Ford Motor Company v. Safir GT40 Spares, Ltd

Randy V · 30th November 2008, 11:14 AM

Ford Motor Company v. Safir GT40 Spares, Ltd - 3:2008cv00491 - Justia Federal District Court Filings and Dockets

Quote:

Plaintiff: Ford Motor Company
Defendant: Safir GT40 Spares, Ltd
Movant: Holman Automotive

Case Number: 3:2008cv00491
Filed: October 29, 2008

Court: North Carolina Western District Court
Office: Trademark Office [ Court Info ]
County: Mecklenburg

Nature of Suit: Intellectual Property - Trademark
Cause: Federal Question
Jurisdiction: Federal Question
Jury Demanded By: Civil Miscellaneous Case

Rather new case - no other information (free that is)...

Anyone know what's up?

Tim Kay · 30th November 2008, 12:12 PM

This ought to be interesting. If I were to take a wild guess, may be something to do with Safir\Superformance continuation GT40's

40 Bud · 30th November 2008, 03:05 PM

I believe this has been in the works for a long time. I received inquiries a couple of years back from a law firm in Illinois. They wanted to know all about any history I might have regarding GTD an the use of the GT40 name or any other relavent info I might have regarding GT40 advertising or logo use. They must have been digging pretty deep to have come up with me as a party of interest. I did run a couple of adds showing my personal car. I quess that is what got me on their list.

David Morton · 30th November 2008, 04:06 PM

It seems to me that it's going to be an I.P.R. issue and maybe - just maybe - Ford want the GT40 name back. This may run for a while and could be fun.
Fran might have a more succinct handle on this?

Fran Hall RCR · 30th November 2008, 04:13 PM

Nope.....sorry.
But like Bud I was contacted years ago for info by Ford.

fostereast · 30th November 2008, 05:20 PM

I'm curious what part H&M has in this, maybe it implies issue with the use of the GT40 Mk II?

Chris Ardern · 30th November 2008, 10:11 PM

This is very interesting. We were contacted just last year by Ford too, along with Holman Automotive and JW Automotive. It was about the shape. Safir and I'm sure for the benefit of Superformance who licences the rights to use the name from Safir was trying to trademark the shape of the GT 40 claiming it was part of the deal they made in the 70's. Now it looks like Lee Holman made a motion for a judgement but with Ford as the plaintiff and Safir as the defendant. Interesting. I'm pretty sure it's about the shape.
Chris
GT Reproductions:

Cliff Beer · 30th November 2008, 11:59 PM

Without looking at the case files it looks to me like Ford is the originating plaintiff, Safir is the original defendant and Holman got joined in the suit subsequently thereafter as a co-defendant (probably along with others). If I had to guess, Holman is likely making a motion to either be removed from the case or somehow limit their liability.

As the case is currently pending, it has not been published in any of the Federal case reporters. The Western District Court would have the filings available at the court records desk for public access, or, electronic access for lawyers admitted to the NC bar who have taken the required training for electronic filing and review. Unfortunately, it looks like pending case review is not available to the public online, nor lawyers not admitted to NC bar w/o the training.

Looking at the United States Patent and Trademark Office online trademark search functionality it's clear that Safir has rights to the phrase "GT40." This doesn't mean that they have rights to anything accessory to this which is otherwise "Ford." I would guess that Ford is pissed about Safir being difficult about the GT40 copyright and is giving them some grief about using the Ford mark in some manner. That's just a WAG however.

Bob Wood · 1st December 2008, 08:09 AM

Hi, Guys!

In our application for a trademark on the shape, Ford and H&M opposed Safir, i.e., those two entities did/do not want us to have it. This has been going on for several years now. Safir needed/wanted to enter into our case with Holman a deposition that Holman did for Ford, we issued a subpoena to get it, and the action was done in the NC federal district court. The action as quoted above is accurately quoted, however, the information appears to indicate that Ford has a new action against us, Safir. That is not the case.

Bob Wood

Randy V · 1st December 2008, 08:21 AM

Thanks for coming in and setting the record straight Bob...

I'm curious though...

If given the trademark on the shape of the GT40 - What will become of the Replica market?

Also - Which version (Mk1, Mk2, etc) of the GT40 are you trying to get trademarked?

Thank you...

Cliff Beer · 2nd December 2008, 02:22 AM

Hhhhmmmmm, now why would someone want to trademark protect a shape????

Hint: to have the right to commercially exclude others, and thereby extract a price for licensing the right to produce that shape. Any GT40 replica manufacturer should beware.

Jean-Paul Reckinger · 2nd December 2008, 04:59 AM

Should'nt a company like Ford better spend their money on creating environmental correct cars,saving their craftsmanship,saving the integrety and background of their company , rather than this

Ron Earp · 2nd December 2008, 07:33 AM

Quote:

Originally Posted by Cliffbeer2

Hhhhmmmmm, now why would someone want to trademark protect a shape????

Hint: to have the right to commercially exclude others, and thereby extract a price for licensing the right to produce that shape. Any GT40 replica manufacturer should beware.

Cliff,

Good you wrote that and made it clear. It would seem to me that is someone acquires a trademark on the GT40 shape then it could have dire consequences on the GT40 replica industry. Why spend to money to obtain something if owning that something wasn't going to provide you a reasonable return on your investment?

Would this trademark extend outside the borders of the country it was granted in?
------
Bob,

what is the intention of Safir if they obtain the trademark? If the intent is to extract payment from replica companies, or reduce the market down to one licensed replica company, then I doubt you'll have very many supporters for your efforts on the forum.

Chris Martino · 2nd December 2008, 08:20 PM

You'd be amazed what has been granted trademark status.

Chris

Jay V · 2nd December 2008, 09:24 PM

Quote:

Originally Posted by ChrisMartino

You'd be amazed what has been granted trademark status.

Chris

Like a certain colour. Ask Coca Cola about their red.
opps, I meant color...

Chris Ardern · 2nd December 2008, 10:17 PM

This is a serious thread, I appreciate your comment Ron. I've been watching and waiting over this issue wondering which direction I should steer my business. It would be nice if Bob Wood would make clear his intentions. I give Bob and his partners at Safir all the credit in the world for the brilliant move they made buying out the GT40 program when JW was done with it. A dream opportunity few of us realize. Nevertheless it would be a nice gesture to give us an idea where we're headed. I don't have the patience for this thread to turn into another 3 pages of speculation.
The fact is it's going to get down to a judgement by the courts that either Safir owns the shape of the GT40 or not. If they do award you ownership of the shape Bob. What will you do. Offer replica builders a licence arrangement? (only fair) stop the replication of the GT40, or go after retroactive royalties. Or is it about the replicas at all. Is it just about Ford and the new genration Ford GT. I know you're limited out of confidentiality to the legal proceedings but your silence now is as deafening as the time I asked you on the phone. Throw us a bone Bob.
Chris

Randy V · 2nd December 2008, 10:24 PM

Deja Vu all over again?

Who owns the rights to the GT40 Body?

Ron Earp · 2nd December 2008, 10:26 PM

Quote:

Originally Posted by actvpwr

This is a serious thread, I appreciate your comment Ron.

I certainly don't mean any ill-will by asking about the pink elephant in the room. We're all adults. But it bears asking.

I've had a PM discussion about the issue in the past and came away with the feeling that it was not Safir's intention to corner the market. But, that was years ago and circumstances were different then in the marketplace.

This forum is 99% about GT40 replicas and any attempts by an entity to change the replica market would probably be unfavorable to the majority of the GT40s.com readers/members.

Cliff Beer · 3rd December 2008, 04:01 AM

Quote:

Originally Posted by Ron Earp

Cliff,

Good you wrote that and made it clear. It would seem to me that is someone acquires a trademark on the GT40 shape then it could have dire consequences on the GT40 replica industry. Why spend to money to obtain something if owning that something wasn't going to provide you a reasonable return on your investment?

Would this trademark extend outside the borders of the country it was granted in?
------
Bob,

what is the intention of Safir if they obtain the trademark? If the intent is to extract payment from replica companies, or reduce the market down to one licensed replica company, then I doubt you'll have very many supporters for your efforts on the forum.

Ron, trademark protection is accomplished in a patchwork quilt manner, meaning, the applicant has to go seek protection in specific geographies where there is an authoratative body that can grant such protection. In the US it's the United States Patent and Trademark Office (USPTO) (www.uspto.gov). Overseas it's a matter of each countries own authoratative body giving protection, or, via an agreed regional authority such as is available in Europe in the form of the European Patent Office.

In this particular case I would guess that Safir is going for protection in the US via filing with the USPTO, and, either concurrently or subsequently will go for protection in other jurisdictions in accordance with the market opportunity (ie. ability to extract licensing fees from a multitude of replica manufacturers) in those other jurisdictions. Europe is an obvious relevant market, so, filing with the European Patent Office (www.epo.org) is a likely move.

To be honest, if I was in the business of GT40 replica production I would be rounding up all the various manufacturers and filing a collective brief in the case showing extensive prior use of the shape. In other words, try to establish that the shape is "in the public domain" and therefore not subject to trademarking. It wouldn't be that expensive to do if everyone bore a reasonable share of the legal costs. This would be an inexpensive investment in the ability to continue doing what many manufacturers have been doing for some time - produce accurate and appealing copies of the original GT40s of the 1960s.

Ron Earp · 10th December 2008, 04:24 PM

Apparently on the Ford GT forum, www.fordgt.com, they banned Bob Wood from posting. I do not know what the posts were about specifically (clearly the thread was about the lawsuit) but the moderators there did not want to allow a thread about suit continuing. I don't personally see a risk in that here as when you join GT40s.com to post you clearly agree to assume all risk and liabilities for your posts. But there might be an issue. Any attorneys care to comment?

Any additional information on the suit?

Ron