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The delicate art of the cease and desist letter

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Earlier this year, Jack Daniel's Properties, Inc issued a cease and desist letter to author Patrick Wensink regarding the cover design of his recent novel, Broken Piano For President, which closely resembled the Jack Daniel's whiskey label. 

The letter, seen as being unusual for its extreme politeness, was dubbed "the world's nicest cease and desist letter" and brought significant positive publicity for Jack Daniel's.

This excerpt sums up the approach taken in the letter: "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... if we allow uses like this one, we run the very real risk that our trademark will be weakened. As a fan of the brand, I'm sure that is not something you intended or would want to see happen."

The letter went on to request that the cover of the book be changed in any subsequent reprints and offered to contribute towards the costs of changing the cover sooner, should the author be willing to do so.

The letter has gone viral and been universally commended. It is a great reminder that the tone and approach of any communication should be carefully considered, and that templates are never appropriate for something like a cease and desist letter.

David Gooder, Jack Daniel's chief trademark Counsel was quoted as saying: “The voice of any given brand should be its voice regardless of whether it is an advertising campaign on Facebook or a protest letter written to stop something that is harmful to the brand."

Often a trademark owner may have very good, but not obvious, reasons for asking someone to stop what they are doing. It may not be clear to the infringer that they are doing any harm to the brand concerned. In that case, sometimes there is some explaining to do before making demands that may otherwise seem unreasonable.

The positive publicity surrounding the Jack Daniel's letter is in stark contrast to that often seen when a cease and desist letter goes viral. 

For example, in 2010 the National Pork Board, a United States trade association representing the interests of pork producers, reportedly sent a 12 page cease and desist letter to owners of the website thinkgeek.com alleging infringement of their trademark 'The other white meat'. Think Geek had run an April fools spoof advertisement for Unicorn meat, referring to it as "the new white meat" [ed: unicorn lovers can get a taste, metaphorically, here]

Earlier this year the University of Pennsylvania Law School promoted a symposium on intellectual property issues in fashion with a poster parodying trademarks owned by Louis Vuitton Malletier. The university received a sternly worded letter from Louis Vuitton stating "This egregious action is ... a serious willful infringement and knowingly dilutes the LV trad marks ... I would have thought the Penn Intellectual Property Group, and its faculty advisors, would understand the basics of intellectual property law and know better than to infringe and dilute the famous trademarks of fashion brands".

In the cases above the National Pork Board and Louis Vuitton garnered negative publicity, being portrayed as heavy handed "IP bullies". Given that neither case concerned a competitor, both were one-off uses of the trademark concerned, and neither appeared to be making any revenue from the use, one can see why these examples got the public response that they did. An approach along the lines of that taken by Jack Daniel's may have been more appropriate under the circumstances.  

This is not to say that all strongly worded cease and desist letters are unjustified or inappropriate. Cases that concern an unknowing, or naive, infringer appear to be good candidates for a softer approach. However, in situations where the infringer is malicious, or a direct competitor who is pushing boundaries, it may be necessary to be more blunt. Being inappropriately 'soft' with the tone of a letter to a large business infringing your rights might be taken as an indication that you are not serious about defending your rights. That would not be the right impression to give.

As with most things, there is an artful balance to be had depending on all of the facts—who is infringing, what they have done, who the client is, the harm they are suffering, the clarity and nature of the legal issues, and the outcome you are trying to achieve—but what is clear is that one size does not fit all.

Media coverage has recently been given to Olympic swimmer Ryan Lochte's efforts to register his catchphrase JEAH as a trademark in the United States. However, Los Angeles based gangster rapper MC Eiht is claiming the phrase as his own, reportedly saying of Lochte, "why try and trademark something his ass didn’t even create?” MC Eiht reportedly plans to issue a cease and desist letter to Lochte. Given his aggressive reputation, it would be interesting to see what approach he takes to the wording. 

  • Damian Broadley is a partner and Jude Antony is a solicitor at AJ Park. 

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