If you’ve ever stood in the shower wondering if you could be sued because you made a certain 3D model of a certain brand of car, wonder no more. Precedent has been set. BMW Group, which includes Bayerische Motoren Werke AG, BMW of North America, Rolls-Royce Motor Cars, and and Rolls-Royce Motor Cars NA have filed suit against Turbosquid, 3D model marketplace for professionals who need high quality 3D assets.
The suit was filed on May 3, 2016 with a requirement for Turbosquid to file with the Court within 30 days. A trial by jury is called for with no date pending. The suit does not say if BMW Group had contacted Turbosquid prior to filing the suit and Turbosquid hasn’t reported any prior dealings.
Protecting Design reports, “BMW Group is seeking a permanent injunction for infringement, destruction of products, advertisements, and packaging in TurboSquid’s possession or control bearing BMW Group’s trademarks or trade dress, and recovery of TurboSquid’s profits from the alleged infringement, treble actual damages, and reasonable expenses.”
The claim is exhaustive, but it’s goes deeper than Turbosquid and users in their community making money off of 3D models of BMWs. It starts all the way down at the marketing of the 3D assets. The suit claims that Turbosquid Inc. itself is responsible for violating “the Trademark Act of 1946… and New Jersey law through its marketing of 3-D virtual models of vehicles that infringe the BMW Group’s trademark, trade dress, and design patent rights.”
3D models of BMW vehicles still show in the search, but no models are available for download or purchase.
They didn’t leave any possibility out either. The suit brings up 12 counts and 78 claims of common law violations and design patent infringement, including the claim that Turbosquid “has caused BMW AG to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude others from making, using, selling, offering for sale and importing the patented invention.”
What’s more, the suit goes on to include members of the Turbosquid community and their partners, calling for any to be “enjoined and restrained, during the pendency of this action, and permanently thereafter” from selling any product that incorporates the designs, using the BMW trade dress, using the trademark, engaging in activity constituting unfair competition or doing anything else that would lead others to believe any or all is approved by BMW.
The suit not only calls for Turbosquid to destroy “all labels, signs, prints, packages, bottles, receptacles, containers, and advertisements… bearing the BMW Group’s trademarks,” but also call for an accounting for complete restitution of all profits and payments for any profits resulting in the sale of any 3D assets.
While time will tell if the 3D models themselves fall under any of the design patents, the use of trade mark and trade dress certainly would. And while there’s a sense in the 3D community that models of these vehicles only serve to promote and popularize the brand, the car manufacturer itself feels it only serves to undermine the intellectual property and control it has on who uses their marking. But wouldn’t it do more for the brand and the community to share approved branding and promote the elite among 3D professionals? Maybe take a page out of the Ford playbook?
On the flip side, I see a lot of artist who have their work copied or blatantly stolen, re-marketed and sold, and the comments for justice that go along with the offense. One could argue that BMW Group, as the artist, is only trying to protect what they have created, that inaccurate copies only diminish the quality and tarnish the name. Are they wrong in their claims simply because they are a ‘large corporation’ with popular brands and the money to hire Saiber Attorneys at Law?
BMW Group is going after Turbosquid guns a’blazing, and obviously it trickles down to the 3D professional and the studios who either model or needs a model of a certain car.
With the precedent now set, how do companies like Turbosquid, their community, sites that promote 3D artists and their models (ahem) and 3D professionals move forward? Will you keep modeling their cars? Will you sell them online?
Lead Image: BMW i8 model image from Turbosquid. One of the more popular BMW models on Turbosquid in 2016.