You can't keep a Deadmau5 down: Ferrari roars but Nissan purrs

Every true celebrity, in every walk of life, has his or her own way of attracting attention. Justin Bieber, Paris Hilton, Jose Mourinho, Kylie Minogue, Usein Bolt, Vladimir Putin -- this Kat is stopping here since, the more he thinks about it, the longer the list is likely to grow.  One person who has really done his attention-grabbing in style in recent times is better-known by his curious alphanumeric trade mark than by his real name: Deadmau5.  In this guest post, Lucy Harrold (Consultant Solicitor, Keystone Law) brings us literally up to speed with his latest ploy, with some musings on its intellectual property repercussions.  Lucy writes:

Ferrari/‘Purrari’: Deadmau5 strikes again 

Canadian music producer and performer Deadmau5 (a.k.a. Joel Zimmerman) is busy incurring the IP wrath of big brands this year.  Apart from his fight with Disney over his US trade mark application for a Mickey Mouse-style costume (on which see Marie-Andrée's Kat post, here), Ferrari has sent him a cease and desist letter requiring the de-customisation of his Ferrari 458. 

Earlier this year, Zimmerman de-branded his Ferrari and affixed a wrap in the design of the Nyan Cat 2011 YouTube phenomenon, a ‘Purrari’ badge and the image of a prancing cat on the bumper.  He then drove the car in the 2014 Gumball 3000rally from Miami to Ibiza and afterwards offered the car for sale.  This appeared to be the last straw for Ferrari.  Deadmau5 expressed his outrage about Ferrari’s sense of humour failure on the social media but has nonetheless undone his alterations to the car branding. 

Let's examine the potential legal bases for Ferrari’s claim (or a similar one) were it to be brought in the UK.   A vehicle wrap is perfectly lawful.  It is something many businesses apply to their cars for advertising purposes.  Consumers understand wraps and would be unlikely to see a link between them and the underlying car brand.  There is no reported case in this country objecting to vehicle wraps as damaging the car brand.   Once you have bought your car you may (subject to any contractual or safety restrictions) decorate it as you see fit.  It is noteworthy that one media report has indicated that Ferrari may have relevant contractual terms, giving it a right of first refusal on the onward purchase of the car. 

 What about de-branding your car?  Again, it is hard to see how the car manufacturer could object to such an act and one is left searching for legal analogies.  One ill-fitting analogy is that of de-branding in the context of the importation of repackaged pharmaceuticals.  The Court of Justice of the European Union (CJEU) in Boehringer v Swingward (Case C-48/04 26, noted by the IPKat here) indicated that de-branding was, in its view, inherently prejudicial to the specific subject matter of the trade mark although the CJEU left the ultimate decision on damage to national courts.  Could an argument of damage to the specific subject matter of Ferrari’s trade mark by the removal of the Ferrari badges be made in this-- very different-- context? Affixing the ‘Purrari’ styling and offering the car for second-hand sale may engage trade mark law to the extent that Deadmau5 is affixing signs to identical goods to those for which the trade marks are registered.  

Ferrari would have to prove under Article 5(1)(b) of the Trade Marks Directive that offering the car for sale with the ‘Purrari’ badge and the prancing horse on it amounted to the use of confusingly similar signs on identical goods and that relevant consumers would be likely to think the ‘Purrari’ was being sold by Ferrari or a commercially-linked entity.  However, Ferrari enthusiasts are discerning and unlikely to be easily confused by such re-branding antics.  

Moreover, the purchase of such an expensive car will be carefully considered; a factor making confusion less likely (see the rulings of the CJEU in Sabel v Puma and Canon v MGM).  For these reasons a successful passing off action would also be unlikely. Ferrari might turn to arguments that the use of the ‘Purrari’ styling was detrimental to the Ferrari trade mark under Article 5(2) of the Trade Marks Directive.  Ferrari could argue that the ‘Purrari’ customisation was liable to damage its brand through dilution (making its trade mark less capable of distinguishing its cars from other manufacturer’s cars) or tarnishment (reducing the trade mark’s power of attraction because of a negative impact on it).   

Does the link with the Nyan cat and Zimmerman cause such damage and how would Ferrari prove it?   Raising the nebulous concept of dilution, the 95 year old brand would find itself engaged in a fight over values with the internet age.  Sadly for observers, now that Deadmau5 has ensured his car is once more ‘vanilla’, that particular fight has been avoided. One brand owner, however, with fewer qualms about courting the publicity of the music producer is Nissan, which has reportedlygifted Deadmau5 a GT-R in the same wrap.  

Build your own Deadmau5 mouse-head helmet here
How to remove the smell of a dead mouse here
Why do cats purr? Here
Why do cars purr? Here