari vehicles are their ‘mark’ or ‘trade dress’ which distinguish the vehicles’ exterior shapes not simply as distinctively attractive designs, but as Ferrari creations”); Chrysler Corp. v. Silva, 118 F.3d 56, 58-59 (1st Cir. 1997) (trade dress of Dodge Viper protectable).

My tie to MINI? I want to buy one. And I'll likely host a website to pay tribute to my car and other MINIs. Does MINIUSA take such a firm stance on trademark infringements? Sure, I won't fault them for protecting their logo. But do they go to the lengths that VW has? Could you imagine if MINIUSA were to go after everyone who's sold a photo of a MINI to its proud owner? I've purchased photos of my VW from those who have shot it at autocross events and even on my TOTD trip.

I can get around crummy service (VW service BLOWS) by working on my own cars. And I can express my displeasure with the way VW "thanks" its enthusiasts by spending my $30,000 at a MINI dealer instead (as well as killing VW sales that may be happening as a result of my website). But am I going to have the same issues with MINI? Do all of the car companies stink? Or does VW's practice seem a tad over the top? The last trademark topic I could find here was from 2003. So it seems promising...

Thanks for hearing me out...

Scott

 

You can check out this fairly recent thread and keep up on the outcome...

https://www.northamericanmotoring.co...-property.html

Welcome to NAM.

 

I'm surprised they haven't gone after all the rap musicians wearing a heavy gold VW logo on a chain around the neck. Seriously. Why haven't they been out harassing them when the VW logo appears on a music video?

 

Partsman -

Your link is broken. But it'll work if you add an "L" at the end. Good read... and thanks! It looks like no one is safe from overprotection of brand image. It's discouraging because I really want to love a MINI. I'm sure I'll still get one and love it. But now I know I won't lift a finger to perpetuate brand loyalty. I suspect I'll debadge any car I get my hands on.

Thanks Again,

Scott

 

You're welcome and I fixed the link.

 

The big issue here is BMW having to defend the trademark. As was previously mentioned, they have to defend the use of their trademark. If they don't, regardless of how big or small the vendor is, that opens a legal loophole. If they do not shut down EVERY vendor using their trademarks that has not licensed the trademark from them, then any vendor can argue in court that they are being discriminated against, because the company is allowing other vendors to use the trademark without licensing. Its actually very simple when you look at it. I'm not saying its right or wrong, but that's the way it works in the USA and has been this way since the 1950's.

If you've ever gone through the process of registering a trademark, you are aware of how daunting a task it is.

If you are a non-profit generally they will allow you to use logos, trademarks, but here again, you have to make sure you get their permission. Posting a photograph online is not a problem providing you are not making a profit and is for personal use. If you are hosting a car show and use a picture of the car on a poster and charging admission and you keep some of the money, you are making a profit.

Alot of forums have gotten shutdown by Ford, GM, Yamaha, Honda because they ask for donations to keep the forum running. Again, this is an issue of proving that they are not making a profit.

The reason that companies are now trademarking likenesses is because so many people have been using pictures of cars and photoshopping out the logo's to get around the trademark thing. Everyone knows what a Viper looks like, but by removing the logo they get around it. Its not always the big companies that are at fault here, we also have people who don't want to play by the rules too.

 

I really do not understand this action by the car companys. whatever happened to the old saw "any publicity"?

How can it harm a mfr for someone to post a pic of his car and tell the world "this is my car and I love it?"

Are car mfrs so pressed for money that allowing someone else to make a buck off publicizing their product somehow detracts from their bottom line? I don't see how..........

This whole thing sucks, IMHO.