Jack Daniel's Shows The World: Here's How To Send A Polite Cease-And-Desist
from the it-can-be-done dept
For years we've written about how lawyers send absolutely ridiculous (and usually ridiculously aggressive) cease-and-desist letters. This comes from a time when there were likely only two parties who were going to be a part of the discussion. The company or individual on behalf of whom the letter was being sent... and the recipient. In such a world, lawyers were taught to be aggressive and to make the strongest possible case for their client, often claiming things and threatening actions way beyond what is reasonable. The thinking tended to be that the recipient would either shut up and back down completely (they hoped), or if they lawyered up, there would be some sort of negotiation, and an end result where a middle ground was met.The internet changed things. It added a "third party" to these discussions: the public. As a result of that, over the last decade, recipients of such overly aggressive threat letters have gone public with those letters, leading to both ridicule towards the sender, but also much more attention being given to that which was sought to be "ceased" and "desisted." Hence, the rise of The Streisand Effect.
Every time we discuss one of these situations, people often ask us something along the lines of "yeah, but what else is the individual/company supposed to do?" Especially when it comes to trademarks, people often toss out the (somewhat misleading and inaccurate) claim that the trademark holder has to fight back or they might lose their trademark. Beyond that being an exaggeration (they only need to try to deal with situations where there might be confusion, or where the mark is being made to seem generic), it also ignores that there are more reasonable ways to handle such situations. One, for example, is to offer up a free (or super cheap) license. Another is to actually be nice. But that happens so rarely that it makes news when it happens.
A whole bunch of you have been sending in this particular example, of Jack Daniels sending one of the friendliest cease-and-desist letters that you'll ever see. It was sent to Patrick Wensink, the author of a novel called Broken Piano for President, whose cover certainly makes use of the iconography around Jack Daniels famous whiskey.
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. Given the brand's popularity, it will probably come as no surprise that we come across designs like this one on a regular basis. What may not be so apparent, however, is that if we allow uses like this own, 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.Furthermore, rather than being excessively demanding, such as by demanding destruction of the old books, the company just asks for any future printings to have a different design -- and does so noting that it's suggesting this in a neighborly manner, and is even willing to help pay for the costs of such a change if they do it for existing books (and e-books):
In order to resolve this matter, because you are both a Louisville "neighbor" and a fan of the brand, we simply request that you change the cover design when the book is re-printed. If you would be willing to change the design sooner than that (including on the digital version), we would be willing to contribute a reasonable amount towards the cost of doing so. By taking this step, you will help us to ensure that the Jack Daniel's brand will mean as much to future generations as it does today.Now, I still think that the company is exaggerating a bit in suggesting that this would really diminish the trademark, and also you could see how the company could issue a license instead, this really is a much much better response than a normal legal threat letter. Nicely done, Jack Daniel's! Hopefully, other lawyers and companies start paying attention.
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Filed Under: broken piano for president, cease and desist, friendly, lawyers, patrick wensink, trademark
Companies: jack daniel's
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Cite:
http://thetimestribune.com/local/x1511619555/Dry-counties-show-higher-rates-of-DU I-related-crashes
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OTOH, the prohibition is on sales, so they could just do some "quality control" on the side.
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No, what it shows is that their legal actions are not monotone and the same with each case. The Cayman Jack case was closr to home (booze) and the book is further from home and less likely to cause and confusion. The result? In one case, they pretty much go nuclear, and in the other, they look for a soft and subtle solution to the issue that is good for both sides.
Rather than saying that they have learned something, perhaps it's the Techdirt readers who are learning.
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Do I get a cookie for that?
/derp
I also noticed that there are different cases (ie: an establishment and a book) with different impacts. I'd believe the author being (mis)treated like the other guy could have a more wide backlash instead of the regional. So yes, they might have learned with their past mistake.
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No, they are not monotone, and that is why I am interested. I am especially interested in the reasons behind the change. Are they changing because they learned something? Because they feel less threatened? Because they want the positive publicity they are currently receiving? Maybe all of the above.
Sadly, I doubt either of us can say with certainty what their motivation is.
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A Similar case to this is the Geronimo Stilton Series published by Scholastic Books in the US and translated from an Italian children's book series. In one of the books Stilton receives a cease and desist order to stop using the Stilton name because of the Stilton Cheese Makers. The whole Stilton clan goes off to Stilton England where they proceeds to save the day and the matter is dropped. The book includes a lengthy description of how Stilton Cheese is made.
Since that book was published the copyright page includes the following text- Stilton is the name of a famous English cheese. It is the registered trademark of the Stilton Cheese Makers' Association. For more information, go to www.stiltoncheese.com. I doubt the Stilton Cheese Makers' wanted the series to go away. They just needed to be seen to be protecting their Trade dress.
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Troll ACs just keep on derpin' no matter what
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With a similar design to Jack Daniels packaging, it could be implied that Jack Daniels either endorses, licensed, or contributed to the content of the book.
Plus, if there's a book about Jack Daniels (a history or analysis) it might be confused with this book.
It's an understandable response and a welcome one for its civility.
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The letter explains nothing. It merely shares the speculation that the JD trademark "will be weakened". It's exactly the same argument advanced by opponents of gay marriage.
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Hmmm
I mean, amiright?!?!?
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Re: Hmmm
If they tolerate it on books, would they tolerate it on t-shirts, on logos for softdrinks, perhaps as the label for a new beer. What do you think?
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Maybe a logical line to draw would be where it will actually cause confusion, you know like that line where it becomes a LABEL ON A BEVERAGE. I don't really expect you or any of the other maximalists to understand such a concept though. So why don't you just run along and enjoy a refreshing sip of your new novel....
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I agree with the last part of the article. I think they should offer some licensing deal or something and I really don't see how this would damage the name but still, one can't say no to such a polite and human request.
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The third party isn't just the public...
That's the part that really blows me away when a lawyer fires off an overbearing C&D against a company that is of no legitimate threat to the brand. All you're doing is alienating that third party.
Jack Daniels was certainly aware that this letter would wind up in the public eye and they would be lauded for their conduct. This is good marketing.
Corporations will not suddenly become good citizens unless it raises profits. Indeed, they might even face shareholder lawsuits if they were to sacrifice dollars for niceness.
But they will certainly find their way as such threats impact the bottom line more, both positive and negative. I give my props to Jack Daniels for doing the most profitable thing with the least amount of effort - that happens to also be the "right" thing.
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Techdirt's falling in line?
But the sheep here, just like at reddit and /. and everywhere else, are lining up to say how great the company sending out baseless C&Ds is, not understanding the law nor even that "Jack Daniel Distillery, Lem Motlow Prop, Inc." is the company name because Lem was playing games when he registered the company but that it's actually owned by one of the largest US booze consortiums. They also don't realise that JD today is nothing like JD of decades past, the recipe having been changed drastically twice, once to knock the alcohol down to the standard 43% and a second time in the '90s to "tune" the flavour to give it more mass appeal.
The "superpriemium" Single Barrel version tasted almost the same as the stuff in the 1950-something bottle of JD I once had.
That's twice today.
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I think the point you are missing from the "sheep" is how this approach to addressing a trademark claim is refreshing from the normal over the top "Nike it from orbit" approach to this we have all seen in the past.
I can understand your argument how this did not need to be addressed at all and I actually am glad you did say this. It is all to easy to get excited over something done differently. So, I applaud your comments, even if I do find them a bit over the top.
I was not aware that they changed the recipe. I wonder if they did that to address declining sales?
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The official reason was to mellow the taste and make it more appealing to the public's tastes. I personally believe it was a cost-cutting measure.
Whatever they are doing is working though. Jack Daniel's is the second best selling whisk(e)y in the world and is slowly gaining ground on the #1 seller, Johnny Walker.
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A pattern which is more often than not, very common for big businesses.
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Actually they do have the legal rights to this design for use on paper, magazines, and periodicals.
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As for the suggestion to simply provide a license, this approach runs into significant legal problems under US trademark law in that a "naked" license to use a trademark violates one of the most basic rules of trademarks, as noted in the following excerpt from a paper published by a member of the Pattishall law firm:
By definition, a trademark is any device that serves as an indication of source. When a trademark is licensed, how does it continue to serve as an indication of source? Well, it does so, the theory goes, if the licensor controls the nature and quality of the goods. Then, the licensee is merely an are (sic) of the licensor and the source-indicating function of the trademark is preserved. Licensing without such control is called licensing in gross or naked licensing, and may cause the mark to lose its source indicating function. In such circumstances, enforceable rights in the trademark may be lost. This basic principle is often overlooked by the business person or counsel, who are inclined to treat trademarks as
ordinary property rights such as patents, which they are not.
Trademarks are inexorably tied to the goodwill associated with the holder of trademarks. To separate the two violates this very basic tenet of US trademark law.
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I didn't say a naked license "in gross" as that article discusses. I said they could offer a free license to this individual. And they could. That's totally irrelevant to what's in the paper.
This basic principle is often overlooked by the business person or counsel, who are inclined to treat trademarks as
ordinary property rights such as patents, which they are not.
If you are who I think you are, I find this hilarious, as you're the first person on here to claim that all IP is property, aren't you?
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You are much too easily amused since I have never stated that either a trademark or trade secret have substantially the same characteristics of "property" as is oftentimes associated with patents and copyrights. The gravamen of the former find their predicates in the general laws pertaining to unfair competition, i.e., "consumer confusion" and "commercial morality". Obviously, you have me confused with some other person.
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First seen on Popehat
Here's a link directly to the JD C&D letter (in the article Mike linked to): image of the letter (for those too lazy to click twice).
The author said he isn't taking any of JD's money, but at the end there is a note stating that the book will be a collectors item, which may be implying he'll change the 2nd Edition cover.
Popehat's coverage was a 2-for. In the 2nd half, Ken talks about Shell's response to a "clever, well-executed, and multi-stage hoax": use it as an oppertunity to put out the facts & inform people about the hoax. & claim they're not suing.
A seperate, recently posted story, also on Popehat, introduces us to who may be taking Carreon's place: an idiot suing SocNet.com -- apparently a Special Forces Web Community -- for outing him as not being the Former Special Forces he allegedly pretends to be on the lecture & training circuit! Ken hasn't done enough research to see if there's a case, but from what I read on This Ain't Hell (which Ken linked to) & a site posting & talking about a police report of a claim (found in the Popehat Comments), I don't think he has much of a case. & for good measure: The Lawsuit (Ken warns that "The page numbers are jumbled on that one — sorry.").
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Jack Daniels for Librarian of Congress!
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Don't suggest a license
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If they wanted to go north instead of northeast they should have just left him alone.
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Trademarks
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The nicest bully on the block
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your letter to a logo infringment problem
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