LAW OFFICES
HOWARD, PHILLIPS & ANDERSEN
A PROFESSIONAL CORPORATION
GREGORY D. PHILLIPS 560 East 200 South, Suite 300 Telephone: (801) 366-7471
Direct Dial: (801) 366-7707 Salt Lake City, UT 84102 Facsimile: (801) 366-7706
E-Mail:
gdp@hpalaw.comJune 19, 2006
Re: VINYLMANIADECALS.COM — Counterfeit Volkswagen Products
To Whom It May Concern:
This law firm represents Volkswagen of America, Inc. (“VWoA”) in trademark
enforcement actions and in trademark litigation. VWoA is a subsidiary of and the exclusive U.S.
importer of cars manufactured by Volkswagen AG and, as such, VWoA is charged with
protecting the trademarks associated with those cars. VWoA and Volkswagen AG are
hereinafter collectively referred to as “VW.”
VW takes policing and enforcement of their trademark rights very seriously, and has
recently obtained preliminary and permanent injunctions against infringers who market and sell
counterfeit Volkswagen trademarks without authorization. VW has also cooperated with law
enforcement in obtaining felony counterfeiting convictions against counterfeiters of the VW
trademarks. State of California v. Lee, et al., BA274850, 2005 LA Criminal Division (three
felony convictions and restitution of $5,000.00 for counterfeit VW and Audi baseball caps).
Recently it has come to the attention of VW that you are infringing upon VW’s
intellectual property rights by manufacturing and/or selling decals bearing the distinctive shape
of the Classic VOLKSWAGEN® BEETLE® without authorization. The distinctive shape of the
Classic VOLKSWAGEN® BEETLE® is a duly registered trademark in the United States that
belong to VW. Use of this trademark, or any confusingly similar variations thereof, without the
express, written consent of VW, violates state and federal law, is misleading to the public, and
constitutes a misappropriation of the goodwill and reputation developed by VW.
The law is well-established that you may not place counterfeits of the Volkswagen
trademarks on your products, and/or sell products manufactured by others that bear counterfeits
of the Volkswagen trademarks. Ford Motor Company v. Lloyd Design Corp., 184 F.Supp.2d
665, 667 (E.D.Mich. 2002) (permanently enjoining the use of counterfeits of various Ford,
Jaguar, and Aston Martin trademarks on floor mats, and granting Ford its attorneys’ fees and
costs because of “Defendant’s flagrant disregard for Plaintiffs’ trademark rights.”). VW cannot
tolerate counterfeiting and infringement of its protected trademarks. An image of your product
as displayed on your website is shown below for your review.
VINYLMANIADECALS.COM
June 19, 2006
Page 2
Compare to United States
Trademark Registration
No. 3043073
Your Counterfeit Decal Product
The law is also well settled that automobile manufacturers have protectable trade dress
rights in the distinctive shapes of their automobiles. See, e.g., Liquid Glass Enterprises, Inc., v.
Dr. Ing. h.c.F. Porsche AG and Porsche Cars North America, Inc., 8 F.Supp.2d 398, 402 (D.N.J.
1998). See also, Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235, 1240 (6th Cir. 1991), cert.
denied 505 U.S. 1219, 112 S.Ct. 3028 (1992) ("[T]he unique exterior design and shape of the
Ferrari vehicles are their ‘mark’ or ‘trade dress’ which distinguish the vehicles’ exterior shapes
not simply as distinctively attractive designs, but as Ferrari creations"); Chrysler Corp. v. Silva,
118 F.3d 56, 58-59 (1st Cir. 1997) (trade dress of Dodge Viper protectable). Volkswagenwerk
Aktiengesellschaft v. Rickard, 492 F.2d 474 (5th Cir. 1974) (affirming injunction barring, among
other things, defendant service shop’ s use of “ any silhouette, picture, caricature, or reproduction
of the shape or appearance of the Volkswagen sedan” ). Volkswagenwerk v. Smith, 471
F.Supp.385 (D.C.N.M. 1979) (“ For many years the Volkswagen Silhouette has been
synonymous in meaning with ‘Volkswagen.’ ” ) Porsche AG v. Universal Brass, Inc., 34
U.S.P.Q.2d 1593 (W.D.Wash. 1995) (enjoining sale of counterfeit Porsche products, including
key chains and license plate frames).
More specifically, numerous courts have recognized that VW has extensive trade dress
rights in the distinctive shape of the Classic VOLKSWAGEN® BEETLE®. For example, in
Volkswagenwerk v. Smith, the court found:
“ The long standing and distinctive shape of this Volkswagen sedan has caused the
American public to identify the shape and the outline and picture of the shape of this
automobile ("the Volkswagen Silhouette") with VWAG and with the products and
services sold by the authorized Volkswagen network. For many years the Volkswagen
VINYLMANIADECALS.COM
June 19, 2006
Page 3
Silhouette has been synonymous in meaning with ‘Volkswagen.’ ” 471 F.Supp.385
(D.C.N.M. 1979).
VW produced the Classic VOLKSWAGEN® BEETLE® automobile for nearly 70 years,
and produced more than 21 million Classic BEETLE® vehicles. When the production of the
Classic VOLKSWAGEN® BEETLE® ceased in 2003, the story made international headlines.
As recently stated by the Washington Post, the Classic VOLKWAGEN® BEETLE® is “ the
most popular car ever made1.” The long-standing fame and reputation of the Classic
VOLKSWAGEN® BEETLE®, together with the recognition by numerous courts of VW’ s
extensive rights in the distinctive shape and styling of the Classic VOLKSWAGEN® BEETLE®
conclusively show that the trade dress of the Classic VOLKSWAGEN® BEETLE® has acquired
secondary meaning.
Your selection of VW’ s distinctive trademarks and trade dress can only lead to the
conclusion that you are attempting to capitalize on and profit from the goodwill and reputation of
VW by misappropriating VW’ s registered trademarks and trade dress in its products.
In order that VW may assess what damages it has suffered as a result of your sale of
products using counterfeits of the VW trademarks, please provide the following information no
later than July 3, 2006:
1) The number of counterfeit products set forth by item (e.g., the classic
VOLKSWAGEN® BEETLE® decals) sold or distributed bearing all VW
trademarks or any variation thereof;
2) The gross revenue received from the sale of such counterfeit products set forth by
item;
3) The time period during which such counterfeit products have been offered and
sold;
4) The names and addresses of all non-retail purchasers of the counterfeit products
and the number of each product listed by item purchased by each such purchaser;
and
1 Kevin Sullivan, Love for the Bug Runs Out; VW to Close Last Classic Beetle Assembly Line, THE WASHINGTON
POST., June 23, 2003.
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June 19, 2006
Page 4
5) The names and addresses of all suppliers of the counterfeit products.
VW further demands that you turn over to VW for destruction all unsold counterfeit
items no later than July 3, 2006. Volkswagen also demands that no later than July 3, 2006, you
pay Volkswagen by cashier’s check damages in the amount of twenty five percent (25%) of the
gross revenues from the sales of any counterfeit products using the Volkswagen trademarks or
trade dress, or $5,000.00, whichever is greater.2
The purpose of this letter is to secure your voluntary agreement to cease from violating
VW’ s intellectual property rights. To demonstrate your agreement to do so, VW requires that
you sign and return the below-attached agreement to me by no later than July 3, 2006. If I have
not received a signed copy of the agreement from you by the close of business on that day,
including the required information, products, and payment, I will infer that you are unwilling to
resolve this matter voluntarily and will advise VW to prepare to file a complaint against you in
federal district court.
You may be infringing VW's intellectual property rights in other ways, and VW reserves
the right to bring to your attention other matters that VW believes infringe its copyrights,
trademarks, and trade dress rights, or constitute false advertisement.
This letter is without prejudice to all rights of VW, including past or future royalties, past
or future damages, attorney’ s fees, and to bring enforcement actions for all past or future
violations of Volkswagen’ s rights.
2In the event that Volkswagen is forced to litigate this matter, Volkswagen will seek all
profits from the sale of such products trebled as damages, plus its attorneys’ fees and costs.
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June 19, 2006
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Should you have any questions concerning Volkswagen’s position in this matter, please
do not hesitate to contact me.
Very truly yours,
Gregory D. Phillips
GDP:jpe
cc: Volkswagen of America
VINYLMANIADECALS.COM
June 19, 2006
Page 6
AGREEMENT
By execution of this Agreement, the undersigned agrees immediately to cease and desist
from all unauthorized uses of the Volkswagen trademarks and trade dress in its products,
services, advertisements, promotional literature, promotional telecasts, broadcasts, signage, on
the Internet, or otherwise, in connection with the sale of any product, good, part, or service.
Specifically, by way of illustration and without limiting the general agreement expressed
above, the undersigned agrees that it will:
(1) immediately cease from the unauthorized use of the distinctive shape of the
Classic VOLKSWAGEN® BEETLE® and all other VW trademarks;
(2) immediately turn over to VW’ s counsel for destruction all products or materials
bearing the distinctive shape of the Classic VOLKSWAGEN® BEETLE®, as
well as any other designs or logos that are confusingly similar to the VW
trademarks;
(3) immediately cease and desist from the advertisement and/or sale of any products
bearing counterfeits of the VW trademarks, and immediately turn over to VW’ s
counsel, for destruction, all parts bearing counterfeits of the VW Trademarks, as
well as any other designs or logos that are confusingly similar to the VW
trademarks;
(4) provide the following information no later than July 3, 2006:
a) The number of counterfeit products set forth by item sold (e.g., the Classic
VOLKSWAGEN® BEETLE® decals and all other products bearing VW
trademarks, etc) or distributed bearing the VW trademarks or trade dress;
b) The gross revenue received from the sale of such counterfeit products set
forth by item;
c) The time period during which such counterfeit products have been offered
or sold;
d) The names and addresses of all non-retailer purchasers of the counterfeit
products and the number of each product listed by item purchased by each
such purchaser; and
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June 19, 2006
Page 7
e) The names and addresses of all suppliers of the counterfeit products.
(5) No later than July 3, 2006, pay Volkswagen by cashier’s check damages in the
amount of twenty five percent (25%) of the gross revenues from the sales of any
products using the Volkswagen trademarks, or $5,000.00, whichever is greater.
The undersigned further agrees that no later than July 3, 2006, the undersigned will
provide evidence of compliance of the matters set forth above to VW’ s counsel.
The undersigned agrees and acknowledges that any violation or breach of this Agreement
will cause irreparable harm to VW, and that VW will be entitled to liquidated damages of
$10,000.00, or what ever profits realized by the undersigned as a result of the violation of this
agreement, whichever is greater. The undersigned further agrees and acknowledges that VW
will be entitled to entry of both a preliminary and permanent injunction against the undersigned
for any violation of this Agreement, as well as any other remedy allowed by law. The
undersigned further agrees that if it breaches this Agreement, it will pay all costs incurred by
VW in enforcing this Agreement, including reasonable attorney’ s fees, whether incurred with or
without suit or before or after judgment.
AGREED TO:
VINYLMANIADECALS.COM
By: _________________________________
Its: __________________________________
Date: _________________________________
I TOOK DOWN EVERYTHING ON MY WEBSITE THAT CAN BE CONSIDERED COPYRIGHT INFRINGMENT. WHAT SHOUDL I DO NOW?