A few days ago, I heard back from Ford, with a different side to the story. According to them, they hadn't said anything of the kind to CafePress -- rather, Ford had taken the opposite tack, releasing tons of pictures and bric-a-brac under generous Creative Commons license to encourage Ford fans to do cool stuff with their work.
So what happened? After a few rounds of correspondence with CafePress, here's where I've netted out:
* Ford had previously sent very stern letters to CafePress about similar projects, warning them in no uncertain terms that CafePress had better not produce projects similar to the Black Mustang Club Calendar
* CafePress contacted the Black Mustang Club and either said "Ford told us that you can't do your calendar, because they control all images of their cars" or CafePress contacted the Club and said "Ford told us that we can't can't do projects like your calendar, because they control all images of their cars" (I haven't been able to reach the Black Mustang Club people to confirm which it was, though they certainly wrote that it was the former)
* Ford has since contacted CafePress and The Black Mustang Club to say that this project and future fan-run projects (that don't imply an endorsement by Ford) are OK -- this is consistent with trademark law and a reasonable position for them to take
There's a couple of interesting lessons for Ford and CafePress to take away from this. For Ford (and companies like it), the lesson is surely to tighten the reins on your legal department. When they send stern letters to online service providers that threaten legal action, the natural outcome is that OSPs are going to get gun-shy -- and they'll tell your fans that they can't do anything and blame it all on you. The usual overkill approach from corporate counsel will come back and bite you on the ass.
For CafePress, the lesson is to take your customers' side when the law is with them. Even if Ford did tell CafePress to kill the BMC calendar, they'd have been wrong. The BMC calendar is legal -- even without Ford's blessing -- and when you protect yourself from legal liability by shutting it down, you incur PR liability by seeming like a bunch of candy-asses who can be bullied into submission by a memo from some white-shoe legal goon from a Fortune 100. Word gets around.
I don't know that we'll ever be able to find out whether CafePress told BMC that Ford was down on their specific calendar, but at the end of the day, it doesn't really matter. Ford's earlier letters on the subject clearly scared the hell out of CafePress, and CafePress's lawyers clearly need a refresher course in trademark and liability.
There's one very good piece of news to come out of this, though: Ford's program to let its fans do whatever they want with high-quality shots of the cars is a damned forward-looking and decent bit of strategy.
For the record, here's what Ford and CafePress had to say about this:
We have spoken to both CafePress and the Black Mustang Club and explained the situation about the Black Mustang Club’s calendar to everyone's satisfaction. Ford has no problem with Mustang or other car owners taking pictures of their vehicles for use in club materials like calendars, including the logos as they appear in the pictures of the vehicles. What we do have an issue with are individuals using Ford’s logo and other trademarks for products they intend to sell. Understandably, we have to take the protection of our brands and licensing very seriously.Sara Moufarrige-Doepke, PR Coordinator, CafePress:
Ford did not send the Black Mustang Club a “cease and desist” letter telling them that they could not use images of their own cars in their calendar. The decision not to allow the calendars to be printed was made by CafePress because we had contacted them in the past about trademark infringements on products they sold.
CafePress and Ford will work together to clarify and resolve any future issues.
The Black Mustang Club and other Ford enthusiast clubs are encouraged to take pictures of their own vehicles for use in calendars or other materials as long as they don't use Ford trademarks in products that will be sold. Clubs or enthusiasts who have questions regarding this should contact Ford by emailing email@example.com, we are happy to help.
In fact, Ford is contributing to these types of enthusiast programs in forums, blogs and other social media platforms through our Social Media Press Releases at ford.digitalsnippets.com
I think it is great that the Black Mustang Club, and any other enthusiast club, would take pictures of their own vehicles for use in calendars or other materials.
I’m looking forward to purchasing a copy to hang in the garage next to my Mustang (even if mine isn’t black).
1. We received a Cease and Desist from Ford several months ago. In this document Ford asked that we remove (and continue to remove) user created product images that feature Ford cars and logos. This included current products, and future products.Black Mustang Club:
2. In compliance with this request we remove images as they come up, and then let the CafePress user (in this case BMC) know that they have been removed or pended, and why (in this case a general Cease and Desist from Ford).
3. Over the course of last week we spoke with Ford and reached an agreement - Ford has revised their initial position making the photos of individual's cars usable on CafePress merchandise.
To confirm, yes - we did receive a notification from Ford which covered current and future user-created CafePress products featuring Ford cars and logos. And no, this Cease and Desist was not directed specifically at the BMC - however the BMC content in question was prohibited in the general Cease and Desist we received several months ago.
I got some more info from the folks at cafepress and according to them, a law firm representing Ford contacted them saying that our calendar pics (and our club's event logos - anything with one of our cars in it) infringes on Ford's trademarks which include the use of images of THEIR vehicles. Also, Ford claims that all the images, logos and designs OUR graphics team made for the BMC events using Danni are theirs as well. Funny, I thought Danni's title had my name on it ... and I thought you guys owned your cars ... and, well ... I'm not even going to get into how wrong and unfair I feel this whole thing is as I'd be typing for hours, but I wholeheartedly echo everything you guys have been saying all afternoon. I'm not letting this go un-addressed and I'll keep you guys posted as I get to work on this.
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