| Author | Message | ||
| wm hart (Whart)
Intermediate Member Username: Whart Post Number: 1567 Registered: 12-2001 |
Taek: I think it would be better to do this offline, particularly if we are going to get into specifics regarding particular TMs, since i would have to make sure i am not conflicted, and i would think you would want privilege to attach to any advice you get, which would not be the case in these postings, on an open forum. However, to close out the topic publicly, there is some judgement involved in making these determinations. For example, there is no per se rule to prohibit your use of photos of products on which you have done work. But, if a car detailer decided to use a photo of a Ferrari with a prominent focus on their logo, as a "vehicle" to depict what a nice job he does on the paint, you can assume that the prominence of the Ferrari mark will figure into the calculus in deciding whether he is unfairly trading on another's business goodwill to gain his own. Just email me at [email protected] if you want to take it further. I will be dealing with movers tomorrow, so i won't be responding instantaneously. Regards. | ||
| Taek-Ho Kwon (Stickanddice)
Intermediate Member Username: Stickanddice Post Number: 1832 Registered: 11-2002 |
Thanks Bill, >>Using their name conspicuously or using their logo will be presumed to be crossing the line.<< That's pretty crummy though. So if I do over 300k worth of work on a yacht, I can't take a picture of the thing because it has the PJ logo on the front? Our products for the most part are invisible to the eye because they are painted over or hidden in an engine compartment or something (although we have enough requests for bling bling stuff to probably have bare carbon showing soon). That friggin' sucks! Now lets say the customer wants everyone to know he spent a boatload (no pun intended) of money on his boat and wants our own badging on his vessel. Would it be illegal to do that? Would I have to remove the PJ logos and replace them with mine or would that too be out of line? I know that in cars I constantly see people taking out BMW badges and replacing them with Alpina badges or Benz with RennTech badges. I have seen both badges on a car too though. What's the deal with that. By the way, if you feel I'm asking for too much advice and need to handle this a little more professionally let me know and I'll take care of this offline. Cheers | ||
| wm hart (Whart)
Intermediate Member Username: Whart Post Number: 1566 Registered: 12-2001 |
The basic principles are similar, but each country's law is its own; it conforms to certain international minimum standards of protection based on treaty obligations. The main difference is probably in the TM area, where, in a number of countries, there is no such thing as a right under common law, or a right acquired by use and recognition. In other words, even famous trademarks can be denied protection in certain countries unless and until they are registered in that country. Thus, the same sort of nonsense that occurred a few years ago with domain names was a usual occurence with well known trademarks in various countries; somebody would obtain a "shelf" registration for a well known mark and try to extort money from the real owner of the mark if and when they tried to register in that country. As to copyright laws (which have some limited applicability here, see my earlier posting), the US is probably one of the worst in terms of imposing formalities on authors as a predicate to protection. In other words, most countries protect copyrights without a thought, without alot of procedural jazz (very few countries have registration systems for copyrights, as the US does), and these laws also exist on a country by country basis, although each member country of a particular treaty (and there are several) must conform to certain minimum standards of protection and provide like protection ("national treatment") to authors and copyright owners from other countries that are also members of that particular treaty. Got it? Ok, now lets turn to your practical question and get away from the theory. The rules are pretty much what i described earlier and what Jack illustrated in his examples. You could probably truthfully state that your company has done work or provided materials for fitting on a particular brand of yacht, but using their brand name in a conspicuous way, or using their logo in any way, without permission, is surely to ask them to nail you, for the reasons previously described: you can state that you do something with respect to somebody else's brand name product, but you cannot use that brandname in a way which trades on their goodwill. Using their name conspicuously or using their logo will be presumed to be crossing the line.So would a conspicuous depiction of their product if it is distinctive and recognizable as such. While i can't profess expertise in every countries' IP laws, these principles are pretty universal; even if there are countries which do not adhere to these guidelines (say, for instance a country where unregistered marks, as discussed above will not be given protection), use of this stuff on the web(which knows no geographic or national boundaries), to solicit customers, could expose you to liability in those countries where the particular mark (whether it is a word mark, design, or product configuration) is registered or otherwise protected under common law principles. Make sense? | ||
| Taek-Ho Kwon (Stickanddice)
Intermediate Member Username: Stickanddice Post Number: 1830 Registered: 11-2002 |
Thanks for the responses guys. A couple of points I was vague about that I need to clarify. I don't plan on making any of this stuff. I definitely don't want to make badges of any kind. The company that apporached me invests very heavily in the new Shanghai race track and they contacted me about certain things they might need to manufacture. Something along the lines of licensing rights for F1, but maybe not the actual car marques? I thought I heard that the rights for F1 advertising in the track allows them to use the car marque logos and stuff. Not sure. Too complicated and not enough margin so I said no. Main reason I asked about websites and logos is as follows. The advice I'm getting is damn good so I might as well spill the beans. I recently purchased a majority stake in a big carbon composites company that does a lot of design and manufacturing work for the marine industry and for governments (military, etc). My marketing guy tells me we should start a website for commercial applications of our marine stuff. Clearly, given the nature of the business, we don't want to tell people what we do for the military, although just saying we do aerospace work for certain governments might suffice. We are currently in the middle of major orders for clients who have Palmer Johnson and Christensen yachts. So. Is copyright/trademark law the same worldwide? I'm assuming that it is, which is the reason why there is no website. Putting a Palmer Johnson logo on the top right of the screen would be a violation of these laws, correct? But, I could put a picture of a Palmer Johnson yacht as long as either someone in my company took the picture or it is placed there with permission from the "author"? What if its a picture of the yacht where the name Palmer Johnson and/or their logo is clearly visible? Kind of like what TechArt did with the Boxster S picture in their website. Cheers | ||
| Jack Habits (Ferraristuff)
Member Username: Ferraristuff Post Number: 892 Registered: 4-2003 |
Taek-Ho, Bill is by far a greater expert on these matters than I am but being a re-seller of Ferrari articles, I can give you some simple examples and advice from my experience. As Bill says, you can use the NAME to truthfully describe what you are selling (i.e. a service to repair Ferraris or a manual for a Ferrari xxx GTS). General laws need to make a facility for this as otherwise there would be no way for legitimate traders to (for example) advertise the second-hand Ferrari that they have for sale. In this way, the name is used in a descriptive way. Using the logo is a different ballgame as it is not a neccessity to sell the goods and is fully copyrighted. Even though I run several webshops that sell fully licensed Ferrari merchandise (the caps, shirts etc.), I am NOT allowed to use either the prancing horse or the script logo as Ferrari has decided that that is reserved for their car dealers. Ferrari has sold a license to depict the various logos on textile, stationary etc to Fila who in turn sells sublicenses to various manaufacturers (for example Mattel to produce sale models etc.). The case that Waldo mentions is a clear example of why these trademark and copyright laws were called for... His friend created a "likeliness" with the Ferrari logo and not because he is so fond of horses but in the hope that people would pay money for it as they recognize it as the Ferrari logo and he would make a profit while avoiding to pay the proper licensing fees to the people who have created the brand, invested in making the name and logo well known. I think it is a very good thing that his operation was shut down as this is plain piracy and he knew what he was doing as otherwise he wouldn't have tried to modify the logo in the hope of making it legit. Another example are the Scuderia shields that are being offered here on FerrariChat.com at the moment. I have serious doubts that they are licensed as they are so much cheaper than the OEM ones (which aren't expensive without reason) and I know the cost involved in acquiring a license is HUGE and taking the relatively small numbers that will be sold into consideration, they are "too good to be true". To give you some idea of the money involved in the Ferrari licenses, Fila reportedly paid $ 80,000,000.= for a three year license... In your case, manufacturing a part that will fit a Ferrari (or whatever other make) is no crime or violation, calling it a part that "will fit a Ferrari 308" isn't a violation either. Putting the Ferrari name or logo on it IS a violation, first of all because you have no license to use the name or logo and second because putting that name on it suggests that there is some kind of official connection between that part and the Ferrari company which there isn't. As Bill mentions, you making a part and putting the name on it for a third party doesn't clear you of possible legal action from Ferrari. That is also why I advised Paul (Scuderia Shields) to get a bulletproof confirmation from his supplier that the shields are licensed as otherwise matters will get VERY expensive for him when the Ferrari lawyers knock on his door.. My Ferrari merchandise shops are fully legit operations but still Ferrari came knocking on my door claiming that a couple of caps (with the logo of course...) were counterfit and I had to prove the whole trajectory of my purchases in court. My luck was that I only bought from a direct sublicensee of Fila and that I could prove that I had ONLY bought in good faith as it turned out that the sublicensee had "conveniently forgotten" to report these items to Fila.... That cost them their license to run an "official Ferrari webshop" and a lot of $$$.... All in all, I would stay away from the whole issue if you want to keep your hands clean. Jack | ||
| wm hart (Whart)
Intermediate Member Username: Whart Post Number: 1565 Registered: 12-2001 |
Taek: Under TM law principles, generally, it is permissible to truthfully state that you repair, or offer parts in the aftermarket intended for, a particular brand, by name. However, it is also generally understood that the unauthorized use of the TM or logo goes beyond the statement of fact and creates the false impression of affiliation with or approval by the brand's manufacturer. Thus, you can truthfully state that you repair or offer aftermarket parts for Ferrari, but using the typescript or horse in connection with your signage, advertising, packaging, etc. will get you into trouble. Thus, i remember Gerald Rousch stating here that he had to remove the horse from his Ferrari Market Letter, F(NA) brought suit against the Greenwich independent dealer, Carriage House, for allegedly creating the impression that it was a genuine (authorized) dealer, etc. Manufacturing decals, badges or other logo-centric products for resale or distribution without a license from the TM owner is actionable for the same reasons, and clearly in the case of Ferrari, Porsche and many other marques, they have well established licensing programs from which they derive significant revenue (in the case of Ferrari, far exceeding what the company makes on car sales each year).{Most of what you raised has very little to do with copyright law, but designs, drawings, three dimensional models, photographs and the like are protected by copyright, so if you copy someone else's rendering or depiction, you could potentially be infringing copyright, as well as committing trademark infringment}. Finally, doing business with a company that represents itself to have permission does not immunize you from suit. You will also be a defendant, and claiming that your were lied to by another entity that induced you to go into this will probably fall on deaf ears as far as the rights owner is concerned. You will have recourse against the entity that put you in that position, but all that's good for is money, assuming they have any. It will not prevent the rights owner from getting an injunction, seizing your inventory, etc. And, of course, your right to seek indemnification from the party that got you into the mess is only as valuable as that company's willingness or ability to reimburse you the damages you suffered. NB. I am skeptical that anyone could approach F Spa or FNA to do licensed product in the mainstream product areas because these rights are already tied up with existing licensees. Perhaps if you had something that wasn't covered by an extant licensing arrangement and was a little unique (eg Prancing Horse Salt and Pepper Shakers) you might have a shot. Nuff said? | ||
| Thomas I (Wax)
New member Username: Wax Post Number: 18 Registered: 7-2003 |
Under any of the scenarios you've outlined, suppose it was Ford. Ford attorneys would, at the very least, send a letter stating "Cease and desist any likeness or facsimile, yadayadayada." Seems to me it would also create grounds for an unhappy or vindictive customer/lawyer to sue for misrepresentation, and exponentially increase odds of said customer winning your valuable money, even if the customer/lawyer had no problem with the product at all. | ||
| Waldo Aikema (Forzarossa)
New member Username: Forzarossa Post Number: 6 Registered: 7-2003 |
I'm absolutely now expect on this and I also don't know if you mean this, but a friend of mine made, a couple of years ago, some caps with a kind of Ferrari logo. But he changed the tail a little bit. So a real tifosi (like us) would see it, but most of the people didn't. He stood with his stand, and his caps, on a racetrack were there were some Ferrari Challenge races. After a while he got approached by a couple of Italian (official looking) guys who had a permit of Ferrari SpA. The said that he wasn't allowed to sell those hats, even when the tail was a little different. When he said the could (*&& off the got angry. They left but came back with the official of the racetrack (the director or something) His licence to sell items was taken and also all of his caps were taken. So I do think that Ferrari makes an issue of people who use their logo for commercial resons. When you really want to make sure, just sent a letter (no email  to Ferrari SpA. They probably want money for it, but that's better then have them against you... :D Good luck! | ||
| Taek-Ho Kwon (Stickanddice)
Intermediate Member Username: Stickanddice Post Number: 1828 Registered: 11-2002 |
OK, so its around 2:00AM here and since I have no life I got to contemplating something. I was approached by a company that straight out asked me if I would manufacture some Ferrari, BMW, Mercedes, etc (F1 teams) items for them for the Asia/Pacific market. I told them I would not unless they had proper permission blah blah blah. This got my brain ticking (yes, it occasionally does work)... I ran a search on copyright trademark and found a whole slew of threads on the subject. I think there is one angle that wasn't covered though. The issues of photographing, products with the logo, and repackaging (read: replicas) have been definitely talked about. What about a site that sells products made for the particular company in question? I was looking at TechArt and Gemballa's sites for some Porsche go fast parts, and noticed that they do not have the Porsche badge on the site. They liberally use the name (which is understandable), but never put the badge on their site. Nevertheless, they do show what look like stock Porsches. Is it some sort of legal violation to use the Porsche badge or Ferrari badge if you sell aftermarket, company non affiliated, products in your website? What about car dealerships? Not the factory backed ones. Is it illegal to put the cavallino in a Mercedes dealership even if you have ten of them sitting on your lot? I'm assuming it is because out of curiousity I went over to BentleySiliconValley.com (formerly Ferrari of Los Gatos) and they have logos for RR, Bentley, Lotus, and Saleen. But no Ferrari even though I know for a fact they got a good amount of them on their facilities. What are the general guidelines for these things? By the way, the company that approached me had some sort of proper permission, but I'm not sure because I decided not to pursue it. So that part of the post is completely unrelated to the rest except that it got me thinking about copyrights and trademarks in general. Cheers |