Black Mustang Club Tussles, Then Makes Nice With Ford Over Fair Use

Sometimes mountains and molehills are made of both made of thin air. A couple of weeks ago the Ford Mustang enthusiasts site "Black Mustang Club" was contacted by their publisher, Cafepress, regarding the calender they were about to publish. The club owners had compiled a 12 month calender of pictures of their rides and intended to sell them to any takers. Cafepress notified the club of contact from Ford lawyers regarding possible trademark infringement. Normally this is where we'd raise a stink about missed marketing opportunities and botched brand management. In this instance though it seems that what happened was a case of the telephone game going awry.

Below is the initial entry from the BMC site, bmcforums.com bemoaning the apparent cease and desist from Ford.

BMC 2008 Calendar NOT Available Due to Ford Motor Company 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.

I'm sorry, but at this point we will not be producing the 2008 BMC Calendar, featuring our 2007 Members of the Month, solely due to Ford Motor Company's claim that THEY own all rights to the photos YOU take of YOUR car. I hope to resolve this soon, and be able to provide the calendar and other BMC merchandise that you guys want and deserve! This thread will remain open for you to comment however you wish, and I'll update it as needed.

Thanks for all your support of the BMC!!

However, this is not the end of the story. Our sister site Consumerist got a hold of the story, which got the attention of Whitney Drake from Ford Communications. We spoke with Whitney at the Detroit Auto Show the other day and she was still flummoxed over the whole thing, but glad that it had been resolved. She pointed us to her response on Consumerist :
My name is Whitney Drake and I work in Ford Communications. We've been watching this discussion with interest and I'd like to clarify what is essentially a misunderstanding.

Yesterday we spoke to both Cafe Press 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. 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.

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 Cafe Press, because we had gotten in touch with them in the past about trademark infringements on products they sold.

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).

Thanks for giving us the chance to have our say.

It's good to see that both sides have worked things out and it was just a misunderstanding to begin with. BMC is once again offering their calenders for sale (and they are definitely chock full of black Mustang-ness). You can check out the calender on their site at bmcforums.com