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« on: March 17, 2005, 02:59:04 AM » |
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Here is the cease and desist letter I received from this Utah law firm. Read below and have a chuckle. Follow up responses are below the cease and desist letter.
LAW OFFICES
HOWARD, PHILLIPS & ANDERSEN
A PROFESSIONAL CORPORATION
GREGORY D. PHILLIPS
Direct Dial: (801) 366-7707
E-Mail: GDP (AT) HPALAW (DOT) COM
560 East 200 South, Suite 300
Salt Lake City, UT 84102
Telephone: (801) 366-7471
Facsimile: (801) 366-7706
January 3, 2005
VIA EMAIL (postmaster (at) bugauto (dot) com), and
VIA REGULAR MAIL
[NAME]
Bug Auto
[ADDRESS]
Salinas, CA, 93906, USA
Re: BUGAUTO.COM - Infringement of Volkswagen Intellectual Property Rights
Dear Mr. [NAME]:
This law firm represents Volkswagen of America, Inc. (“VWoA”) on intellectual property enforcement matters. Volkswagen of America is a subsidiary of, and the U.S. importer of cars manufactured by, Volkswagen AG and Audi AG and, as such, VWoA is charged with protecting the intellectual property associated with those cars. VWoA takes policing and enforcement of its trademark rights very seriously.
It has recently come to VWoA’s attention that you are violating VWoA’s intellectual property rights in several ways. First, United States Federal law and international law prohibits the unauthorized duplication and sale of copyrighted material. United States Federal law provides for civil penalties of up to $150,000.00 per infringement, criminal penalties, injunctive relief, and substantial monetary damages, including costs and attorney’s fees, in cases of copyright infringement. See 17 U.S.C. §§501, 504. Further, in duplicating and selling copies of Volkswagen’s copyrighted Electronic Parts Catalog, you are engaged in counterfeiting and are violating federal United States and international trademark laws. A copy of your website offering the Electronic Parts Catalog for sale is attached hereto for your reference.
Second, BUG®, VOLKSWAGEN® and VW® are all duly registered trademark in the United States, and in many other countries throughout the world. Use of these trademarks, or any confusingly similar variations thereof, without the express, written consent of VWoA, violates state and federal law, is misleading to the public, and constitutes a misappropriation of the goodwill and reputation developed by VWoA.
You should be aware that Congress has enacted the Anticybersquatting Consumer Protection Act (“ACPA”) that provides for statutory damage awards of up to $100,000.00 per domain name against cyberpirates who misappropriate famous trademarks in Internet domain names. You should also be aware that VWoA takes cyberpiracy very seriously and has in the past obtained judgments against those who have used its trademarks in Internet domain names without authorization. See, e.g., Virtual Works, Inc. v. Volkswagen of America, Inc., 238 F.3d 264 (4 th Cir. 2001) (affirming order requiring Virtual Works to surrender vw.net to VWoA and finding that Virtual Work’s registration of vw.net infringed and diluted VWoA’s VW® mark).
Third, you are using VWoA’s trademarks and trade dress on your website. The image or appearance of a product is referred to as its “trade dress.” The distinctive shapes or images of Volkswagen® vehicles are VWoA’s trade dress and are protected by trademark law just as brand names and design trademarks or logos are protected. The shape or image of Volkswagen® or Audi® automobiles cannot be copied or used in any form (including photographs, drawings, or caricatures) without VWoA’s authorization. Any unauthorized use of VWoA’s trade dress violates state and federal law, is misleading to the public, and constitutes a misappropriation of the goodwill and reputation developed by VWoA.
Numerous courts have recognized that the right to capitalize on the good will associated with VWoA’s products belongs exclusively to VWoA. See, e.g., Volkswagenwerk, AG v. Smith, 471 F. Supp. 385 (D.N.M. 1979) (holding defendant service shop’s reproduction of Volkswagen silhouette on business advertisements infringes Volkswagen’s trade dress and constitutes unfair competition); Volkswagenwerk Aktiengesellschaft v. Rickard, 492 F.2d 474 (5 th 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”). Indeed, the law is well settled that manufacturers have protectable trade dress rights in the distinctive shapes of their automobiles. In Liquid Glass Enterprises, Inc., v. Dr. Ing. h.c.F. Porsche AG, 8 F.Supp.2d 398 (D.N.J. 1998), Judge Barry preliminarily enjoined Liquid Glass from using photographs of a Porsche 911 in its advertising, explaining that such use was prohibited because “Liquid Glass wanted to cash in on the good will that Porsche has worked hard to create and maintain by aligning itself with Porsche.” Judge Barry further found that the defendant’s use of pictures of Porsche automobiles in its advertising diluted Porsche’s trade dress because such use “is likely to slowly whittle away the distinctiveness of Porsche’s marks, demeaning the Porsche cachet and blurring the value of its famous and strong marks.” Id. at 405.
Liquid Glass is consistent with many other cases holding that a business cannot use photos or drawings of a distinctive automobile to promote its goods without the manufacturer’s authorization. See Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235, 1240 (6th Cir. 1991), cert. denied, 112 S.Ct. 3028 (1992) (holding “exterior design and shape of the Ferrari vehicles” protectable trade dress); Chrysler Corp. v. Silva, 118 F.3d 56, 58-59 (1st Cir. 1997) (holding image of Dodge Viper protectable trade dress).
Finally, you may not conduct business under the name “Bug Auto” or under any other name that incorporates VWoA’s trademarks. The law is well settled that independent facilities cannot use a manufacturer’s trademarks, or even variations of such trademarks, in business names, on signage, in telephone listings, on stationery, in answering the telephone, or otherwise, and judges typically award significant damage awards against repair shops that do so. See Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir. 1999) (enjoining motorcycle repairer from using manufacturer’s “bar-and-shield” logo in signage and in advertisements); Volkswagen Aktiengesellschaft v. Uptown Motors, 1995 WL 605605 (S.D.N.Y. 1995) (enjoining use of VW and Audi trademarks in yellow pages ads); Volkswagenwerk Aktiengesellschaft v. Rickard, 492 F.2d 474 (5 th Cir. 1974) (affirming injunction against use of VW trademarks in advertisements and signage); Harley-Davidson Motor Co. v. Iron Eagle of Central Florida, Inc., 973 F. Supp. 1421 (M.D. Fla. 1997) (enjoining use of “winged logo” in business name, advertisements, signage, and otherwise).
By this letter, VWoA demands that you agree to cease and desist immediately from (1) the unauthorized sale of copyrighted material, (2) the use of VWoA’s BUG® trademark in the Internet domain name bugauto.com, (3) the use of other VWoA trademarks and trade dress on your website, and (4) the use of the business name “Bug Auto.” Accordingly, by no later than January 17, 2005, please sign and return a copy of the below-attached agreement, memorializing your commitment to cease and desist from your unlawful activity. If I have not received a signed copy of the agreement from you by the close of business on that date, I will infer that you are unwilling to resolve this matter voluntarily and will advise VWoA to file suit against you and seek damages of $100,000.00 under the ACPA, monetary damages for trademark infringement, an injunction, and recovery of its attorneys’ fees and other costs.
You may be infringing VWoA’s intellectual property rights in other ways, and VWoA reserves the right to bring to your attention other matters that VWoA believes infringe its copyrights, trademarks, and trade dress rights, or constitute false advertisement. This letter is without prejudice to all rights of VWoA, including past or future royalties, past or future damages, attorney’s fees, and to bring enforcement actions for all past or future violations of VWoA’s rights.
Should you have any questions concerning VWoA’s position in this matter, please do not hesitate to contact me.
Very truly yours,
Gregory D. Phillips
GDP:sv
cc: Linda Scipione
AGREEMENT
By execution of this Agreement, the undersigned agrees immediately to cease and desist from all unauthorized uses of Volkswagen and Audi intellectual property, including Volkswagen and Audi copyrighted material and trademarks, in its products, services, advertisements, promotional literature, promotional telecasts, broadcasts, and signage, on the Internet, or otherwise, in connection with the advertisement or sale of any product, part, good, or service.
Specifically, by way of illustration and without limiting the general agreement expressed above, the undersigned agrees that he will
(1) immediately cease the unauthorized manufacture, advertisement, and sale of any product displaying or incorporating copyrighted material owned by Volkswagen or Audi;
(2) provide the following information by no later than January 17, 2005: a) The number of products set forth by item sold or distributed displaying or incorporating copyrighted material owned by Volkswagen or Audi or using or bearing any Volkswagen or Audi trademark; b) The gross revenue received from the sale of such products set forth by item; c) The time period during which such products have been offered or sold; d) The names and addresses of all non-retail purchasers of such products and the number of each product listed by item purchased by each such purchaser; and e) The names and addresses of any suppliers of the products and which product each supplier supplies;
(3) by no later than January 17, 2005, pay Volkswagen by cashier's check damages equal to the gross revenues received from the sales of any products displaying or incorporating copyrighted material owned by Volkswagen or Audi or any products using or bearing any Volkswagen or Audi trademark for the past five years (i.e., from January 1, 1998, through the present);
(4) by no later than January 17, 2005 transfer to VWoA the registration for the domain name bugauto.com, and agrees to sign all forms necessary, to provide other necessary information and documentation, and to send such electronic mail messages as may be necessary to accomplish the transfer of the domain name;
(5) immediately cease from the unauthorized use of VWoA’s trademarks and trade dress;
(6) immediately turn over to Volkswagen for destruction all unauthorized products, packaging, labels, and products displaying or incorporating copyrighted material owned by Volkswagen or Audi or using or bearing any Volkswagen or Audi trademark;
(7) by no later than January 17, 2005, submit to all government offices with which the name “Bug Auto,” or any other name that uses VWoA’s trademarks or variations of VWoA’s trademarks, has been registered, all forms necessary to immediately discontinue any such registration;
(8) by no later than January 17, 2005, deliver by certified mail to any telephone or Internet directory in which it currently has a listing or advertisement under the name “Bug Auto,” or any other name that uses VWoA’s trademarks or variations of VWoA’s trademarks, a letter instructing that such listing or advertisement be canceled and not be renewed under any such name;
(9) furnish this office with a copy of any letters or forms described in the preceding two sections; and
(10) immediately turn over to counsel for VWoA for destruction all signs, banners, business cards, stationery, brochures, advertisements, and other documents displaying the name “Bug Auto,” or any of VWoA’s trademarks or variations of such trademarks.
The undersigned further agrees and acknowledges that any violation or breach of this Agreement will cause irreparable harm to Volkswagen, and that Volkswagen will be entitled to 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 he breaches this Agreement, he will pay all costs incurred by Volkswagen in enforcing this Agreement, including reasonable attorney’s fees, whether incurred with or without suit or before or after judgment.
AGREED TO:
[NAME]
____________________________________
Date: _______________________________
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