FOM improper use of DMCA to enforce trademarks

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Brought to you by TJ13 writers Andrew Huntley-Jacobs & Mattpt55

Formula One Management Ltd is starting to get tough with social media sites and twitter handles which use F1 as part of their name. TJ13 decided to investigate the matter and have spoken to a number of those contacted by Bernie’s Bullies and a common theme is revealed.

What is clear is that FOM have registered a variety of trade marks and associated logo’s including, ‘F1 FORMULA 1’ logo, ‘F1’ logo, ‘F1 FIA FORMULA ONE WORLD CHAMPIONSHIP’ logo, ‘FORMULA ONE PADDOCK CLUB’ logo, F1™, FORMULA ONE™, FORMULA 1™, FIA FORMULA ONE WORLD CHAMPIONSHIP™, FORMULA ONE PADDOCK CLUB™, PADDOCK CLUB™ and GRAND PRIX™

Any site or twitter handle using the above is currently at risk of receiving a letter threatening legal action.

Twitter have issued a significant number of emails which begin as follows.

“Hello. The following material has been removed from your account in response to the DMCA [Digital Millenium Copyright Act] takedown notice copied at the bottom of this email.”

Some of the twitter account have been locked forthwith and the users unable to access their accounts and change the offending content, losing all their followers.

Early last year, the following appeared on F1.com.

Warning that trade marks used to identify the brand including ‘F1 FORMULA 1’ logo, ‘F1’ logo, ‘F1 FIA FORMULA ONE WORLD CHAMPIONSHIP’ logo, ‘FORMULA ONE PADDOCK CLUB’ logo, F1™, FORMULA ONE™, FORMULA 1™, FIA FORMULA ONE WORLD CHAMPIONSHIP™, FORMULA ONE PADDOCK CLUB™, PADDOCK CLUB™ and GRAND PRIX™ have been registered in the UK, EU and internationally as trade marks, in connection with a wide range of goods and services, interested parties are advised that such trade marks cannot be used by third parties without a specific licence or permission.

This list is not exhaustive. Having denied that social media is relevant to F1, it appears that Bernie and FOM maybe clearing the decks to create more space for their own social media agenda.

Protecting a trademark is fairly standard practice and in itself is no big deal, yet for some reason FOM have not been particularly bothered previously about internet and social media uses and one of the website’s we contacted who changed their name in the past year – even wrote to FOM prior to their launch and received no objection to their proposed name or ensuing actions.

untitledFOM have to be seen to be protecting their trade mark – or there is a risk they will lose it. Though the current lengths they are now going to are in stark contrast with Formula One teams like Williams, McLaren, Red Bull and the Scuderia. They also may be doing this illegally.

Some of the internet websites and twitter handles who have been contacted about their use of word marks are www.theformula1blog.com, @formula1blog, @F1extra (Now @Motorsportsextra), F1 in Pubs (Now Motorsports in Pubs), The F1 Times (Now Grand Prix Times), @Formula1Dragon, @sp_FormulaOne, @FollowFormulaOne, @ThePitStopKid, @deFormula_1 @FordRSEurope. There are others we have not named due to the sensitive information they provided TJ13 with.

Even when just writing about Formula One, people have to be careful as in editorial pieces as even the word mark F1 is protected. FOM state:

“Permitted Word Marks can be used editorially on a website so long as the use is to inform or report and not to brand the website”.

However, there are still a large number of websites and twitter handles failing the following F1 trade mark protection test

“Our Permitted Word Marks cannot be incorporated into or registered as domain names for commercialised websites. Use within domain names for non-commercialised websites (e.g. fan sites or news sites) may be tolerated at our discretion.

Our Permitted Word Marks may be used after a domain name as a sub-domain name so long as the use does not make any unauthorised association with third parties. For example, “www.racingfanatic.com/formula1”

The international law about the ownership of internet domain names and is complex, and it is not clear whether FOM can in fact enforce the above. Particularly the inclusion of ‘F1’ in a domain name, where this is not the main identity of the publishing entity.

For example, people using the format, ‘mysurnameF1’ will be something more difficult for FOM to attack, as the ID of the entity is primarily the surname of the owner of the twitter handle or web page.

Ecclestone lost a legal battle at the turn of the millennium to wrest the F1.com domain name from businesswoman and F1 fan Nicky Morris. She had bought the domain name and established one of the first dedicated F1 websites. It eventually cost Mr. E an estimated $10m to acquire the domain name.

untitledThere are hundreds of individuals and fan sites at present who risk having their sites taken down or their twitter handles locked under the current actions from FOM. However, the following simple guidelines should ensure this does not happen.

Do not use ANY of the F1 registered artwork. Most of this resolves around the F1 logo and its derivatives. Similar fakes based upon ‘F1’ may also be subject to take down notices

Secondly always run a disclaimer.

“This website is unofficial and is not associated in any way with the Formula One group of companies. F1, FORMULA ONE, FORMULA 1, FIA FORMULA ONE WORLD CHAMPIONSHIP, GRAND PRIX and related marks are trade marks of Formula One Licensing B.V. “

Strictly speaking this disclaimer should be inserted into the footer of every webpage that refers to FORMULA 1 racing or the FIA FORMULA ONE WORLD CHAMPIONSHIP.

A similar disclaimer in a twitter header should also be displayed.

However, it appears the heavy handed tactics of FOM’s lawyers may not be legitimate

FOM’s tool of choice has been to issue DMCA take down notices, but a DMCA is supposed to be used only for copyright material. Most of the DMCAs issued by FOM have been for alleged TRADEMARK infringements.

Copyright and Trademark are separate and different protections.

Further, the EU has no equivalent of the USA tool known as a DMCA. The law in Europe requires the petitioner to demonstrate properly that a user is breaching their trade mark or copyright. Merely pointing the host at a web page and asserting copyright ownership is insufficient evidence.

untitledThe Improper use of a DMCA to shut down a Twitter or Facebook account will almost certainly mean the issuer is liable for any damages to the user. This was held to be the case in CROSSFIT Inc v Alvies – a case heard in the U.S. District Court for the Northern District of California in 2014.

Using a DMCA takedown notice to assert what is in fact a trademark claim may lead to section 512(f) liability (LINK)

If you have been locked out of a Twitter account or Facebook account under threat of a DMCA, you should appeal the matter with the appropriate social media entity on which you were posting material.

When setting up TJ13 there was a fair amount of consideration given to the name of the site. Of course we have to thank Grand-pappy Judge and his ancestors for allowing us to use the family name.

But seriously, despite Ecclestone giving the impression he isn’t interested in social media, clearly FOM’s lawyers have ramped up their activity over the past 12 months.

Fortunately, it appears that FOM cannot restrict the use of the twitter hashtag #F1, which is a veritable 25 lane super highway of traffic where anyone who is looking for Formula One information can go.

untitledIt would surely make more sense were FOM to be encouraging the fans use of their brands on social media, simply because many of the marketing tools used to assess global reach, count up the number of times a brand is mentioned, giving it a score which can then be used to negotiate commercial arrangements with sponsors and advertisers.

Fan website and twitter handles could be requested to pay a nominal fee of $1 which would ensure FOM are protecting their trade marks.

The marketing angle is neither Mercedes nor McLaren are hunting people down for using their trade mark words or names as part of someone’s social media presence – and neither is Ferrari who were deemed the world’s most recognisable brand in 2014.

One of the F1 teams who are most well practised in their marketing, will demonstrate very soon the power of social media as a marketing tool. This will see them rack up hundred’s of millions of credits as they become the most talked about entity in Formula One for weeks on end.

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This article should not be construed as offering legal advice. Should you be in legal dispute over your F1 internet presence, you should consult a qualified lawyer specialising in the field of digital media and trademark/copyright. TJ13 is not liable for any actions taken by individuals without proper legal counsel.

11 responses to “FOM improper use of DMCA to enforce trademarks

  1. Very sad that the FOM sees themselves and their brand threatened by these pip squeak websites. As you say, they should be encouraging them not hammering them with threats….

  2. How do I trademark “Greedy Dwarf” – “Norfolk’s Little Shite” – “Ecclestone, Robbing Bastard” ?

  3. I’ve been told that the DMCA is a loophole riddled mess at best. I can use only its clampdown on modifiying modern car ECUs as an example I have personal knowledge of. One thing is to void a warranty if you modify your car’s ECU, but it doesn’t make sense that you can be arrested for it.

  4. Whats there problem with ‘pitstopkid’?
    They cant possibly claim to own the rights to that one.
    I use the phrase ‘i’m off for a pitstop’ every time I go for a shite.

  5. Just shows that “F1” doesn’t understand the wwweb. The only people who make serious, reliable cashflows from the internet are search engines (via linked ads) and online shopfronts. The rest of the web is just advertising.

    The vast majority of those unofficial websites / blogs / pages are doing “F1″ a favour by existing at all.

    Paying for content is a failing model (still). Adverts run in parallel free access to his in-demand content is the only way BE will ‘monetise” his F1 archive to any great degree.

  6. Bernie and his mates are clearly ages behind in understanding what Internet has become.

    Do they really think that what they may be able to control, under the F1* name, can provide all the exposure, information, discussion, that Formula 1 has received through the countless blogs, opinion sites and the like, maintained by true and enthusiast F1 fans?

    Web 2.0 is all about consumer produced content; no organisation can have the resources (let alone the knowledge and the capability of expressing different points of view – always a problem for BE…) of hundreds of thousands of fans spanning the world.

    Get real…

  7. All this got me wondering and it seems that the mobile version of the F1.com website is no more (www.mobile.formula1.com).

    Either BE is planning on forcing people to use his overrated app or there is something else coming.

    Strange things are afoot at the Circle K….

  8. Interesting that DMCA is being used for trademark enforcement by FOM successfully, though it may not be the appropriate tool for purpose. Wonder how many folks have pushed back?

    DMCA is a US law. I’m guessing many (most) of these actions originate from outside the US (FOM is based in UK I suppose, but perhaps not too relevant to my query) against people outside of the US. I wonder if the reason that FOM is able to use DMCA is because the media companies in question are US based (Twitter is US; and the “.com” domain is a US based TLD)?

  9. The FOM should also familiarize themselves with Title 5 of the United States Code, Chapter 1 (Monopolies, etc.) and their EU equivalent. This could be seen as a barrier to trade and an attempt to misuse and abuse their superior position. If found in violation, not only could their be stiff multimillion dollar fines, there could also be jail time in the USA for the individual people within the organization. Perhaps they should reconsider their position and resolve these issues in a peaceful, fair and amicable manner which would reflect better on their standing with the general public

    Disclaimer: I’m not an attorney. Don’t take this as legal advice. Always seek the advice of a professional attorney before thinking about suing.

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