Things are looking up for Icon. The company just moved from its tiny original location to a sprawling new facility, and every machine its craftsmen produce is sold before the final bolts are tightened. There's even talk of finding ways to triple production in order to keep up with demand. In addition to the off-road titans and clever Derelict models we know and love, Jonathan Ward, CEO and Lead Designer with the company, is busy working to expand his business with corporate partnerships and new products that go beyond old metal. But Icon recently made headlines for another reason altogether.
As you may recall, Icon recently accused Hot Wheels and parent company Mattel of infringing on the customizer's design and naming trademarks. Jonathan Ward, CEO and head designer for Icon, says the trouble started in September, 2010 when he pitched the idea of a die-cast Icon model to Alec Tam, the design director for Hot Wheels. Ward sent an email with the full Icon product book to Mattel to no avail. Six months later, he received a note from a customer congratulating him on scoring a deal with Hot Wheels. The client had spotted a rendering on the Hot Wheels future product page that looked awfully similar to a promotional shot Icon uses for the company's FJ40 model.
Aside from a little paint, a few decals and some suitably over-the-top wheels, the parallels between the Hot Wheels rendering and a photo Icon's general manager shot during FJ40 suspension trials in the desert were unavoidable.
"It just didn't sit right with me," Ward said. "It wasn't about revenue. It just didn't seem right."
Even worse, Hot Wheels designated the toy a "Toyota Land Cruiser FJ40." While Mattel licensed the use of the Land Cruiser name and design from Toyota, neither company holds the trademark to "FJ40." The name originates from part of the 17-digit VIN code found on vintage Land Cruisers, and while enthusiasts the world over recognize FJ40 as a Land Cruiser designation, Toyota never marketed the model as such. Ward applied to trademark the FJ40 name for his use in 2005, and received the official registration in 2009, giving Icon alone the power to license the name.
"The problem with marks is, if you don't diligently protect every infringement on your mark, they go generic," Ward said. "If Jeep wants to come out with an Icon trim edition in the fall, there's a strong legal potential that the mark is deemed generic and I've got nothing. It just ruins my brand."
"The problem with marks is, if you don't diligently protect every infringement on your mark, they go generic."
Ward initially reached out to Hot Wheels via email, and says the company responded by asking which areas of the vehicle design he felt belonged to Icon. That's when the lawyers got involved. On August 1, 2011, Icon's legal counsel sent a cease and desist letter to Mattel officially informing the company of its issues with both the rendering and the toy itself. Mattel pulled the rendering from the company site, and its law team replied on September 9, saying it disagreed with Icon's allegations.
Mattel argued that it holds a licensing agreement with Toyota for the Land Cruiser name, and that it has been manufacturing and selling toys inspired by the Toyota Land Cruiser since 2009, and off road iterations since 2010. Furthermore, the toymaker said the "FJ40" designation is merely used to describe the model, and as such, falls under the fair use provision of U.S. trademark law. The company said it simply doesn't have any other way to identify the toy. Under the law as its written, someone may use a trademarked phrase or design for purposes of comparison, criticism or as a point of reference.
Icon's lawyers had been quick to point out that the Hot Wheels toy looked more like an Icon FJ40 than the original Toyota Land Cruiser, and laid out a litany of 13 similarities between the rendering, the finished toy and the Icon FJ40 itself. In its letter, Mattel dismissed those claims, saying in order for Icon to have a trade dress, it must prove its elements are inherently distinctive, that there's a likelihood of causing confusion among consumers and that the design elements are nonfunctional. Mattel claimed that since elements like the bumper, doors, fuel door, lights and roll cage were all functional, Icon didn't have a case. The corporation wrapped up its argument by saying the original rendering was "not identical" to the Icon FJ40, but more importantly, it wasn't identical to the final Hot Wheels toy, either.
Icon's lawyers had a field day dismantling the Mattel argument. Citing cases from Ferrari, Rolls-Royce and even Fudruckers, the counsel showed the courts have held elements that are separately unprotectable can be protected as a whole under U.S. law. That means that while elements like Icon seats, shifters or lights may not be defendable as a trademark on their own, taken as a whole, they represent a complete creation. That creation's design can be taken as a trade dress. Furthermore, Rolls-Royce once showed an object can be both functional and a trade dress in a suit involving the company's iconic grille.
Then came the fair use argument. Icon showed there had already been confusion amongst consumers by quoting from internet forums, where users were debating on whether or not the Hot Wheels rendering depicted an Icon model. Confusion had already taken place, and Icon argued Mattel was attempting to capitalize on the FJ40 trademark held by the shop in Los Angeles.
On October 7, 2011, Mattel asked for more time to consult with Toyota on the matter. Icon reached out again after 30 days, at which point Ward says the toymaker insinuated Icon was welcome to attempt to sue over the alleged infringement.
Mattel has a long history of going to bat over its own perceived trademark infringements. Most recently, the corporation sued MGA Entertainment over the design of the Bratz doll line. Mattel alleged Carter Bryant, the mind behind the multi-ethnic dolls, came up with the idea for Bratz while employed by Mattel. MGA Entertainment won the case, and courts awarded the company $309 million in damages.
In 2002, the toymaker took MCA records to court over Aqua's pop hit "Barbie Girl." The toymaker said the lyrics violated the Barbie trademark and turned the toy into a sex object. Mattel even went so far as to say the album's cover used "Barbie Pink," a color owned by the corporation. Lower courts dismissed the accusations, but Mattel took the fight all the way to the Supreme Court. Judges ruled the song was a parody, which is protected under the First Amendment.
The list goes on and on. There's the small feminist press that was pressured into changing the title of "Adios Barbie" to "Body Outlaws" in 1998 for fear of being litigated into bankruptcy. And the adult film star who Mattel sued over her stage name, Barbie Benson. Both parties settled that case, but Mattel has also had plenty of issues barreling over trademarks held by other parties. Donna Douglas, the actress who played Elly May Clampett on "The Beverly Hillbillies" won a settlement from the toymaker in 2011 over the Elly May Barbie doll for using the character's name and likeness.
Autoblog reached out to Mattel for comment on the Icon claims, and the company sent this response:
Mattel respects the intellectual property of others and takes these types of allegations very seriously. We strongly disagree with the allegations from JW Motion and the facts they have presented. In particular, the artist's concept illustration that has been publicized was not intended to be an accurate representation of the actual Hot Wheels Toyota Land Cruiser FJ40 toy vehicle that Mattel eventually produced. That image, which was only posted on hotwheels.com for a short period of time, was taken down permanently last fall.
We had previously been in dialogue with ICON's attorney for a period of about six months regarding this; however we have not heard from them since our last communication nearly four months ago. Hot Wheels Toyota Land Cruiser FJ40 toy vehicles are produced by Mattel under license from the Toyota Motor Corporation.
When we asked specifically about the FJ40 trademark, the company said there was no one to speak to on the matter, and that it had provided all it had on the situation. Mattel is currently the world's largest toymaker, and as such, lawsuits of every shade are bound to be part of the territory.
Ward, meanwhile, says he isn't angry about the toy or the rendering. As a long-time Hot Wheels collector and fan, he's more upset about the way the corporation has handled the situation.
"I would have been happy with a, 'Hey, I'm sorry," he said. "I would have accepted an acknowledgement of a bad decision or something that snuck by. Any sort of reasonable discussion. But instead I was met with an arrogant, litigious attitude that required me to hire attorneys."
"I would have been happy with a, 'Hey, I'm sorry."
And now that the situation has grown into legal sabre rattling from both sides?
"I'd love to come up with a resolution with them," Ward said. "They could pay me a penny and do a proper series of Icon models based on my designs. It's a no brainer. It creates the next generation of consumers for our products."