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Ferrari Overreaches As it Tries to Control Design Publicity

Adam Holland, Jalopnik, December 12, 2012

Abstract: Ferrari, seeking to control its designs and how they are publicized, takes down not just an unauthorized image of a modded Ferrari, but the entire website on which the image was hosted.

Ferrari fans may know that Ferrari the company has a need for control over its branding that some might describe it as obsessive.

The folks over at Jalopnik have a story describing the latest such episode.

From the details, it is apparently exactly the sort of thing Chilling Effects exists to make transparent, as well as to provide a research platform for analyzing.

It seems that some Ferrari enthusiasts at exotic car tuning shop Milano Torino [This link may not work, for reasons explained below] wanted to create a "new" Ferrari design, one that was a mash-up, if you will, of a newer Ferrari model with an older one. Specifically, a Ferrari F12berlinetta and a Ferrari Daytona.
You can still see the concept car in question here.

Needless to say this sort of conceptual fusion and the related use (implicit or explicit) of Ferrari trade dress and trademarks, is not the sort of thing Ferrari endorses or even condones.

Were Milano Torino creating their new hybrid by physically modifying a real car they owned? No. This fusion happened exclusively in Photoshop, and the resulting picture was published to their website, and of course, immediately elsewhere, like Jalopnik and TopSpeed.

Ferrari took near immediate action, and here's where it gets interesting.
Not only did Ferrari file a notice asking Milano Torino's ISP to remove the image in question, which is presumably within Ferrari's rights, however questionable a decision from a customer relations standpoint, Ferrari somehow arranged to have Milano Torino's entire site taken down.

Jalopnik quotes a statement from Ferrari's attorney (of which we haven't been able to locate a copy yet, check back for updates).

"Ferrari never authorized Milano Torino to design a car named Ferrari 770 Daytona, nor to use its trademarks,
- Ferrari asked and obtained to take down the website matrix911.wix.com/milantorino."

That's a takedown notice we here would love to see!
Also, is that kind of mountain/molehill response even within the contours of the relevant law? Wix.com, Milan Torino's host, is apparently "headquartered in Tel Aviv, with offices in San Francisco, New York City and Dnepropetrovsk".

I haven't dug deeply into this, but as recently as 2008, Israeli law on notice and takedown was as follows "When it comes to ISP safe harbors, Israel has a notice and takedown system that lets copyright owners notify an ISP regarding infringing material on its servers. In such cases, the user hosting the material has three days to respond to the charge;"
I couldn't find anything about wholesale site removal, and of course there's nothing like that in the U.S.'s DMCA.

Of course, this wouldn't be the first time we saw a massive over-reaction to a takedown request. Astute readers will recall the recent EduBlog and ServerBeach debacle.

That, at least, was later admitted to be a mistake. ( At least after the negative publicity) But at least so far, Ferrari doesn't seem to think there was any error, and as their lawyer's statement reveals, explicitly sought to have the entire website to come down, which seems dubious to say the least, and retaliatory or punitive if one was feeling less charitable.

Whatever is going on here, Chilling Effects remains committed to keeping you informed about this sort of "some Internet users are more equal than others" activity, and will update the story as we learn more.

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Ferrari Overreaches As it Tries to Control Design Publicity, Adam Holland, Jalopnik, December 12, 2012 Fourth Circuit Rules For Critic in Falwell Domain Name Dispute, Public Citizen, August 26, 2005 Gripe Site Win: TrendMaker Homes Critic Keeps trendmakerhome.com, Paul Alan Levy, CircleID, April 30, 2004 MikeRoweSoft Names His Price, AP, January 26, 2004 Protection of Non-U.S. Trademarks under U.S. Law, Mark Matuschak and Vinita Ferrera, Hale & Dorr Internet & IP Alert, July 21, 2003 more

Related Resources

Whois.cc, Domain Name Registration Information (search tool) Considerations for innocent domain name owners, Oppedahl & Larson LLP (reference) UDRPlaw.net, Patrick L. Jones, (website) Using ICANN's UDRP, Berkman Center (reference materials) ACPA, Anti-cybersquatting Consumer Protection Act (federal statute) Uniform Domain-Name Dispute-Resolution Policy, ICANN (rules and policy) more