Ford gets confused and shoots itself in the foot

So Ford Motor Company is a little bit confused. They are claiming some form of intellectual property in photographs of specific Ford Mustangs. Not in the abstract image of the iconic car, but in the photographs taken by enthusiastic owners of their own [presumably] paid-for cars.

Slashdot:
http://yro.slashdot.org/article.pl?sid=08/01/14/1628204&from=rss

AdRants:

http://www.adrants.com/2008/01/ford-slaps-brand-enthusiasts-returns.php

Culture Garage:

http://culturegarage.com/2008/01/11/ford-sometimes-i-think-you-want-to-fail/

What is it that they are confused about? Well, let’s look at the tangle of issues they could, conceivably, be conflating: likeness rights, trademark, copyright, and IP licensing. Oh, what the heck, let’s throw industrial designs into there too. I’ll attempt to simplify this for Ford; come along on the ride if you like.

Likeness rights are the rights you have in pictures taken of you. If XYZ Corp takes a picture of you and uses it to somehow publicize their product without compensating you or obtaining your permission, you can take them to court. In Canada, this stems from the tort of appropriating personality, which was described by Estey J.A. (as he was then) in Krouse v. Chrysler Canada Ltd., (1974), 1 O.R. (2d) 225:

The appropriation of one’s image by photography was first dealt with in the Courts in England on the basis of an implied contract not to use the negative produced by the defendant for any commercial purpose without the authority of the person photographed.

So in this case, is Ford claiming that it is Krouse – the photographed athlete – and the car owners, the Black Mustang Club, are Chrysler – the corporation profiting off of their personal image? Well, in Canada, the simple right to publicity was denied by Justice Estey, whereas it is recognized in the U.S. But there is further, and more recent, discussion of this matter.

In Poirier v. Wal Mart Canada Corp, 2006 BCSC 1138, Arnold-Bailey J. distinguished Krouse, but also explained it: The right to one’s likeness was not simply in the use of an image, which would fall under the Privacy Act now, but in the implication of endorsement. Now we are getting to the meat of the matter, at least in so far as likeness rights go.

Under likeness rights as explained in Poirier, Ford would be claiming that the BMC, by using images of Ford Mustangs in their calendar, is implying that Ford endorses them. Frankly, I find that ridiculous. Ford is taking legal action against a club of enthusiasts for their flagship product because its existence and boasting enthusiasm, evidenced through photos of the cars, may imply that Ford endorses this club? The arguments here are so circular that I’m getting dizzy.

Next.

Trademark. Ford owns the likeness of the Mustang as a trademark. Darn right they do! But I’m having trouble seeing the infringement. No one is building a car and calling it, badging it as, or otherwise passing it off as a Mustang. These are bona fide Mustangs! Made by the Dearborn, Michigan, automotive company, and adored to a fanatic extent by the members of this club.

In other words, the Mustang logos, the Mustang name, and maybe even certain esoteric details such as the sound of the tuned muffler, are trademarks. The conceptual image of the Mustang may be a trademark (actually, it’s an industrial design and maybe a copyrightable work). But the actual steel mass-produced automobiles are not trademarks, and neither are photographs of them. They are chattels, and pictures of chattels. Things individually and wholly owned by people. Like couches, ball-point pens, eyeglasses, scotch bottles, and rolls of toilet paper. Stuff. Chattels.

Copyright. The only copyright residing in those photographs belongs to the photographers. In fact, they might even have an action against Ford for trying to appropriate copyright in pictures that Ford didn’t take. Done with copyright.

On to licensing – the only place where we might be able to find some logic – albeit misguided logic – to Ford’s action:

IP licensing is the process by which an IP holder grants a limited right of use – that may look like a form of ownership – in the intellectual property. We all have way more IP licenses than probably any other kinds of licenses. We often get them through End User License Agreements, or the purchase of copies of media products. I’ll leave the legitimacy of the claims that these are licenses and not purchases to another discussion. Let’s look at the Ford situation and compare it to the normal ways in which one obtains an IP license:

Larger scale or custom IP licenses are negotiated contracts like any other contract, where one party exchanges consideration (money) for the right to use IP in a way that the IP holder has a statutorily exclusive right to control. Smaller scale or mass distribution standardized IP licenses are imposed contracts, bundled with goods as a condition of sale. Like I said above, I’ll leave the contentiousness of this practice to another discussion. These licenses are generally bundled because the tangible good is merely a vehicle – a method of fixation – for the intangible intellectual property.

In both of these examples there is a contract by which the license is obtained. This is because there is an underlying intellectual property right! As we established before, there is no underlying intellectual property right, through copyright, trademark, or any other means, in the cars that could be violated through photography of an individual privately owned car. Cars are purchased with the intention of being free and clear of any charges against them by the original owner. The original owner (Ford or its dealers) does not retain any rights in a car purchased under such an agreement for sale.

To reiterate, a car is a tangible good, a vehicle for transporting people and stuff (more people than stuff in the case of a sporty Mustang). It is not a vehicle for intangible expressions of ideas that would be protectable under IP laws. A car is not a method of fixation for the copyrightable or trademarkable (according to Ford) expression that is its appearance. There is no underlying and persistent IP in an individual manufactured Mustang that can be infringed through photography, or that has the potential to be licensed.

The Black Mustang Club should stand its ground and tell Ford to try to find a court that would waste its time with this. Better yet, they should buy black Firebirds. (*The BMC should not take this last paragraph as actual legal advice.)