Licensing question

[DaveKennedy]

Actually in this country intellectual property seem to be a bit safer than Europe. I get the other side of the argument: how can you own a shape? how can you own a name? do you legally have the right, if you design something and brand it, to keep someone else from making a knock-off of it without being able to stop them and sue them?
Chevy pays to develop, brand, produce a C7.R Corvette.... don't they have the right to prevent someone from making a copy (toy or otherwise) without being compensated? As a creator of photographs (who owns the copyright to all the images I make on my own time) I'd say "yes" they do own the shape and brand they've paid so dearly to produce... they make a desirable car(s) why shouldn't they have some control over that?
I can understand it from that point of view that they I would think most people would agree, have a right to "own" something they make, whether it's an idea or a car. How can we begrudge them that? Where I think it is hard is when that ownership is so guarded that they (and by "they" I mean anyone trying to exert control over a copyright or trade-dress) make it so hard/costly that it means people who make toys are essentially prohibited from making toys which as is pointed out, just end up promoting the brand to (in this case) kids who might become customers.

[mattb]

Agree with Dave about Corvettes and other original items designed, created and thought up by most anyone. I don't agree and actually think it is laughable the Richard Childress Racing could get a patent/copyright on the number 3. I thought that was ridiculous and a case of somebody thinking too hard about how important they are.

[Czar]

Removed by OP.

[WB2]

Just some thoughts:
On copyrighting shapes - lots of Fender Stratocaster and Gibson Les Paul knockoffs out there.
On Dave’s comment regarding copyrights of photos - if he copyrights a photo of a Corvette, does he then owe royalties to GM?
Italian manufacturer once had a component line called Daytona. After two years of production the line became Centaur. Name change was due to legal hassles from...not the City of Daytona...but NASCAR.
Other bicycle stuff, 300 pound gorilla Specialized has a legal rights to the word Roubaix, a city in France.

[HomeRacingWorld]

Mr. Kennedy knows his facts. He has worked with our makers and knows what it takes.

Here is a story I can safely tell now, about how the SCX NASCAR Series came to be:

When SCX Worldwide visited us back in 2008 and 2009, Chuck Erhedt, the then President of the group revealed to me just how close we were to NOT having them at all.

He showed up at the NASCAR licensing meeting. NASCAR simply handed out pricing to all the companies at the table. According to Chuck, these other toy companies agreed and signed the proposals without looking.

Chuck simply didn't sign. He actually read it and made a counter offer on paper and handed it to the NASCAR rep.

They accepted the counter offer...and the SCX NASCAR Series was born. :auto-checkeredflag:

Because as it was, SCX could not afford to do the cars at the current known fees. Perhaps a lost cause to some, but not to a real businessman. They decided to take a chance and see if they could get a price they COULD afford. NASCAR accepted. Then it was time to approach the teams, etc and so forth. But the first hurdle was cleared.

Some teams do want a premium, others are more flexible.

Times certainly change. This isn't 2007. Licensing fees do impact our toys, no doubt about it.

Sometimes though, it all boils down to the people on the ground. As has been proven with the team at Scalextric recently. Without smart and motivated people, we would not have the Monte Carlo today...or several others for that matter.

[DaveKennedy]

A photo is not a model of a car. Also the situation matters. If I'm taking a photo using a press credential at a race (most of the time) when you sign the release to accept the press credential you technically do give them (the race track) the rights to the photos for commercial use. Further, the wording on most of the rights release sheets you sign say you're not allowed to sell the images commercially you can only use them for editorial purposes. Editorial purposes mean that those images can only be used for "news" not for onsey-twosey sales of prints of photos. Now... is this clause normally enforced? Of course not, but on most of the releases i've signed (and also normally it's written on the back of most of the credentials) it has a printed version of the same wording. So yes, I can take a photo of a Corvette... but in most cases if i'm there shooting something with a press pass from a track i'm not allowed to sell those photos. It's also the case in all pro sports too (a world I used to cover in my previous life as a newspaper photographer) It's splitting a hair but that's the case most of the time.

So all these examples that I've mentioned and Harry have mentioned are anecdotes to explain how vague all this is. It boils down do what I mentioned... nothing is black and white. It's all in whether a company who owns IP wants to go after you... if they don't then you get what we see in slots... tons of technically illegal slot cars.

Further... and I've never talked about this before but... I've had real car companies come to me (because I'm visible to them and in the US so I'm easier to contact-and in some cases I'm already talking with them about cars that could be made) to ask if I can put them in touch with "slot company X or Y" because they have found some slot cars made outside a license and that company wants to contact the slot company to try to get them to stop making those unlicensed cars. I've avoided this of course because I don't want to be involved legally.

[DaveKennedy]

[JULES]

I'll try quickly to digest what I've found out over the last few years regarding copyright, trademarks, licensing and IPR…..

1/ All copyright holders prefer to be asked if it would be OK to make a model of an ‘XYZ’ car, certainly if the real 1:1 car is younger than 10 years. This is less of an issue for historic vehicles as often Trade Marks have a lifespan and are likely to be abandoned as the decades slip by. Any payments that might be due range from fair to zero. ALWAYS negotiate. There are no fixed fees.

2/ A scale model is a representation of the shape of a 1:1 car. It is not a direct copy. You can't use it as transport. Therefore there is no DIRECT infringement of copyright law or IPR, but the point can be argued if a bunch of lawyers were paid enough to do so. A scale model is not a copy, merely a derivative representation in a smaller form. It does not do the job for which the copyright exists (unless the Trademark Holder has specifically protected Toys/Models).

3/ You can print 'FORD Mustang scale replica model' without a license on product packaging because that is descriptive. You could not use the FORD logo or Mustang script (without a license) in an un-scaled format (ie not 1/32) as they are trademarked images. For example, making a model of a Mustang and printing a large Ford ‘Blue Oval’ on the packaging would be contravening a Trade Mark.

4/ What most copyright holders are concerned about – and the protection they seek - is a/ loss of income and b/ brand damage by poor copies. The original copyright holders, in this particular instance of model toy cars, are not ever in the business of scale model production or producing pinhead sized company decals/logos and neither is a poor scale model of a 1970 Chevy Camaro likely to damage sales at a 21st Century franchised Chevrolet dealer

5/ Most copyright infringement chasing is done by third party firms that trawl the world for potential transgressors, report their findings to the owner and then work on a no hay, no pay basis. These cases often begin and end with a ‘cease and desist’ communication.

6/ Most infringement of trademark (or trade dress) is directly related to logos and attempting to pass off a product as 'official licensing' when the product is most definitely not.

7/ If the model maker has access to CAD data supplied by the 1:1 car maker and chooses to ‘scale down’ that data then there is a strong case that the design originated with [insert car maker] designers and therefore if would be a copy (albeit smaller). The 1:1 car maker should be paid in some way, in the form of a license agreement.

8/ The larger model makers (not just slot cars, but all types of toy vehicles) will almost certainly have sales channels where the retailer (in particular big stores) will automatically expect ANY toy product to be licensed, whether or not, in reality, a license was legally required. For the avoidance of doubt, the toy maker will get a license ‘just in case’.


I agree with DK that this is a gray area. To make the matter even more complex, the rules do vary from country to country.

As far as I am aware, the issue of toy licensing / IPR infringement covering the shape of a car and its associated trade dress has not been tried in the USA courts. It has in Europe. The car maker (the Plaintiff) lost the case against the scale model maker largely due to the points I raised in (2) and (4) above. The 1:1 car maker did not have copyright protection that covered scale model toys and the court decided that absolutely no damage whatsoever was done to the car makers brand or image.


Jules

[mattb]

Looks like you pay your money and take your chances!

I am pretty down on what Nascar has become so I am always ready to criticize them. Imagine the city of Daytona can't license anything with their name on it without asking for permission from the France family. I wonder how long the city was there before Big Bill ever thought of racing on the beach. This sounds as ridiculous as the #3 copyright.

I guess we shouldn't be surprised with this, it is pretty consistent with all the BS that gov't, courts, and lawyers have created.

[Mayberryman]

[mattb]

We all know Teresa Earnhardt had a hard time meeting expenses after DE's death. She had to sell about every racing item she inherited.