Ferrari recently transmitted a cease and desist letter to Philipp Plein, threatening to sue the German fashion design for posting images of his sneakers on the hood of his own personal Ferrari. On June 30, 2019, on his personal Instagram page, which currently has more than 1.8 million followers, Plein posted an image of a green pair of his branded sneakers atop the rear of his green Ferrari with the caption “50 shades of 🍏 🍏 🍏.” Again, on July 29, 2019, Plein posted another image, which included the same green sneakers atop the hood of (presumably) the same green Ferrari. In response to this series of images, Ferrari sent its letter.
In the letter, Ferrari claims Plein is using Ferrari’s trademarks “for promotional purposes of your brand and products, unlawfully appropriating the goodwill attached to them.” A trademark owner reserves the exclusive right to use its mark in connection with the specific goods or services associated with the same in commerce. Infringement occurs when a second-in-time party uses a similar mark in a manner that is likely to confuse consumers into believing the junior party’s products or services are sourced by, affiliated with, or sponsored by the trademark owner. The concern is that the junior user will wrongfully benefit from the senior user’s goodwill.
Ferrari also accuses Plein’s images of tarnishing the Ferrari brand. In particular, Ferrari states “Ferrari’s trademarks and model cars are associated in your pictures with a lifestyle totally inconsistent with Ferrari’s brand perception, in connection with performers making sexual innuendos and using Ferrari’s cars as props in a manner which is per se distasteful.” Plein’s Ferrari is featured in multiple other Instagram posts by Plein, many of which include scantily clad females draping their bodies over the car or otherwise interacting with the vehicle in a sexually-suggestive manner.
Tarnishment is a type of trademark dilution which occurs when a famous mark is linked to products of poor or questionable quality, or is portrayed in an unwholesome or unsavory context. In this way, the reputation of the mark is harmed. Thus, it appears to be Ferrari’s concern that Plein’s marketing of his brand, including the green shoes, in a manner which includes sexual innuendo will harm Ferrari’s otherwise pristine brand. Notably, none of the complained-of photographs featuring Plein’s actual products appear to include such sexually explicit content.
Philipp Plein is a German fashion designer. Starting in the late 1990’s, Plein’s first collections featured vintage military jackets which he embroidered with Swarovski skulls. Plein’s namesake casual fashion brand was born in 2004 and the luxury read to wear label was launched in 2008. Now, Plein’s collections range from all types of men, women, and junior clothing, shoes, and accessories. Indeed, Plein is the Founder and Chief Executive Officer of the Philipp Plein International Group which includes the Philipp Plein, Plein Sport, and Billionaire Couture brands. Moreover, Plein has worked with numerous notable celebrities including Mischa Barton, Lindsay Lohan, Snoop Dogg, Rita Ora, Naomi Campbell, Iggy Azalea, Grace Jones, Theophilus London, Fergie, Chris Brown, Jeremy Meeks, and Floyd Mayweather.
In his series of posts, Plein further alleges the letter constitutes blackmail, based on the forty-eight hour window it provides for Plein to remove the images from all media. Plein states “FERRARI GAVE ME AN ULTIMATUM OF ‘48’ hours to remove a photo of my PERSONAL FERRARI FROM MY PERSONAL INSTAGRAM !!!!!!” Plein also claims “[t]his is a clear BLACKMAIL !!!!!” Plein’s frustration stems from the fact, as he claims, that he has purchased four new Ferraris in the past ten years and is therefore, a very loyal customer of the luxury car brand.
Cease and desist letters are commonly preludes to litigation. The purpose of the letter is to educate the infringer about the trademark owner’s rights, put the infringer on notice of the infringing activities, and make specific demands, with an implied or explicit threat of legal action if the concerns contained therein are not addressed. While it is doubtful such a standard letter would constitute blackmail, Plein’s other points as to Ferrari’s treatment of loyal customers are well-founded.
Finally, in one of his Instagram posts, Plein ponders “And if I don’t remove it you will do what ??? Take my car away …… hahahahaha.” To date, no lawsuit against Plein, or his company, has actually been filed by Ferrari.