Posted on January 15, 2013 in Business Law
Last week I responded to a follow-up cease-and-desist letter from a corporate legal department. The corporation’s tactics amounted to IP-bullying of the kind that only works when small businesses are not willing to seek legal advice. (The small business in question had substantially complied with the original demand—one that I’m not convinced was valid to begin with.)
More often, I have helped clients in defending their brands in ways that I think are much more fair-minded than the recent bullying I encountered.
So it is with appreciation that I read of the success achieved by Jack Daniel’s legal department in sending out a cease-and-desist letter regarding its trade dress when a slightly-modified version of its label appeared on a novel cover:
We are certainly flattered by your affection for the brand, but while we can appreciate the pop culture appeal of Jack Daniel’s we also have to be diligent to ensure that the Jack Daniel’s trademarks are used correctly. . . . [W]e simply request that you change the cover design when the book is re-printed. . . . By taking this step, you will help us to ensure that the Jack Daniel’s brand will mean as much to future generation as it does today.
Without endorsing either products or trying to overstate the role of courtesy (Jack Daniel’s case is certainly compelling), the letter gets three things right:
- The remedy is balanced. Jack Daniels doesn’t really want penalties or a cut of the novel’s sales, so it doesn’t make threats about (in the first letter).
- The letter educates about the context. The average infringing business wouldn’t see the bigger picture and would believe that its use is inconsequential to the trademark. The brief explanation communicates that the rights-holder isn’t issuing the letter out of spite or ego but out of a legitimate need.
- The tone of respect builds the brand. The rights-holder expresses pride in its brand while acknowledging the good taste of the infringer. Again, for a first letter, good faith avoids rancor and avoids brinkmanship.
The additional layer of social media would be a separate post, but it is worth noting in passing the buzz that Jack Daniels is getting here compared to the contempt received by others whose high-handed demand letters earned them their customer’s disdain.
In this case, the alleged-infringer agreed to change the cover to prevent future infringement. The rights-holder did not back down and indeed, with the case made civilly in an initial letter, subsequent action—whether in the form of a summons or a more pointed demand—can be taken from the moral high-ground.