What Netflix's Congenial Trademark 'Threat Letter' Says About Everyone's Tolerance For Trademark Bullying
from the progress dept
Readers of this site will be well-versed in trademark threat letters. With the sorts of trademark stories we cover here, our discussion about threat letters typically take the form of trademark holders going out of their way either to overstate their rights or to act as aggressive and threatening as possible. Or, of course, both of those things at the same time. But not every company goes full bully when sending out trademark cease and desist notices, as exemplified by Netflix this week, when it sent out a notice to a Chicago popup bar called The Upside Down, an obvious reference to Netflix's hit show Stranger Things.
Writing to request an end to the use of its trademark, Netflix did not address the bar's owners in threatening terms or legalistic language. Instead, it appealed to the owners' appreciation of creativity and engaged with their shared appreciation of the Stranger Things brand, inserting references to characters and phrases from the show throughout the letter.
"Look, I don't want you to think I'm a total wastoid, and I love how much you guys love the show", the letter opens, "but unless I'm living in the Upside Down, I don't think we did a deal with you for this pop-up". It continues: "You're obviously creative types, so I'm sure you can appreciate that it's important to us to have a say in how our fans encounter the worlds we build";. Making its point firmly and clearly, but humorously and politely, the letter states: "We're not going to go full Dr Brenner on you, but we ask that you please 1) not extend the pop-up beyond its 6 week run ending September, and 2) reach out to us for permission if you plan to do something like this again."
The letter checked all the right boxes to not come off as bullying. The letter was both humorous as well as transparent in its effort to incorporate the fandom of the show into its language. It didn't promise punishment for any past acts, instead simply asking that the bar not extend its run even further and asking that it seek permission for its name for any future endeavors. Netflix didn't treat its fans as the enemy, but managed to act human while at the same time asserting its trademark rights.
For this, the company not only got the bar to agree to its request, but the letter received praise both in the media and on social media.
Netflix elicited a torrent of internet praise for its handling of the situation. Local news website DNAinfo reported on the "super classy letter", describing it as "adorably nerdy", and emphasizing Saul's lack of hard feelings towards the corporation. There was also positive coverage in the Sydney Morning Heraldand Fox News, while one blog lauded it as "the best cease-and-desist letter you've ever seen".
On social media, where reaction can often be the most negative, the responses similarly lauded Netflix for its enforcement approach. On Reddit, one user commented that the move was "totally reasonable and nice of them", with another calling the move "brilliant", adding: "In the age of Twitter, you don't want to anything to be used against you. Now it makes the pop-up look like bad guys for not reaching out to them."
What is most interesting to me about this story isn't Netflix's letter itself, although it was certainly nice to see a company get this so right. More interesting was both the media's and public's reactions to the letter, which seems to indicate that on some level the media and general public are waking up to trademark bullying and the fact that there are other ways to handle trademark issues beyond being a jerk. While I cover trademark issues all the time, I don't expect the everyman to have an understanding of ways to protect trademarks that goes beyond, "Company X has a trademark, so of course their lawyers sent out a threat." The reaction to this story seems to indicate that the public is beginning to understand that enforcing trademark law doesn't have to equal acting like a jerk. And that's a good thing.
If lawyers finally understand that being an overaggressive jerk can backire, it will make them think twice about using that approach. It will also convince lawyers that being congenial can go viral in ways that a company does want. These are good things that will be propelled by a public starting to understand that not every C&D has to be all threat and nothing but.
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Filed Under: cease and desist, fandom, fans, friendly letter, stranger things, the upside down, trademark
Companies: netflix
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Pity their Narcos outing was so tone deaf.
I think it was bright to let them have their run, not scream how they were murdering puppies, and even left the door open for future events. The pop-up now needs to give the very best event possible, if they do a good job they can most likely get a future deal.
Instead of treating obvious fans as the enemy, they treated it like a small trespass that didn't end the world. There is obviously an interest in this type of happening, and doing it correctly benefits everyone.
Netflix doesn't have a department of running themed pop-ups, but they now know a guy...
It makes me a little bit sad that there are so few stories about good lawyers who can see beyond their retainer and crushing anyone who run afoul of the law.
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Consumer Confusioning
One proffers videos, and the other proffers liquor. Is the person drinking thinking they are consuming a video instead?
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You catch more fish with worms than with an old boot...
To me, you're also attempting a new writing style: just telling a story.
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But I am still left wondering: SO, "fist in velvet glove" is okay?
The letter strikes me as MORE offensive than usual because NOT blunt. It's like distracting while the accomplice sneaks up behind you with a blackjack.
And even worse: THIS "use" I think okay! Maybe you just haven't 'splained how it's directly from and essential to the show I'd never heard of.
I think perhaps you just have a bias for Netflix and believe it can do no wrong. The letter may be right strategy to get weenies including observers to respond favorably, but I bet that after the time period is up, it's going to be "we gave you fair warning, now here's the WHAM!"
So please be sure to report how this turns out.
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Re: Consumer Confusioning
I wonder if there is an Upside Down bar somewhere that existed before the show. Do they get to send a C&D letter to Netflix now? What about the town of Hawkins, WI and TX, and Hawkins county in TN? Netflix did use that name. Did it clear that usage with all of them?
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Re: No, it's favorable in "public", then later...
It's in the course: Treachery In Publicity 101.
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Re: Consumer Confusioning
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Re: Re: Consumer Confusioning
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Helps if you read the linked article
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Re: Consumer Confusioning
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Re: Re: Consumer Confusioning
Regardless, they are two entirely different industries, and unless Netflix included food and drink and/or restaurants in their original trademark filing, what is basis for the claim?
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It still leaves my question about the disparate industries though.
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Re: Re: Consumer Confusioning
1. Art clearly based on Stranger Things (painting of Eleven, a character)
2. A seating area based on Winona Ryder's character's home (christmas lights, a letter key used in the show to communicate with the upside down)
3. A "Welcome to Hawkins" freeway sign, Hawkins the town where the show takes place.
4. A themed sign for the national lab featured in the show.
There is a lot of IP borrowing going on in this pop-up.
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Sounds like a good idea but...
This is true for just basic consumer to corporate interactions. Forget about this b2b stuff.
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Re: Re: Re: Consumer Confusioning
The basis is that the use of the trademarked IP could be seen as an endorsement by the main company, and prevent them from expanding out with an offering of their own.
For instance, in The Simpsons, there's a recurring brand called "Duff Beer." Despite the fact that Fox is a media company, not a brewery, if someone tried to brew an actual "Duff Beer" using the Duff imagery, they could be sued by Fox.
In addition, since the Simpsons Ride (and associated Springfield-themed attractions) opened at Universal Studios Florida in 2013, there is an officially licensed Duff Beer being served there. The fact that Duff Beer first showed up in the 90's and the officially licensed beer didn't show up until 20 years later might serve as an example of how someone appropriating someone else's trademark for a seemingly-unrelated product might interfere with future licensed versions.
On the other hand, there's Duff's Famous Wings in Amherst, NY, which offers its own microbrew "Duff's Beer." As it is named after the restaurant (whose name is, in turn, derived from an actual person's name), and the doesn't look anything like the Duff beer in The Simpsons, then there wouldn't be any grounds for a trademark claim.
From what I can see, this pop-up bar is more like the former case than the latter: they're going way beyond just using the name, and instead they are going out of their way to associate themselves with Stranger Things' IP, to the point where it's not unreasonable for Netflix to want to defend their trademark.
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Re: Re: Re: Consumer Confusioning
Just calling a restaurant "Stranger Things" would be fine and noninfringing. Calling it "Stranger Things" and theming its menu items with references to the Netflix show suggests an association with the Netflix show.
TV show branding on real locations has precedent; remember, when The Simpsons Movie was released, there were Circle Ks (or 7/11s? I don't remember) themed like the Kwik-E-Mart selling Duff Beer and Krusty-O's.
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Re: Sounds like a good idea but...
The problem is that a lot of businesses skip the "being nice and civil" part and go straight to the ugly threats.
Often without having a good case for infringement in the first place.
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Re: Re: Consumer Confusioning
It is? "Upside-down" is, but "the Upside Down"?
The article calls it an obvious reference, but it wasn't obvious to me.
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Re: Re: Re: Re: Consumer Confusioning
It's a trademark. If Fox weren't using it in trade for 20 years, does it really belong to them? Or should it belong to whoever used it first in the trade of beer?
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Re: Re: Re: Re: Re: Consumer Confusioning
They were using it in the trade of their TV show, regularly, for twenty years. Duff Beer didn't show up in every episode, but it certainly showed up several times each season.
Again, the problem isn't so much using the name "Duff Beer." It's using it in a way that creates brand confusion, in that people might be confused that it was endorsed by the creator of the show.
There's a whole bunch of Star Wars merchandise out there that couldn't have existed in 1977 (like, for instance, R2-D2 USB car chargers). Are you really saying that, if someone put out an R2-D2 USB car charger before Lucasfilm could, that they should be given the trademark on it, just because they hadn't made one in the twenty years since they'd trademarked R2-D2?
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Re: But I am still left wondering: SO, "fist in velvet glove" is okay?
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Re: Re: Re: Re: Consumer Confusioning
I think Netflix have handled this very well, clearly much better than others have in the past, but this is polar opposite to what they did in France with their Narco advert against piracy where they threatened to kill the piraters and their families, it was very good in the context of being themed about Narco's but in very bad taste.
This makes me think they have learnt from their mistakes and are trying to do good with the promise of thinking before acting.
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Re: Re: Re: Re: Re: Re: Consumer Confusioning
Sure. They couldn't use the copyrighted character art, but if they wanted to write "model #R2-D2" on a charger for some reason, why not? Similarly "Duff beer" should be fine if they're not using art from the cartoon.
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You know we're all in trouble when, typically, Techdirt would be trashing the Netflix request up and down for its obvious abuse of trademark protection.
Instead, accolades are given?
Netflix should have pulled out the copyright card (transformative and derivative qualifications here), not the trademark card.
So put away the accolades and do your job, Techdirt.
Netflix is in in the wrong here.
PS: @AC for Fox "Duff Beer" reference: no, that's not how trademark law works.
Fox would have a legal claim on copyright infringement if someone released a beer looking near/identical to the "brand" in the show, but trademarks do not cover the expression of ideas.
Ever.
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Thanks.
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Re: Re: Re: Re: Re: Re: Re: Consumer Confusioning
Well, yeah, obviously. As I pointed out previously, "Duff's Beer" by Duff's Famous Wings obviously shouldn't run afoul of Fox's legal department, as a green square looks nothing like an orange chevron, and the beer is clearly named after the establishment, not after the similarly-named beer from the show.
"The Upside Down" pop-up bar, however, seems to be using more than just the name: it's basing its whole theme, its decorations, its menu items, etc., on the TV show's IP.
I don't think anyone here is arguing that a bar called "The Upside Down," where the theme is that the chairs are fastened to the ceiling and the light fixtures are on the floor, would be infringing on Stranger Things' trademark.
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Re: Consumer Confusioning
Imagine someone going into an unlicensed Star Trek or Game of Thrones bar/restaurant.
What if something goes wrong (fight/food or drink poisoning)?
Think the patron wouldn't sue Viacom/Paramount thinking they OKed the place?
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Imagine
Then I remembered these are lawyers we're talking about. Snap! Back to the present.
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At some point though, I'm sure that even Netflix will want to cash in on its properties, as they have every right to. Then, they may license their IP to whomever wants to use it.
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