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Hot Wheels give a scale-model middle finger to ICON?

Jeff Glucker June 5, 2012 Featured 22 Comments

ICON is the go-to company when you want a bespoke example of a beloved machine from the past. Currently, the company is best known for its excellent interpretation of the old school Bronco and FJ Cruiser. ICON also produced the oh-so-Hoon-lusty Business Coupe. The quality of the company’s work is stunning, and the vehicles are quite expensive as a result. In fact, news of their latest venture just popped up on our radar. It shouldn’t be a surprise then that Hot Wheels saw fit to turn the ICON FJ Series into a scale-model toy.

There’s a problem though, they never spoke to ICON about the project.

Here is the story per the most recent ICON newsletter:

Now we have a less charming story related to how companies can be run. Whereas we have tried to build a company that is a true reflection of our passion and accountability, not all are built as such. As a lifetime fan of Hot Wheels, imagine our initial excitement when we received several emails from friends congratulating us on the Hot Wheels deal. “Hot wheels deal, what Hot Wheels deal?” , I said. So we went to their website and saw they were releasing a new FJ40 model. As I studied their details, and even their launch rendering, I quickly realized that they based it on our ICON FJ40 Baja Edition. Other than some ugly colors and logos, it was our design, trademark and trade dress. Actually, their photo was a quick rendering over a PR shot of me jumping one of our Baja’s in the desert. You can even see my balding head still in the truck!

So then I innocently asked a friend who used to work there, “what’s up?” He said they must have made an honest mistake, and advised me to reach out to the current Director of Design for Hot Wheels, Alec Tam. I sent him a few emails and never got a response. So then I called and got a belittling voicemail where he basically told me to take a hike and that there was no validity to my claim. So much for a friendly discussion… So after a few legal letters back and forth, their attorney said that they wished to settle this out of court, and they asked for thirty days to collect data related to how many had been distributed. So on day 31… we reached out to them again. This time they said if you think you have a claim, sue us. You guys are a small company and we are a big one, so go ahead and try! Sad to see such a great brand run in such a manner, isn’t it? We lack the funds to pour into a legal case to defend our mark and ! I thought this story was worth sharing. Any TM lawyers out there interested in helping us right this wrong? Shame on you Hot Wheels! Consider these facts when you make your next relevant purchase…

We’ve reached out to Hot Wheels for their side of the story, and we will update you as soon as we hear back.

  • VeeArrrSix

    As a Hot Wheels collector and huge fan of Icon… this truly sucks.

  • Scandinavian Flick

    This is a really unfortunate way for Hot Wheels to be handling this, and I am surprised they would take the potential risk to their publicity. I would think companies would have learned by now how powerful the ability to spread information is these days. I'm the type who prefers to hear both sides of the issue before passing judgement, but I also tend to naturally assume fault on behalf of corporate lawyers based on experience…

    • dukeisduke

      Who knows, maybe the toy won't look exactly like the Icon, but they definitely stole the picture. Bad idea.

    • jeepjeff

      There seems to be a story about a company that hasn't learned the lessons of the Streisand Effect two or three times a year. The 'shop of the picture is totally egregious. Hot Wheels has a legal department, and they've been around long enough to know better.

      This sucks. Hopefully it spreads across the automotive internet like wildfire, since it looks like they are going to need a School of Hard Knocks™ PR shit-storm to effect an appropriate attitude readjustment. Someone needs to come up with a catchy hashtag. A pro-bono trademark Lawyer to help out ICON would work too, but it would take longer.

  • That's just plain chickenshit. If Hot Wheels had any class at all, they'd have coordinated with Icon, and given the little guy some credit as well as some great publicity, which would have benefited both companies. They blew it on this one.


    EAT LEAD HOT WHEELS! Just like you made me when I was a kid!

  • I never realized this was what they meant by "Hot" Wheels.

  • JayP2112

    Had I not seen that photo, I may have sided with Mattel. The ICON is an "interpretation" of the original FJ and the negotiations would have been with Toyota. But dang- there isn't much between the ICON and that HotWheel.

    According to the HW Wiki, Jun Imai is the designer.
    Yea- pretty much a copy.
    <img src="http://images.wikia.com/hotwheels/images/a/a2/YELLOW_FJ.jpg&quot; width="600">

    EDIT: Ok- looking at original LC-FJs, the roll bar and bumper are ICON, but the rest could be standard Toyota.
    Hopefully this can be resolved with a party and beer.

    • It does seem to be a rather tricky area between what is Toyota and what is ICON. Hot Wheels did use what I assume would be a copyrighted photo from ICON, but as for the look of the truck it would almost be like Beck suing over the use of a Porsche 356 Hot Wheels.

  • Stu_Rock

    It looks like the image misappropriation could be an open-and-shut case, but probably not for a huge claim. Not knowing much about ICON, it's not clear to me what intellectual property in the doctored photograph belongs to ICON and not Toyota.

  • Charles_Barrett

    Oh, and given that Mattel fought the creator of the Bratz dolls for infringement of their intellectual 'Barbie' property, and WON, this is just too ironic. I think any lean-and-hungry wet-behind-the-ears young law school graduate could make mince meat of Mattel and serve it up on a platter to a jury in this case.

    Seriously, this would be picking low-hanging fruit…!

    • OA5599

      Mattel made headlines in 2008 for "winning" against Bratz, but that decision was subsequently overturned. Mattel lost big in round 2 last year.

      • Charles_Barrett

        I totally missed round two of that battle… and I am not sure how I managed to do so…! Thanks for the link to the L.A. Times article; now I'm more up-to-date.

  • Ol' Shel'

    Legally, HotWheels is probably in the clear. Images, reused, must be altered by a certain % in order to be considered unique and not an infringement. That original image is 100% redone. It's the inspiration for HotWheels' rendering.

    Yes, HotWheels should have changed the vehicle position. They could have reached out to Icon. This is what huge corporations do. It's about the money, not about what the tiny % of Icon fans think about the thousands and thousands of FJs they're going to sell.

    • Ol' Shel'

      PS: the finished product looks like crap.

    • nikescar

      They kept the ICON badging on the grill. That alone makes it an open and shut case.

    • It's not a "certain %," it's that it must not be recognizable in whole as the original work. I can pretty much recognize the whole of the original in the Hot Wheels image. Whether it's fair use is for a judge or jury to decide in civil court, but it's certainly close to the foul pole either way.

    • Ironic to see you on this side of the argument, "Ol' Shel'".

  • hazmat5150

    Mattel should have at least offered to rename and badge the Jeep as ICON after they were presented with this information.

  • I wonder what's at stake. Does Hot Wheels pay the OEMs royalties for their miniature reproductions?

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