Jack Daniel's Shows The World: Here's How To Send A Polite Cease-And-Desist

Trademark

from the it-can-be-done dept

Tue, Jul 24th 2012 7:05am — Mike Masnick

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.

But, rather than get all threatening, the letter is quite nice, reasonable and even (somewhat surprisingly) accommodating. It starts out by admitting that they're flattered, not upset.

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

44 Comments

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Just Another Moron In A Hurry, 24 Jul 2012 @ 7:11am

What I find most interesting is how drastically Jack Daniels has changed it's approach since the last time they were featured here on TechDirt. http://www.techdirt.com/articles/20120405/19034518399/how-drunk-would-you-need-to-be-to-confuse-jack -daniels-with-cayman-jack.shtml
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gnudist, 24 Jul 2012 @ 7:19am

And the shill will still completly miss the fact you didn't bash Jack daniels for enforcing their "ip" even to the point of congradulationg them for doing it right.

Troll ACs just keep on derpin' no matter what
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Anonymous Coward, 24 Jul 2012 @ 7:19am

someone care to point out how anyone could mistakenly confuse a freakin' book with Jack Daniels Whiskey? surely one would get stuck in the throat and the other would slide down nice and easy, wouldn't it?
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Anonymous Coward, 24 Jul 2012 @ 7:19am

Re:
*shills
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Dark Helmet (profile), 24 Jul 2012 @ 7:23am

Hmmm
So I assume, based on the infinite wisdom of some of our detracting friends 'round these here parts, that Jack Daniels will now immediately lose all of their Trademarks and their entire business because they didn't fire off a hateful demanding letter and instead chose to go the congenial route?

I mean, amiright?!?!?
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Doug D (profile), 24 Jul 2012 @ 7:23am

Re: Re:
It's quite possible that it was correct the first time.
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Anonymous Coward, 24 Jul 2012 @ 7:27am

This is a very good article and it is showing a positive trend of lawyers changing their tone. It is not just JD taking a cooperative tone on the IP of trademarks. It is a general trend and something many companies are beginning to understand after it started to surface at least 10 years ago.
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Ninja (profile), 24 Jul 2012 @ 7:31am

Re:
They were drunk.
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Anonymous Coward, 24 Jul 2012 @ 7:34am

Re:
"someone care to point out how anyone could mistakenly confuse a freakin' book with Jack Daniels Whiskey?"

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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Ninja (profile), 24 Jul 2012 @ 7:35am

That was an awesome stance indeed. And I'm sure with that stance they might be open for negotiation (and a license for usage, if I were the author I wouldn't mind adding some sort of disclaimer pointing out this and how awesome JD was).

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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sophisticatedjanedoe (profile), 24 Jul 2012 @ 7:36am

Al Capone was right:

Do you mean Al Capone's famous "You can get much farther with a kind word and a gun than you can with a kind word alone."
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Michael Donnelly, 24 Jul 2012 @ 7:39am

The third party isn't just the public...
...but also people who are buyers of Jack Daniels' product.

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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ReallyEvilCanine (profile), 24 Jul 2012 @ 7:46am

Techdirt's falling in line?
The only thing this C&D shows is that the lawyer has read Techdirt or Groklaw. There is no legal case, not even a "trade dress" claim. Not only was no trademark infringed upon, the basic design is a part of popular culture, something the letter admits.

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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Dark Helmet (profile), 24 Jul 2012 @ 7:51am

Re: Techdirt's falling in line?
Dude...baby steps...come on....
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Anonymous Coward, 24 Jul 2012 @ 7:57am

Re: Hmmm
If they did nothing about this case, and did nothing about the next case, and didn't zealously work to protect their trademarks, then yes, they would risk losing their rights.

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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Anonymous Coward, 24 Jul 2012 @ 8:03am

A well-crafted letter given the subject matter involved.

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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Lurker Keith, 24 Jul 2012 @ 8:08am

First seen on Popehat
I knew this would find its way here when I saw it on Popehat the other day.

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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The eejit (profile), 24 Jul 2012 @ 8:09am

Re:
The C&D explains it all. And it's quite a reasoned response. Maybe Ol' Jack did understand that the brand is good, and to not ruin that.
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Anonymous Coward, 24 Jul 2012 @ 8:14am

Re: Techdirt's falling in line?
It's true that this could have been contested and JD may have lost any Trademark claim.

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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Lowestofthekeys (profile), 24 Jul 2012 @ 8:20am

Re: Techdirt's falling in line?
You're missing the fact that the company did not treat this guy like a criminal.

A pattern which is more often than not, very common for big businesses.
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Machin Shin (profile), 24 Jul 2012 @ 8:21am

Re: Re: Hmmm
Yeah, because books and t-shirts are totally the same as a label on a soft drink or beer.

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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Anonymous Coward, 24 Jul 2012 @ 8:29am

Re:
"What I find most interesting is how drastically Jack Daniels has changed it's approach since the last time they were featured here on TechDirt. http://www.techdirt.com/articles/20120405/19034518399/how-drunk-would-you-need-to-be-to-confuse-jack -daniels-with-cayman-jack.shtml"

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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ComputerAddict (profile), 24 Jul 2012 @ 8:47am

Re: Re: Re: Hmmm
Jack Daniels produces more than just the whiskey, from T-shirts to mugs, Zippo Lighters to barbecue sauce. For Jack Daniels to produce a book would not be unheard of. Protecting their trademark (in a rather a nice way) in areas where they may offer merchandise related to their flagship product is not them being "Maximalists" at least in this specific case.
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DCX2, 24 Jul 2012 @ 8:49am

Jack Daniels for Librarian of Congress!
With a C&D that reasonable, who knows what kind of good they could do in that position the next time DMCA exemptions come up.
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BentFranklin (profile), 24 Jul 2012 @ 8:51am

Since I frequently advocate voting with my dollars elsewhere when unhappy with corporate behavior, it would be hypocritical not to do so in a positive manner when I am pleased instead!
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ChurchHatesTucker (profile), 24 Jul 2012 @ 9:03am

Re: Re:
Doubt it. They're located in a dry county.
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ReallyEvilCanine (profile), 24 Jul 2012 @ 9:06am

Re: Re: Techdirt's falling in line?
So what? They're still making legal claims which have no basis in law. The letter asserts rights the company doesn't have.
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Ninja (profile), 24 Jul 2012 @ 9:19am

Re: Re:
I've learned that companies can be quite polite and nice when exercising their copyright/trademark/patent monopolies o/

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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Mr. Applegate, 24 Jul 2012 @ 9:25am

Re: Re: Re:
Do you seriously think that matters?

Cite:
http://thetimestribune.com/local/x1511619555/Dry-counties-show-higher-rates-of-DU I-related-crashes
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Anonymous Coward, 24 Jul 2012 @ 9:29am

Re: Re: Re: Re:
If you make something "illegal" it becomes more interesting.
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Anonymous Coward, 24 Jul 2012 @ 10:46am

Re: Re: Re: Techdirt's falling in line?
http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:9nhatg.10.18

Actually they do have the legal rights to this design for use on paper, magazines, and periodicals.
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ChurchHatesTucker (profile), 24 Jul 2012 @ 11:01am

Re: Re: Re: Re: Re:
I just doubt they'd drive over to the next county on their lunch break.

OTOH, the prohibition is on sales, so they could just do some "quality control" on the side.
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Just Another Moron In A Hurry, 24 Jul 2012 @ 11:25am

Re: Re:
I like to think that as a Techdirt reader, I am always learning something new. :)

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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Mike Masnick (profile), 24 Jul 2012 @ 11:34am

Re:
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:

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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khory, 24 Jul 2012 @ 11:44am

Re: Re: Techdirt's falling in line?
Actually the base recipe didn't change. What they did was lower the alcohol content. The whiskey comes out of the aging barrel at around 125 proof. They then add water to dilute it down to the desired alcohol percentage. Jack was traditionally sold in the US as 90 proof until 1987ish when they reduced the alcohol to 86 proof and then lowered it again around 2002 to 80 proof.

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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Anonymous Coward, 24 Jul 2012 @ 12:04pm

Re: Re:
Perhaps you might want to read the quotation more closely, focusing on the part dealing with "control", for without this one would providing a "license in gross". Since the "product" is already "manufactured", control would a difficult requirement to meet to avoid the mere grant of a license to use that is separate and apart from goodwill. And, yes, you did not use the legal terms, but the suggestion would have the same operative effect.

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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Anonymous Coward, 24 Jul 2012 @ 5:58pm

Don't suggest a license
Please stop suggesting that a license is an appropriate means to solve a trademark infringement problem. It isn't, because a consumer never knows that there is a license and so can be no less confused. If I go to "Lone Tree Medical" and think that "Lone Tree Dental" is the same provider, I still have that incorrect understanding even if there is a trademark license from Lone Tree Medical to Lone Tree Dental allowing the dental practice to call itself that. What should be done in this case is either (1) enter into a co-existence agreement, the purpose of which is to ensure everyone takes steps to make it clear to consumers that the two companies are NOT related or (2) have one change a name so no one will be confused. Settling the matter with a license is no different than just tolerating the infringement. In both cases the ultimate result is that consumers will just learn to tell them apart (like Burlington Factory and Burlington Industries).
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Anonymous Coward, 25 Jul 2012 @ 12:19am

Hmm not sure what to think about this one lol.. It's a step in the right direction kinda.. I highly doubt this is actually going to hurt their trademark and it's a waste of money to pay for him to change it.

If they wanted to go north instead of northeast they should have just left him alone.
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Anonymous Coward, 25 Jul 2012 @ 5:24am

Re: Re: Re:
It could be JD needed to take action to show that they were defending their trade dress but they weren't all that worried that it was actually doing harm. Part of being an Icon is having your logo used by the public to make connections. It would be worse to be ignored.

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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MC, 26 Jul 2012 @ 4:31am

Trademarks
I agree with all the article, except the last part. If Jack Daniels allows these types of uses, in the years to come many others would feel free to use a similar images in their products / services. Wheres is the damage in this? Simply that Jack Daniels trade dress will not be as distinguishable as it is now, and thus will loose monetary value. Jack Daniel's trade dress is unique, no one can argue with that, so if they allow people to use similar images, the market could be flooded with those images, and Jack Daniel's will be one of the many others that use that image (which is not the case now). Of course, for whiskey they will alwasy be unique, but little by little their brand will loose value. Just my modest opinion...
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dennis deems, 26 Jul 2012 @ 6:45am

Re: Re:
"The C&D explains it all."
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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dennis deems, 30 Jul 2012 @ 8:18am

The nicest bully on the block
A bully who gets your lunch money by smiling and blandishing instead of making threats is still a bully.
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Glenn Mitchell, 2 Aug 2012 @ 2:35pm

your letter to a logo infringment problem
As a man that also likes Jack, I'd like to say u"r smart and I hope the co. will be smart too. Lots of codos to you. Nice to see a Company with some brains!!!!!!!!!!!!!!!
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Gairciand (profile), 12 Sep 2012 @ 9:09pm

That's what means to be classy. I'm impressed by the approach of the lawyers. It's the most friendly C&D letter I've ever seen
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