Steve McQueen’s family sues Ferrari over unauthorized use of name

LEGAL ENTERTAINMENT

The children of actor Steve McQueen have fila a lawsuit in Los Angeles County Superior Court against Ferrari for the use of their father's name in the marketing and sale of a limited-edition car. McQueen et al. v. Ferrar N.V. et al., BC715754 (L.A. Super. Ct., filed July 30, 2018).

Ferrari had approached McQueen's family in order to obtain the approval rights to release a special McQueen car -- a type of project that was not new to the family. The McQueen family carefully chooses projects featuring the famous Steve McQueen name and routinely denies projects that do not meet their rigorous standards in order to protect the McQueen name and image. Previous projects include Ford Motor Company launching three limited edition Mustangs, Triumph Motorcycles Ltd featuring McQueen for limited editions motorcycles, and even Porsche releasing branded clothing and accessories featuring McQueen's classic Porsches. The value of using McQueen's name and likeness is unquestionable -- especially on projects connected to cars and speed.

The McQueen family was surprised to find out in 2017 that Ferrari decided to move forward with the McQueen project without the family's full cooperation and permission. The original meeting between Chadwick McQueen and the then-president of Ferrari happened back in 2011 -- so Ferrari was fully aware of the need for permission to rightfully use the McQueen name and likeness. When confronted of the infringing use, Ferrari changed the name of the car to "the Actor," but still refered to Steve McQueen on the website. The family sued for trademark infringement of registered marks, among other trademark- and competition-based claims.

Chadwick McQueen and the trust of his father own six STEVE MCQUEEN trademark registrations listed on the U.S. Patent and Trademark Office's website. None of the registrations are for "automobiles," although there is a registration for motorcycles, which is the same class as automobiles. Even though their registration is not for the specific good, trademark protection is created by the use of the mark in commerce. Since the McQueen name has been used on multiple automobile projects and there are agreements to prove the value of the use of the name on such projects, the family should easily be able to show their ownership and priority of at least common law rights in connection with automobiles and related goods.

Furthermore, in March of 2011, an application was filed by the family for registration of the name in connection with automobiles. The application was filed under both Section 1(b) and Section 44(e) of the Lanham Act. A 1(b) application is filed when the mark is not currently in use in connection to the goods or services but rather the owner of the mark plans to use the mark in the near future. Filing under 44(e) means that the application here would be based on a foreign application and use. The application was extended three times and then abandoned in December 2013. There is no indication whether this application has any connection with the idea and potential use by Ferrari, however, it does show that the name was planning to be used in connection with automobiles at the time.

To prevail on the claim for trademark infringement the family will have to prove they own a valid trademark, they have priority of use, and that the use of the defendant's mark will likely cause confusion in the minds of the consumers about the source or sponsorship of the goods offered. Since the McQueen name and association is well known around the world, the family should not have a difficult time proving the elements of infringement. The name has been used for multiple projects for over 50 years. Consumers would likely be confused as to the sponsorship of the McQueen family with the particular car because not only was Steve McQueen known for his love of cars and speed, the family has already associated his name and likeness with other vehicles and limited releases. To top it off, the family is claiming actual knowledge of infringement to support an award of treble damages under Section 1117 of the Trademark Act.

The complaint also asserts other trademark and brand-based claims of false endorsement and designation of origin, and common law unfair competition, along with the state claim for right of publicity. Generally speaking, the family has a strong argument for all four claims of the lawsuit. The fame of the name is unmistakable. Thus, a question that comes to mind is why would Ferrari put itself in the way of legal liability? The president of Ferrari met with Chadwick to discuss the project and details of the use of the name. The company is fully aware of the need to obtain permission for the use in connection with their cars. It's intriguing to think about how Ferrari will answer the complaint. Did the McQueen family deny the permission? Will Ferrari have a defense to the claims? Will they file an answer or file another type of responsive pleading?

Ferrari has 30 days from the date of service to file some sort of response which should be interesting to see if it will shed light on the motive and rational behind their decision to use the McQueen name.