Newsletter - Volume 61, February 2011
Ford Pushes the Limits in Suit Against Ferrari Over F-150 Mark
Last week, Ford Motor Company sued Ferrari S.p.a. and its North American
subsidiary in Federal Court in Detroit, alleging that Ferrari was infringing
and diluting Ford's rights in the mark F-150. Ford has registered F-150, and
has been using the mark for many years as the name of one of its most popular
pick-up trucks. In its suit, Ford has attempted to push the boundaries of U.S.
trademark law—literally—by claiming that actions taken outside the United
States constitute infringement and dilution of a trademark within the United
States.
The conflict began in late January, when Ferrari unveiled its Formula 1 race car
for the 2011 racing season for pre-season tests in Valencia, Spain. Formula 1
fans had expected it to be called the F-11, following Ferrari's practice of
using a model number containing the year. (Last year's model was the F-10.) But
this year, according to Ferrari's management, Ferrari chose the F-150 name to
commemorate the 150th anniversary of Italian unification. Ford found no reason
to celebrate.
The Ferrari F-150 is a single, custom-designed and custom-built vehicle, made
only for Ferrari's racing team. It was not designed for sale to consumers. It
was built at Ferrari's plant in Maranello, Italy, and the name was announced to
the international press from Maranello. After testing in Spain, the car will be
shipped to Bahrain for the opening race of the season. It will not be raced in
the United States.
Despite these facts, and despite the fact that Ford has a trademark registration
for F-150 in the European Community, Ford brought suit in Detroit. While a
hometown court may give Ford some advantage in the litigation, the decision to
sue in the U.S. required Ford to develop some very creative interpretations of
trademark law.
As a general proposition, trademarks are territorial. They exist and are
enforced on a country-by-country basis. One company can own a mark in the U.S.
and another can use it and register it in Italy. But Ford claims that Ferrari's
actions in Europe infringe and dilute its U.S. trademark, and it has asked the
Federal Court to enforce its U.S. trademark registration against Ferrari.
Ford's novel approach is to allege that Ferrari uses its Formula 1 team as its
primary marketing and advertising strategy and that, Ferrari will "leverage"
the name into sales of other Ferrari vehicles and merchandise in the United
States. Ford points to the fact that U.S. "Ferrari dealers have websites
devoted to Ferrari's prowess in Formula 1 racing." Further, it alleges that
Ferrari has used the name of other Formula 1 cars on hats, model toy race cars
and other promotional items it has sold in the U.S. in the past. Finally, it
notes that that the F-150 logo developed by Ferrari bears a strong resemblance
to the badge Ford places on its trucks.
Ford has also alleged an unusual version of dilution by tarnishment. While the
casual observer might wonder what's wrong with being associated with one of the
most famous and high-end brands in the world, Ford's complaint states: "The
elitist Ferrari "F-150" tarnishes the BUILT FORD TOUGH® F-150® brand."
Ford has included a claim for cybersquatting, based on Ferrari's ownership of
ferrarif150.com. The domain is registered to a service provider in Italy, but
Ford alleges that it can be reached by U.S. consumers and that it re-directs
them to Ferrari's corporate website. In order to prevail on this claim,
however, Ford will have to show a likelihood of confusion. And given the fame
of the Ferrari mark, and the inherent weaknesses in an alpha-numeric mark such
as Ford's, this will not be easy to prove.
In response to the suit, Ferrari has announced that it will now be calling the
race car the Ferrari F-150th Italia, in order to more directly celebrate
Italy's 150th anniversary. According to news reports, it has also dropped the
F-150 logo. Whether this will be enough to mollify Ford remains unclear, but it
puts Ferrari in an even better position in the litigation because the marks are
no longer identical. Moreover, Ferrari can go into Court as the reasonable
party who has taken steps to address the issue.
If the case moves forward, Ford will have an uphill battle convincing the Court
that its U.S. trademark rights should be extended beyond U.S. borders. It will
also have a difficult time proving there is an actual case and controversy, and
that there is a likelihood that consumers will be confused. A Ford spokesperson
made this even more challenging last week when she informed the press that,
"We're not concerned that the two vehicles would be confused. The motive behind
this action was about the brand being diluted."
—Carolyn Knecht
No Animals Were Harmed During Writing of this Newsletter
We have all seen the familiar NO ANIMALS WERE HARMED statement in the closing
credits of films and television shows. But did anyone ever consider that the
phrase might be a registered trademark and its use strictly licensed?
Evidently, a number of big-name Hollywood film studios did not know as much.
The American Humane Association (AHA) has a registration for the certification
mark NO ANIMALS WERE HARMED in connection with, among other things, motion
picture and television production. In order for a work to state NO ANIMALS WERE
HARMED, production of that work and the use of animal actors must be monitored
by the AHA. Only then will the AHA certify the work and license use of the NO
ANIMALS WERE HARMED mark.
The King's Speech is nominated for twelve Oscars and is a front runner
to take Best Picture at the awards next week. After telling us the story of how
King George VI triumphed over a speech impediment, the final credits to the
film tell us NO ANIMALS WERE HARMED. However, the AHA was not involved in
production of the film and did not inspect or supervise use of any animals in
that film.
Last week, the AHA sent the producers of The King's Speech a letter
demanding they remove the NO ANIMALS WERE HARMED statement from the film
credits. Since the AHA was not involved in production, use of the phrase was
thus without approval and without license. The false association created
between the AHA and the film could technically constitute an infringement of
the NO ANIMALS WERE HARMED mark. The producers reacted by removing the NO
ANIMALS WERE HARMED line from credits and it will not appear on any of the
thousands of DVDs certain to be sold after the Oscars. Interestingly, a similar
situation, resolved in a similar fashion, occurred in connection with the film District
9, which was a Best Picture nominee in 2009. Apparently, producers of The
King's Speech were not the only ones unaware of AHA's rights.
With NO ANIMALS WERE HARMED a registered certification mark, when you see it now
at the end of a film, you can rest assured that not only were all animal actors
treated fairly and ethically but also, in a file somewhere, a proper license to
use the mark exists.
—Mark A. Nieds
ICANN New gTLDs Delays Continue
The ICANN Board of Directors' anticipated approval of new generic top-level
domain names (gTLDs) has been delayed once again. While the approval was
expected to occur at its March meeting in San Francisco, with former President
Bill Clinton as a featured speaker, ICANN has officially declared that a vote
would not be occurring at that meeting. While a timetable for a vote has not
been set, speculation is that ICANN may not wait for its next public meeting,
which was previously scheduled for June in Amman, Jordan. Due to safety
concerns in the region, the June meeting has been put on hold until a new venue
is determined. The ICANN Board of Directors is set to meet on April 21 for a
"Special Meeting," possibly setting up approval of the new gTLD program with
less fanfare.
The ICANN Board and GAC meeting to discuss the GAC's outstanding concerns is
scheduled for February 28 and March 1 in Brussels. The GAC has provided the
ICANN Board with a list of 12 remaining concerns for discussion. Amongst these
concerns are the proposed trademark protection mechanisms and the "morality and
public order objections" issue. In a controversial move, the U.S. government
has proposed a governmental right of veto over new gTLD strings, thereby
allowing any GAC member to raise an objection to a proposed string for any
reason.
If the Brussels meeting does not result in agreement on the remaining issues,
the ICANN Board has scheduled a bylaws-defined consultation meeting for March
17—the day before the San Francisco Board Meeting. The March 17 meeting would
trigger the possibility of the Board rejecting GAC recommendations not agreed
upon, setting up approval of the new gTLD program without further public input.
It is expected that new gTLDs could be applied for four months after the
Board's acceptance of the Applicant Guidebook, with new gTLD domains expected
to go live in late 2012 or early 2013. While delays have been the norm for
ICANN and new gTLDs, brand owners should not rely on continued delays before
creating their strategy for their company's role in the new gTLD program.
—Gary Saposnik
Disclaimer: The contents of this newsletter are presented for information purpose only, and as such are not intended to constitute legal advice and should not be construed as such or acted upon without seeking advice of legal counsel. This information is not intended to and shall not create an attorney-client relationship of any kind or nature with IpHorgan Ltd. Please contact the firm with queries, concerns or for further details regarding the information presented herein. The entire contents are current only as of the date of the newsletter and are not to be interpreted as the opinions of our clients past, present, pending or future. (c)2011, IpHorgan Ltd. All Rights Reserved.
Newsletter Volume 72, January 2012
