Legals issues for MCO, businesses with MINI in their names,
6th Gear
Joined: Oct 2002
Posts: 1,731
Likes: 0
From: Anaheim, CA
I just sent a message to one of the writers at Automobile Magazine that I know. I will relay any response I get.
One of the Editors at that publication, Jamie Kitman, is a happy MCS owner. IIRC, he ordered it after only haven driven a Cooper. An MCS is currently part of their Four Season's Test evaluation.
We're trying to help you Mark any way we can. Keep strong.
One of the Editors at that publication, Jamie Kitman, is a happy MCS owner. IIRC, he ordered it after only haven driven a Cooper. An MCS is currently part of their Four Season's Test evaluation.
We're trying to help you Mark any way we can. Keep strong.
2nd Gear
Joined: Apr 2003
Posts: 57
Likes: 0
I guess this is the place for a me too post. I am not very happy that mini is doing this. I suppose that it is because they have no control over this site. Owners can come here, say anything, and they have no control over what gets or stays posted. I don't go on there site anymore as they do monitor and remove posts they do not like.
Not a lawyer but how can they say that this site is a violation of anything? Look at all of the other enthusiast sites out there for other products. I know that 2600 magazine fought off a legal battle with GM over a web site.
Here is what I would do
1. Contact several major law offices, this is the kind of case they might fight on the cheap. You could get lots of exposure as a firm and free news coverage, you just can't buy this kind of advertising for a firm.
2. Create a membership to create a legal defense fund. Raise money.
3, Register the site as a non profit corporation so they are fighting the site and not people.
3. Tell BMW to go f*** themselves. No deals, no BMW oversite, no nothing
Not a lawyer but how can they say that this site is a violation of anything? Look at all of the other enthusiast sites out there for other products. I know that 2600 magazine fought off a legal battle with GM over a web site.
Here is what I would do
1. Contact several major law offices, this is the kind of case they might fight on the cheap. You could get lots of exposure as a firm and free news coverage, you just can't buy this kind of advertising for a firm.
2. Create a membership to create a legal defense fund. Raise money.
3, Register the site as a non profit corporation so they are fighting the site and not people.
3. Tell BMW to go f*** themselves. No deals, no BMW oversite, no nothing
4th Gear
Joined: Feb 2003
Posts: 595
Likes: 0
From: Detroit
The problem is, the owner of this site hopes to profit from this URL. This is NOT a non-profit organization (NPO) and is not set up as such. This endeavour, from the get go, was established as a money-making organization. Somebody correct me if I'm wrong here, but I'm pretty sure MCO is not a NPO.
MCO is Mark's full-time-paying-job, so Stove is correct. Technically, MCO is using the MINI name for profit without authorization from MINIUSA, hence the legal stuff.
---> Mark, what are the best potentials for a new site name?
---> Mark, what are the best potentials for a new site name?
5th Gear
Joined: Jan 2003
Posts: 851
Likes: 0
From: Livermore, CA.
>>
>>I know of one online business that although they aren't using MINI in their domain name, they owned other domains with MINI (that they weren't using) and have been asked to give them up. They also had to remove some of their online products as requested by BMW.
>>
Care to share the name of that online business and the products they were asked to remove ?
>>I know of one online business that although they aren't using MINI in their domain name, they owned other domains with MINI (that they weren't using) and have been asked to give them up. They also had to remove some of their online products as requested by BMW.
>>
Care to share the name of that online business and the products they were asked to remove ?
6th Gear
Joined: Dec 2002
Posts: 2,010
Likes: 0
From: Austin,Texas
>>
>>Actually Stovepipe, if the name cannot have any reference to MINIs or Coopers in it, and the site cannot reference MINIs or Coopers, it will be much more difficult for newbies to find. THAT's how it would adversely affect the enthusiast community. Most of us who are already here will undoubtedly stay. But getting new members will be that much more difficult.
>>
>>
I hate to disagree, but none of us typed in this url to find this place. I did a Google search on the words MINI Cooper and found 100s of sites, one of which was this one. The Domain name can be "DriveFast.com "the North American MINI enthusiasts community " and you search for sites about MINIs and BAM - there you are.
I belong to other forums and each refer people to each other. We mention MINI2 here and they mention MCO over there. It would take less than 24 hours for everyone in the MINI community to know the new name and be saying "see you on DriveFast" or whatever the name is.... then when people search Google it would find "DriveFast" for them and they'd be here too. Get a few spots on TechTV talking about how the name changed and you've got even more people knowing the name and coming here.
4th Gear
Joined: Mar 2003
Posts: 405
Likes: 1
From: Florida
There seems to be a huge gap between their claim that they only want to protect the MINI trademark and the demand that no domain uses the letters MINI in it. I quickly found 7 aftermarket suppliers with MINI in their domain name. Does BMW really want all of these to change their sites too? Have any of these sites been contacted or is BMW just going after the enthusiasts who buy their cars?
4th Gear
Joined: Jun 2002
Posts: 573
Likes: 0
From: Stroudsburg, PA
I find it most interesting, as I am sure all of us do, that all of the sites affected by this... situation are the ones that are promoting the SPIRIT, the SOUL, as it were, that MINI and it's marketing agents have worked so hard to demonstrate.
The marketing people created something, and it has grown out of their control. Why is that bad as long as it is helping them sell cars? In fact, they are selling more cars and creating more of a brand loyalty, (nay, cult following) and in such an amazingly short time, that I'm surprised the sales executives aren't firebombing the legal staff offices.
I mean, come on! And the fact that this directly affects the aftermarket in such a potentially negative manner is particularly appaling. Is this becasue the aftermarket has outstripped the factory WORKS modifications? Nope. THey are backordered. And I'm willing to bet that most MINI owners are drawn to the car at least in part for the enormous availability of aftermarket parts.
I understand what they are doing from alegal standpoint, and perhaps from a marketing standpoint, but really folks, someone needs to look at the bigger picture and let the sales managers speak! Someone has forgotten the power of the $$.
The MINI has taken on a life of its own... what do they think kept the original Morris cars going for 50 years? Certainly not the Corporate website.
The marketing people created something, and it has grown out of their control. Why is that bad as long as it is helping them sell cars? In fact, they are selling more cars and creating more of a brand loyalty, (nay, cult following) and in such an amazingly short time, that I'm surprised the sales executives aren't firebombing the legal staff offices.
I mean, come on! And the fact that this directly affects the aftermarket in such a potentially negative manner is particularly appaling. Is this becasue the aftermarket has outstripped the factory WORKS modifications? Nope. THey are backordered. And I'm willing to bet that most MINI owners are drawn to the car at least in part for the enormous availability of aftermarket parts.
I understand what they are doing from alegal standpoint, and perhaps from a marketing standpoint, but really folks, someone needs to look at the bigger picture and let the sales managers speak! Someone has forgotten the power of the $$.
The MINI has taken on a life of its own... what do they think kept the original Morris cars going for 50 years? Certainly not the Corporate website.
2nd Gear
Joined: Feb 2003
Posts: 115
Likes: 0
From: Southern California
I have not had a chance to look at all the responses to this so this may have been covered already.
If memory serves me, if a name, be it trade or otherwise, has been used in the public for some time without it being litigated for trade issues, doesn't it just fall out of the trade issue altogether? How long have sites been around regarding the original MINI Cooper and MINI that have not had to deal with this issue?
If these sites have been allowed to exist without it being an issue until just recently, then a reasonable judge/jury will already see that the use has been non-harmful to MINI in any way, that the use of the trade name has been diluted over the years and that there is no chance to mistake the "Official" MINI Site. Also, the "look and feel" of the non-official sites is quite different from the "official" site and the chance of mistaking one for another is a stretch. Finally, how many of those sites that currently use the word mini in their URL are sites representing parts suppliers for the original MINI and how long have they been around?
Of course, for you to win something like this would require you to get your own 800lb. gorilla to throw around some weight and do the legal voo-doo required to put theirs back in it's cage.
Let's hope they get a little common-sense here shortly.
OBTW, I too received the canned response to my e-mail of concern. Very original . . .
If memory serves me, if a name, be it trade or otherwise, has been used in the public for some time without it being litigated for trade issues, doesn't it just fall out of the trade issue altogether? How long have sites been around regarding the original MINI Cooper and MINI that have not had to deal with this issue?
If these sites have been allowed to exist without it being an issue until just recently, then a reasonable judge/jury will already see that the use has been non-harmful to MINI in any way, that the use of the trade name has been diluted over the years and that there is no chance to mistake the "Official" MINI Site. Also, the "look and feel" of the non-official sites is quite different from the "official" site and the chance of mistaking one for another is a stretch. Finally, how many of those sites that currently use the word mini in their URL are sites representing parts suppliers for the original MINI and how long have they been around?
Of course, for you to win something like this would require you to get your own 800lb. gorilla to throw around some weight and do the legal voo-doo required to put theirs back in it's cage.
Let's hope they get a little common-sense here shortly.
OBTW, I too received the canned response to my e-mail of concern. Very original . . .
6th Gear
Joined: Oct 2002
Posts: 1,265
Likes: 0
From: Dunedin, FL, USA
Figured I'd post this reply from a message I sent BMWNA and to MINI USA customer relations.
My owner's lounge comments that she referes to in the reply are HERE.
---------------------------------------------
Hi Vince, thanks for your e-mail. I read your journal entry and
appreciate you sending the link to us. On behalf of MINI USA, thank
you for your comments regarding this issue, and we are sorry to hear of your concerns.
With reference to our trademark protection, we have no wish to prevent
independent businesses from trading. However, just like any other
business, MINI USA is duty bound to defend its MINI trademarks,
and also needs to ensure that consumers clearly understand when
they are dealing with official MINI outlets.
Also, we wish to make clear that we do distinguish between enthusiast
and commercial websites. We welcome enthusiast-only websites, and
they are free to use the MINI wordmark in their domain names, tradenames
and otherwise, as long as they are clear that the sites are independent of MINI.
To ensure our trademarks are protected, we ask that third parties
engaged in commercial MINI-related activities make clear that they
are not officially licensed, and limit themselves to “fair use”
textural references to MINI in their literature. For example, a
commercial website may not use MINI in its domain name or tradename,
nor may it make trademark use of the MINI mark. It must ensure there
is no suggestion that it is an authorized, licensed, sponsored or
affiliated MINI portal. Neither enthusiast nor commercial sites
may use the MINI logo or any imitation thereof without permission.
We hope that you understand our obligation to protect the MINI trademarks.
Again, thank you for your comments and concerns.
Sincerely,
Emily Hatley
MINI Division
866-ASK-MINI
_________________
[img]albums/album25/ama.gif[/img]VinceAndJessica.com
Alta pulley, Stebro exhaust, Pipercross intake, Progress rear anti-sway bar.
My owner's lounge comments that she referes to in the reply are HERE.
---------------------------------------------
Hi Vince, thanks for your e-mail. I read your journal entry and
appreciate you sending the link to us. On behalf of MINI USA, thank
you for your comments regarding this issue, and we are sorry to hear of your concerns.
With reference to our trademark protection, we have no wish to prevent
independent businesses from trading. However, just like any other
business, MINI USA is duty bound to defend its MINI trademarks,
and also needs to ensure that consumers clearly understand when
they are dealing with official MINI outlets.
Also, we wish to make clear that we do distinguish between enthusiast
and commercial websites. We welcome enthusiast-only websites, and
they are free to use the MINI wordmark in their domain names, tradenames
and otherwise, as long as they are clear that the sites are independent of MINI.
To ensure our trademarks are protected, we ask that third parties
engaged in commercial MINI-related activities make clear that they
are not officially licensed, and limit themselves to “fair use”
textural references to MINI in their literature. For example, a
commercial website may not use MINI in its domain name or tradename,
nor may it make trademark use of the MINI mark. It must ensure there
is no suggestion that it is an authorized, licensed, sponsored or
affiliated MINI portal. Neither enthusiast nor commercial sites
may use the MINI logo or any imitation thereof without permission.
We hope that you understand our obligation to protect the MINI trademarks.
Again, thank you for your comments and concerns.
Sincerely,
Emily Hatley
MINI Division
866-ASK-MINI
_________________
[img]albums/album25/ama.gif[/img]VinceAndJessica.com
Alta pulley, Stebro exhaust, Pipercross intake, Progress rear anti-sway bar.
Former Vendor
Joined: Dec 2002
Posts: 1,026
Likes: 0
From: Olympia, WA
The Mini Register has posted a brief write on their editorial page.
The Mini Register
Mark, you get more exposure........we are with you all the way
Dave
MINI-Rolls
The Mini Register
Mark, you get more exposure........we are with you all the way
Dave
MINI-Rolls
1st Gear
Joined: May 2003
Posts: 20
Likes: 0
>>I have not had a chance to look at all the responses to this so this may have been covered already.
>>
>>If memory serves me, if a name, be it trade or otherwise, has been used in the public for some time without it being litigated for trade issues, doesn't it just fall out of the trade issue altogether? How long have sites been around regarding the original MINI Cooper and MINI that have not had to deal with this issue?
>>
>>If these sites have been allowed to exist without it being an issue until just recently, then a reasonable judge/jury will already see that the use has been non-harmful to MINI in any way, that the use of the trade name has been diluted over the years and that there is no chance to mistake the "Official" MINI Site. Also, the "look and feel" of the non-official sites is quite different from the "official" site and the chance of mistaking one for another is a stretch. Finally, how many of those sites that currently use the word mini in their URL are sites representing parts suppliers for the original MINI and how long have they been around?
>>
>>Of course, for you to win something like this would require you to get your own 800lb. gorilla to throw around some weight and do the legal voo-doo required to put theirs back in it's cage.
>>
>>Let's hope they get a little common-sense here shortly.
>>
>>OBTW, I too received the canned response to my e-mail of concern. Very original . . .
Clearly a good point with respect to the historical use of Mini. By the way, I don't see anything on the home page here indicating this site is specifically relegated to discussions of the New Mini.
I haven't read all 26 pages of posts, so I'll add a few comments/questions in ignorance of all that has come before.
Probably a stupid question, but hopefully there is a lawyer out there who might be able to answer this. In what circumstances would a trademark infringe on a copyright? I ask the question becuase when searching various trademarks and copyrights pertaining to the Mini and Mini Cooper, I found three works from the mid 80's entitled Mini Cooper; a book, an article and a sculpture. So the followup question would be, does the Mini Cooper trademark claimed by BMW infringe the copywrites of these works?
Another one for the lawyers. Is it too late to file a petiton with the Trademark Office to have BMW's Mini Cooper trademark vacated. I'm sure we can come up with some rational based on the historical use of Mini and Mini Cooper.
An lastly, would it be worth the effort to file a grievance with the FTC against BMW/MINIUSA for anticompetitive practices.
P.S. No trademark application has been filed for MINIUSA
>>
>>If memory serves me, if a name, be it trade or otherwise, has been used in the public for some time without it being litigated for trade issues, doesn't it just fall out of the trade issue altogether? How long have sites been around regarding the original MINI Cooper and MINI that have not had to deal with this issue?
>>
>>If these sites have been allowed to exist without it being an issue until just recently, then a reasonable judge/jury will already see that the use has been non-harmful to MINI in any way, that the use of the trade name has been diluted over the years and that there is no chance to mistake the "Official" MINI Site. Also, the "look and feel" of the non-official sites is quite different from the "official" site and the chance of mistaking one for another is a stretch. Finally, how many of those sites that currently use the word mini in their URL are sites representing parts suppliers for the original MINI and how long have they been around?
>>
>>Of course, for you to win something like this would require you to get your own 800lb. gorilla to throw around some weight and do the legal voo-doo required to put theirs back in it's cage.
>>
>>Let's hope they get a little common-sense here shortly.
>>
>>OBTW, I too received the canned response to my e-mail of concern. Very original . . .
Clearly a good point with respect to the historical use of Mini. By the way, I don't see anything on the home page here indicating this site is specifically relegated to discussions of the New Mini.
I haven't read all 26 pages of posts, so I'll add a few comments/questions in ignorance of all that has come before.
Probably a stupid question, but hopefully there is a lawyer out there who might be able to answer this. In what circumstances would a trademark infringe on a copyright? I ask the question becuase when searching various trademarks and copyrights pertaining to the Mini and Mini Cooper, I found three works from the mid 80's entitled Mini Cooper; a book, an article and a sculpture. So the followup question would be, does the Mini Cooper trademark claimed by BMW infringe the copywrites of these works?
Another one for the lawyers. Is it too late to file a petiton with the Trademark Office to have BMW's Mini Cooper trademark vacated. I'm sure we can come up with some rational based on the historical use of Mini and Mini Cooper.
An lastly, would it be worth the effort to file a grievance with the FTC against BMW/MINIUSA for anticompetitive practices.
P.S. No trademark application has been filed for MINIUSA
2nd Gear
Joined: May 2002
Posts: 130
Likes: 0
I was on vacation when this broke and haven't been able to read everything concerning it yet.
Has Mark or anyone contacted the Electronic Frontier Foundation? This seems like the type of issue that they would be concerned about. They helped out 2600 with their legal issues over the fordsucks domain.
Has Mark or anyone contacted the Electronic Frontier Foundation? This seems like the type of issue that they would be concerned about. They helped out 2600 with their legal issues over the fordsucks domain.
2nd Gear
Joined: Jun 2003
Posts: 148
Likes: 0
From: Philadelphia, PA
Hello Everyone,
Another thought on how to help Mark.
I just received a tele-marketing call from MINIUSA (most likely, outsourced to a third-party, but helpful nonetheless) asking about my recent service visit to my dealer.
While I gave my dealership high marks (they don't deserve to be slammed) I made sure to ask whether we could give any comments at the end, that will get back to MINIUSA.
I advised them that I was distressed by what MINIUSA was doing, and taht I have stopped recommending both my MINI and my BMW Motorcycle to anyone who asks, because of this situation.
Have to keep it coming at them from all directions!
Scott
Another thought on how to help Mark.
I just received a tele-marketing call from MINIUSA (most likely, outsourced to a third-party, but helpful nonetheless) asking about my recent service visit to my dealer.
While I gave my dealership high marks (they don't deserve to be slammed) I made sure to ask whether we could give any comments at the end, that will get back to MINIUSA.
I advised them that I was distressed by what MINIUSA was doing, and taht I have stopped recommending both my MINI and my BMW Motorcycle to anyone who asks, because of this situation.
Have to keep it coming at them from all directions!
Scott
4th Gear
Joined: Mar 2003
Posts: 405
Likes: 1
From: Florida
.....
>>
>>To ensure our trademarks are protected, we ask that third parties
>>engaged in commercial MINI-related activities make clear that they
>>are not officially licensed, and limit themselves to “fair use”
>>textural references to MINI in their literature. For example, a
>>commercial website may not use MINI in its domain name or tradename,
>>nor may it make trademark use of the MINI mark. It must ensure there
>>is no suggestion that it is an authorized, licensed, sponsored or
>>affiliated MINI portal.
.....
>>
This is the bit I don't understand ... why do they assume that having MINI in a domain name leads to confusion about independence. There should be no problem if the domain name goes to a site with clear statements about independence. It is this assumption that leads to the rest of the mess we have here.
>>
>>To ensure our trademarks are protected, we ask that third parties
>>engaged in commercial MINI-related activities make clear that they
>>are not officially licensed, and limit themselves to “fair use”
>>textural references to MINI in their literature. For example, a
>>commercial website may not use MINI in its domain name or tradename,
>>nor may it make trademark use of the MINI mark. It must ensure there
>>is no suggestion that it is an authorized, licensed, sponsored or
>>affiliated MINI portal.
.....
>>
This is the bit I don't understand ... why do they assume that having MINI in a domain name leads to confusion about independence. There should be no problem if the domain name goes to a site with clear statements about independence. It is this assumption that leads to the rest of the mess we have here.
Former Vendor
Joined: Sep 2002
Posts: 1,174
Likes: 0
From: Los Angeles
What about http://www.Mini-Fini.com ?
If any site is confusing as to whether it's official MINI or not it's that one. Do they have permission? I'd love to know what they're deal with BMW NA is.
Perhaps the "only available at dealers " clause was the clincher.
If any site is confusing as to whether it's official MINI or not it's that one. Do they have permission? I'd love to know what they're deal with BMW NA is.
Perhaps the "only available at dealers " clause was the clincher.
3rd Gear
Joined: May 2003
Posts: 217
Likes: 0
From: Southern CA
>>What about http://www.Mini-Fini.com ?
>>
>>If any site is confusing as to whether it's official MINI or not it's that one. Do they have permission? I'd love to know what they're deal with BMW NA is.
>>
>>Perhaps the "only available at dealers " clause was the clincher.
>>
>>
MINI-fini.com is in bed with BMW NA/MINI USA, as you've noticed. The question can also be asked as follows:
"Who's pillar mount cup-holder is now an OEM accessory item, sold at your local MINI dealerhip?"
alternately,
"What online presence and/or how much money does BMW NA want from MCO?"
_________________
2003 LY and B MC R81 wheels Looking for stripes and a spoiler because ... they make me go faster, Mom!
>>
>>If any site is confusing as to whether it's official MINI or not it's that one. Do they have permission? I'd love to know what they're deal with BMW NA is.
>>
>>Perhaps the "only available at dealers " clause was the clincher.
>>
>>
MINI-fini.com is in bed with BMW NA/MINI USA, as you've noticed. The question can also be asked as follows:
"Who's pillar mount cup-holder is now an OEM accessory item, sold at your local MINI dealerhip?"
alternately,
"What online presence and/or how much money does BMW NA want from MCO?"
_________________
2003 LY and B MC R81 wheels Looking for stripes and a spoiler because ... they make me go faster, Mom!
6th Gear
Joined: Apr 2003
Posts: 1,706
Likes: 0
From: Tallahassee FL
So, I just moved and haven't had computer access for the last 3 weeks. I got hooked up this morning, came to MCO, and heard about this BS.
This is the stupidest thing MINI/BMW could possibly do. They're sabotaging the most loyal portion of their customer base for a lousy buck. It's nauseating.
The way I see it, this is a clear attempt to disrupt the business of aftermarket competitors to BMW. In other words, buy our $5K Cooper Works package or else. If we can keep people from finding aftermarket suppliers by preventing those businesses from using the words "Mini Cooper" so be it. Automobile manufacturers have caught on to the whole tuning craze (several years late, of course) and they're desperate to get those dollars.
Can you imagine General Motors trying to prevent Corvette clubs from using the word "Corvette"? No, because it would never happen. I don't know what nimrod nitwit jackenheimer is in charge of this campaign over in Englewood Cliffs, NJ, but they belong in the Moron Hall of Fame.
I'd say that's my two cents, but this thread deserves a nickel.
This is the stupidest thing MINI/BMW could possibly do. They're sabotaging the most loyal portion of their customer base for a lousy buck. It's nauseating.
The way I see it, this is a clear attempt to disrupt the business of aftermarket competitors to BMW. In other words, buy our $5K Cooper Works package or else. If we can keep people from finding aftermarket suppliers by preventing those businesses from using the words "Mini Cooper" so be it. Automobile manufacturers have caught on to the whole tuning craze (several years late, of course) and they're desperate to get those dollars.
Can you imagine General Motors trying to prevent Corvette clubs from using the word "Corvette"? No, because it would never happen. I don't know what nimrod nitwit jackenheimer is in charge of this campaign over in Englewood Cliffs, NJ, but they belong in the Moron Hall of Fame.
I'd say that's my two cents, but this thread deserves a nickel.
