Shelby and SAAC at Odds

It seems to me this whole thing is about a fan club, .....that became a fan organization, .....that became a fan business more preoccupied with it's own image and status than the object of it's original intent.. It WAS about this neat guy and the cars he made. And how to make them go fast. Now it is all which of these cars is worth the most.. and protecting their value..

I come not to praise Caesar .. but to bury him..

 

Actually, the correct line is:

 

But who said that?

 

Antony

 

Nope.....




the undertaker

 

From suits I've read about, assets acquired due to illegal us of a trademark become the basis of calculating the damages to the injured party.

For example, if Joe's Cord Autoparts gets sued by Cord after ignoring a "stop & desist" the damamge to Cord is, at a minimum, the business generated by the misuse. I say at a minimum because any damage to Cord's good name could far more than the specific business generated.

IF Shelby and/or Shelby American were existing use- or registered-trademarks and SAAC (Shelby American Automobile Club) was using the them without license, assets acquired through that illegal use become the spoils of the valid markholder. They were clearly using Shelby American right in their name, but the validity of that use (initially) and validity/satisfaction of the license to use them (as in the "agreement") will be key and will likely have to be decided by the courts, imo.

If either of those (or any other infringed marks) were registered, the burden of proof is on the accused (really) to prove they did not (very difficult burden). If use-marks (unregistered), the burden is on the use-mark holder to demonstrate to the satisfaction of the court sufficient evidence that actual illegal use of the mark occurred and that the such use was predated by the accusing use-mark holder.

That why companies spend the money and time to register their marks -- doing so effectively shifts the assumption of innocense to the R-mark holder, not the acused infringer.

This is why I keep bring up the 'agreement.' It's not about the $1/year or providing annual financial statements or honoring the other terms, except to the extent that using Shelby's marks without license makes the defense of SAAC's innocense substantially tougher, if not impossible, imo, even if the court minimizes the calculation of damages (just my take, guys -- I call it as I see it) because it self-documents the violation (IF true) ...which is why $1 is in there... it is the contract's "consideration" i.e. the payment that makes the license valid. No payment = no valid license. No valid license = potential infringement. Infringement = damamges. Damages = $/assets.

That's why the agreement is important. That's why trademarks are important.

Dan

<edit:> I don' know of any filings either but that doesn' mean anything. I thought I saw a cease and desist letter so this would seem to be an infringement case. If Shelby has filed to register SAAC as a trademark, that is tantamount to kicking the whole infringement process off because SAAC will object, etc (see above.) This is not a criminal trial. I would think it will likely be a trademark infringement suit in Federal [district?] court (dunno which, IP/TM theft/infringement is handled in special ways and I'm not a lawyer).

One thing I will say is I do not believe all the FUD (Fear, Uncertainty and Doubt) SAAC folks are spreading here and on the SAAC forums about Shelby's motives, Shelby's plans to bilk owners for free services, etc. I think Shelby's pi$$ed at his mark infringement even after giving SAAC a blue-bird deal on a licensing agreement, and their seeming intransigence to step-up and fix the problems when initially confronted (just call it as I see it). And when they pushed-back I think (dunno) he got more concerned, terminated the agreement, and decided to pull the SAAC 'activities' in-house. How/if he does that, what SAAC gets to keep doing, what things can be called, etc. will all shake out from the trademark filing and it's eventual resolution, imo.

 

Motive, now were getting down to the brass tacks off this matter and the real deal. Is it money? Legacy? Control? Shelby has made some statements that allude to possible reasons but it remains largely unclear. One such statement is, "I'm tired of them." I'm not sure what that means or why he is tired, but I think it goes to the core of the problem, the legal points raised are largely 'fluff' to support this primary reason. Of course it is his right to be 'tired' and doesn't have to specify to any of us, but it IS the fundamental reason behind this mess.

SAAC's "FUD", as it has been refered to, is a reasonably accurate assessment of the situation as I see it. It is highly unlikely services that SAAC in the past has provided essentially for free will now come with a fee. If I don't miss my guess, it will be a hefty fee and will increase over time and owners will be surprised at how every little question/answer will carry a specific price. It may dependant on the year of the car, it's estimated value, the research required for verification, legal fee's, etc. etc. etc. This is an ENTIRELY reasonable scenario and official statements from a Shelby Corp. saying it aint so will be met with great suspicion (at least by me)! Give it time, it's coming like a frieght train roaring down the mountain.

The personal 'problems' may well be beyond 'fixing', as I see it. Simply put, Shelby wants more control of the registry, events, banquets, news letters, locations, legacy, enrollment fee's, dress code ad infinitum than SAAC personel are willing to give up. THIS IS THE CORE PROBLEM, good or bad, like it or not, there it is! It is reasonable, logical and justified for him to pursue doing it 'his way'. It is reasonable for SAAC to speculate on what the outcome of such a registry may be, as we are doing and have done here. I don't think there to far off the mark, but I could be wrong...

Fee's assessed in the future may well be within reason, considering the work involved. I'm not saying it's unreasonable to charge fee's, but it's unreasonable to assume they WON'T charge fee's!

 

I don't know what Shelby's answer would be but, if it was me, I'd be tired of SAAC's intransigence to a signed contract that gives them a 'gift' ...a valuable license for a nominal charge that permits them to have a business in the first place. Without use of the term Shelby Automobiles, how could SAAC have ever conducted business legally? That's what it's about, imo. Why now? Maybe he's a patient man and his patience with SAAC ran out. Doesn't matter, does it? (not emotionally ...legally). That's how judge will look at it, imo. But ...who knows?

What makes anyone think that Shelby will charge for anything that SAAC doesn't now or won't in the future? SAAC isn't a not for profit legal entity, are they? Or is this the Carroll is a Shark sentiment surfacing again. Even though it would be his perrogative, would it not be foolish of him to take advantage of SAAC members? Those are the folks who bought his cars (new or not). Those are the folks near and dear to his heart. Why does it seem there has to a sinister motive just because he's "tired" of the BS he felt he was getting (just a guess <lol>). The license exists at his pleasure. That should not be so hard to accept even if the potential consequences seem distasteful. I'm astounded that FUD can overcome so many folks when "Ocam's Razor" would say he's simply unhappy with SAAC. ...and, btw, he legally owes SAAC no answer whatsoever on that ... really. The agreement states wither party can terminate it. If SAAC was unhappy with Shelby, they should have terminated their responsibilities. But that would have meant an end to SAAC's control. Maybe SAAC is actually the control freak who, under the guise of benevolence, is now addicted to the power and glory (tho it takes effort it's rewarding or they would not be doing it) and control of what Shelby's true benevolences permitted them to create in the first place. SAAC clearly started using that term prior to a license. Would SAAC been happier if Shelby brought an infringement suit back then rather give SAAC a license for a buck/year? How could he have been more accommodating than he was? Maybe that's why he's "tired" of an intransigent SAAC now? We may never know that answer but, if I were he, that's what would be sticking in my craw. SAAC officials ought to think long and hard about that, imo. But, what do I know? Certainly nothing specific on this subject (I'm not privy to Shelby's thoughts or motives, that's for sure!), but 30 years of Fortune 20 business, management and strategic planning eperience helps you cut thru BS quickly. Btw, I doubt that Shelby would say anything about future plans on this subject given the situation ...even if they know what they want to do <lol -- just some humor there ;-)>

You may be right about what Shelby wants control over. I have no idea if that's it (vs just be tired/pi$$ed at SAAC), but it's plausable and makes business sense ...and that may well be the core problem as you say. I think the fear is unfounded and the FUD unnecessary, but I have to say that I'm impressed with the unity of SAAC. I don't know if their positions broadly reflect the membership and I don't agree with many of the views, but SAAC seemingly has knit an organization that has successfully helped many member-owners and they deserve kudos for that ...undoubtedly due to a lot of pick and shovel work over many years. Still, I'd be very surprised if Shelby's motives are evil in any way. He may be a sharp businesman and, as someone pointed out earlier, 2nd place is 1st-loser to a true racer. But that doesn't make him an evil person or having bad motives in this, imo. Some of the most talented executives I've known are single-mindedly goals-driven, but I've learned over may years that what they have in their hearts is thoroughly independent of how hard-charging and focussed they are. Good comes in all wrappers as does bad.

Excaliber, I appreciate your honesty and evenness ...I may not agree with you on some but I genuinely appreciate you being able to keep the subject and the emotions separate ...a lost art these days.

I just hope this all works out in the best interest of the enthusiasts ...ultimately they are the true keepers of the flame. Ultimately they are what made Shelby's legacy so durable and SAAC's. In the courts or not, this will work itself out. maybe we'll look back in five years and it will be a "thanks, I needed that" moment for all involved. Only time will tell, but good people will produce good results working together -- that's always the key it seems to me. This will test the mettle of both parties and, though it may take some time, we will ultimately see what they are made of.

 

With TIME on this issue I may have gained SOME control over my emotions, but it has been a roller coaster ride. When it started I fiercly defended Shelby, eventually swinging to the othe side and fiercly opposing him. It's IS an emotional issue to most of us, I'm trying to find some middle ground...

But I gotta tell ya, for me the 'coup de grass' was the move to 'extinguish' SAAC entirely. Like I said before, "Bad Form" that, I just can't see any logical way to justify it. If I'm forced to take a stand, it will be with SAAC. Just so you guys know where I'm coming from...

 

Yeah, I can only imagine how torn you must feel.

How did Shelby try to do that? I thought all they did was apply for SAAC as an R-TM? Or did you mean pulling the plug on the license?

 

Are you suggesting it's no big deal if Shelby applies for the TM of SAAC's name?

Sure, I wouldn't have a problem with someone opening a new business right next to mine and doing the same thing I've been doing for 30 plus years while they filed for control of my business name AND pulled my license...

What planet are we on again?

 

I guess I'm just looking at it from a legal viewpoint (for a moment). Since Shelby terminated the agreement (due to SAAC's non-compliance, or whatever) and the very name of the club could not exist without licensed use of it (because the name is Shelby property), then applying for SAAC R-TM is the logical next step to prevent future non-complying use of his property.

It's like having a neighbor whose boundary line is 10 feet on his side of an old rubblestone wall separating your properties. You've never hasseled him on it because he's not claimed the boundary is at the wall or anywhere else. One day he violates that boundary (puts up a big wooden storage shed) and you call him to tell him he can't do that. He says why not? It's my property! You say because it's not your property; see this here document. And rather than removing the shed, he ignores you and wont take your calls (for whatever intransigence/non-compliance reasons he likes). What do you do?

You have the right to confiscate that property but not without due course. You could remove it from your property and place it on his somewhere, but that's just not practical (too big, don't want the liability, whatever). So you see your lawyer who tells him to remove it or it will be removed at his expense, etc. He makes no attempt to rectify the situation to your satisfaction so you have it removed and bill him for the expense. He ignores the bill. You go to court, etc. They give a directed verdict for him to pay you. He ignores it. You sell the storage building and put the procedes in the bank. You're entirely within your rights. The other neighbors in the community don't like what's going on -- the bickering, the disruption, etc. They think the storage building was fine where it was as they don't know all the details of the boundary. They start a website: SSB! -- save the storage building! They post speculation about you and your family, rumored underhandedness, heresay about what you might do net to your other neighbors. Everone is genuinely concerned ...yada, yada.

Did you see where the disconnect occurred? Nothing the neighbors said or did had anything whatsoever to do with the your rights to your property no matter how many folks say it or how many blogs it appears in. You were within your rights.

Of course, no analogy is perfect and trademarks are a special kind of property, etc. but it would be easy for folks in that neighborhood to jump on the community sentiment saying that you're a bad guy and likely will sue all adjacent landowners just to get whatever you can -- even tho you have no intent to do anything to anyone -- all you were doing is exercising your right to have the infringing structure removed. Of course you'd probably get tired of the hassel and expense and besmirching of you and your family pretty quickly over what you're having to go through just to be made whole again, and even if the local court was swayed by public sentiment and ruled his storage building stays on your property because everyone likes it there you'd have to appeal because you'd, rightly, feel wronged. I assure you your neighbor also felt wronged since he thought it was his property all along and letting go on that fact will be tough for him... etc.

Just trying to explore it from both perspectives... I guess if I were Shelby, I'd see no problem in trying to get my property back and permanently resecuring it legally. At least I'd certainly try. I think that's where this is.

I searched USPTO and found the TM-app and a letter in response stating why it would it should not be approved as it will potentialy hurt 5500 members, etc, but not clear to me that is the core issue (just like the neighbors feelings). But it will liekly stall USPTO approval of SAAC TM for Shelby until resolved.

There are three prior filings of the SAAC mark listed by USPTO but all three numbers come up blank searches -- dunno why. So it would seem that now Shelby will have to show how it is that it's actually his mark (unless a prior one was an R-TM) that was infringed by lack of compliance with the contract agreement, etc., and that's where it will get interesting and require adjudication of some sort, I suspect. If he wins, the Shelby SAAC R-TM may flow. If not SAAC may get some contexual (club) usage of Shelby American name (who knows? ...certainly not I <lol>). Doubtfull Shelby is not going to lose his rights to the name Shelby American which should previously be well documented in use relating to Shelby American (the company) separately from SAAC (club) . It will be interesting to follow (to the extent we canthrough public sources).

Only the current filing by Shelby (11-20-07) is listed as active, the three priors are inactive but I can't tell if they ever were completed registrations that fell or were abandoned/withdrawn form active legitimate use for some reason (which is also common when use of a mark is no longer occuring in commerce). Since the numbers USPTO shows won't pull-up those priors, I can't even tell when they were filed, approved, bandoned, etc. Anyhow... the saga continues. I think it will be key what constitutes legitimate use. I.e. if the license agreement was not vaild because SAAC neglected it's compliance stipulations, can they establish a defacto use TM if using the name Shelby/ShelbyAmerican (whatever) with no rights to do so. I think the answer is no, but who knows? There's likely a ton of IP caselaw on that very point since that can't be an uncommon occurence (by accident or on purpose).

If I had more time I'd try to do some research, but it's virtually impossible for a layperson to decipher such stuff without access to online legal databases and knowing what they're doing (can't say I can do either! <lol>).

Dan

 

Dave, maybe you ought to write TV infomercials or work a political campaign or write sarchastic humor for late-night TV ...you know, the writers are on strike!


Actually, I've answered your specific question before as to why I think Shelby might have applied to register SAAC (to reduce your question to the core and strip away the other 5000 extraneous words of FUD, mud, inuendo and sarchasm), but I'll try one more time in a different form -- a question:

Has SAAC ever used Shelby-owned marks/property in the course of business without a license to do so? I think you (and a lot of others who know SAAC far better than I) know the answer to that, and I'd like to know too.

Maybe the answer is the obvious one. Maybe Shelby is just protecting what he owns. Would you not do the same?

Why you keep dragging the enthusiasts/SAAC-members into something SAAC officers might or might not have done wrong is merely hiding behind the membership and, imo, using them as pawns in a business dispute that has absolutely nothing to do with them. The members and enthusiasts have done nothing wrong, have they? And neither has Shelby, has he?

If you read the TM-app (as I'm sure you have) it's in the context of memerobilia, clothing, accessories, etc. Maybe if SAAC is selling or has sold such stuff using his marks, he'd like to do so likewise under an SAAC logo. Dunno, but that seems like the obvious reason.

Will he gt to do that? Dunno. Will SAAC get to use his marks in commerce in the future? Dunno. You're making like this TM-application is some sinister act. It's a public filing for all to see -- nothing covert, sinister or shark-like about it. In contrast, has SAAC attempted to get permission to use owners' property-marks in their commercial activities? I even see a shirt on the SAAC site bearing the mark "Ford GT." Is that usage licensed?

Imo, you guys sure like to live dangerously ...but what do I know.

 

Are you kin to Amy?

 

<lol> ...no, not releated to any of the Shelby folk. Just an old guy who loves cars.

 

You know, to be honest, I at first sympathized with SAAC - legal or not, it is pretty disappointing to have a long-term relationship (that was mutually beneficial for a long time til things went south) end, no matter if it business, personal, or something else.

What has and continues to make me lean towards TS is the attitude that certain members of SAAC demonstrate on this board and, to a much much greater extent, on their own forum. With all the "don't do this to the members" and "think about the Shelby fanatics all these years" statements, you'd think they were innocent victims and all the negativity can be placed with Kopec, Shelby, Amy, etc. (those in control). That is probably correct, although there are several of the more vocal of the masses that don't really seem like the kind of car guys I'd want to hang out with anyway. They post here too, so I'm sure their identities are known to those who care.

Just as an example, there recently were two SAAC members voicing frustration with the Shelby-lynching attitude in The Snakebite and on the forums and they were thoroughly drummed out and accused of being "traitors." Personal insults that should embarrass those who posted them. I speak only for myself, but I'd bet there are others who see the same thing and are just as disappointed at I am.

SAAC should be looking for all the support (and feedback, both positive and negative) it can get. Instead, they are acting exactly how they accuse Team Shelby of acting. That doesn't excuse TS or SAI if they're acting like idiots either, but I just don't see that as much on the various forums. If both sides want peaceful coexistence (or at least if SAAC does), you would expect they would be open, welcoming, and encouraging to their members and prospective members. That's good business, Fortune 20, profit or non-profit, whatever.

Mike

 

For being an old guy who loves cars, you seem to protest to much. Almost as if you had a vested interest in the whole affair. As a stockholder, I too have a vested interest, but my loyalty is not with Carroll on this one, but with SAAC. Oh, and by the way, I've owned (documented by SAAC) more than enough Shelbys to add my two cents worth on this subject, have you owned any?


Bill S.