Talk about a hot set of wheels.
California custom car builder ICON has gone public with claims that Mattel has stolen one of its trucks, or at least its image and name, to create a Hot Wheels toy.
Mattel denies the allegations.
The boutique shop, founded by former TV and film actor Jonathan Ward, manufactures modern versions of classic cars and off-roaders including the Ford Bronco, Jeep CJ and Toyota Land Cruiser FJ40 and currently holds a trademark to the FJ40 name, which it originally filed for in 2005. The company sells about 25 vehicles a year at an average price of $150,000 each.
In July 2011, Ward learned through one of his customers that Hot Wheels was marketing a product that appeared to be based on ICON’s take of the FJ40. The promotional image for the toy was clearly an animated rendering of one of ICON’s own photos, with Ward himself seen seated in the driver’s seat. The image has since been removed from the Hot Wheels website.
Aside from the paint color, some decals and the addition of oversize wheels, the truck in Mattel’s image features the same bull bar design, off-road light arrangement and many other details as the ICON model, also referred to as “trade dress,” some elements of which are vaguely reflected on the toy itself.
Ward tells FoxNews.com that he approached the Hot Wheels design director to discuss what he considered an infringement on ICON’s trademark and brand identity and how they could work together on the project moving forward. The response was that Mattel had the necessary approvals from Toyota to produce the vehicle and that ICON needed to provide more specifics on exactly what it was claiming ownership to.
ICON’s lawyers then sent Mattel a cease and desist letter and, according to Ward, were told that Mattel was interested in resolving the matter amicably. After ICON laid out its specific concerns regarding the design, in a lengthy letter, Mattel responded that there was no protected trade dress exhibited by the toy truck or its packaging that ICON could claim ownership to and that Mattel was using the FJ40 designation as a fair use under law.
Mattel licenses the Land Cruiser name from Toyota itself.
Ward says ICON then attempted to press the issue, but was eventually informed by Mattel that it would no longer take part in their “friendly” discussion, and that ICON would need to bring the matter to court if it wished to pursue it further.
In an e-mail, Mattel spokesman Alan Hilowitz told FoxNews.com: “Mattel respects the intellectual property of others and takes these types of allegations very seriously. We strongly disagree with the allegations from JW Motion [the LLC that operates ICON] and the facts they have presented. We had previously been in dialogue with their 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. The Hot Wheels Toyota Land Cruiser FJ40 vehicle referenced is produced under license from the Toyota Motor Corporation by Mattel Inc.”
Citing the high cost of legal fees expected to defend his position against Mattel, which is the No. 1 toy maker in the United States, Ward has now taken his story to the court of public opinion, publishing it in his company’s monthly newsletter with a not-so-subtle plea to any lawyers interested in helping out.