If you spend any amount of time on the web, you have probably already heard about the best Cease & Desist Letter in the history of lawyers. I could have blogged about this when it happened, but I was so delighted I went out and bought a bottle of Jack Daniels and that was kinda all she wrote.
Let’s start with a brief overview of the world of “cease and desist” (or C&D) letters. These onerous little pieces of paper are a large part of why I went to law school in the first place–I generally hate them. A letter from an attorney telling someone to “stop doing that, or we’ll sue!” is a tactic used in multiple areas of the law, but ever since the internet went from the playground of the nerds to being co opted by the business-man, it’s been (alleged) intellectual property infringement that’s generated most of these beauties. When the average person gets one of these letters, the fear of legal bills brought on by the site of a page full of angry legal-ease is generally enough to get them to agree to just about anything demanded of them.
Many of these threatening letters are NOT legitimate. They are merely thuggish intimidation meant to keep people from legitimate activities by introducing the threat of legal action, the cost of which can break most people, even when they are in the right. The costs of this behavior by litigious clients and their attorneys is higher than you might think. The “chilling effect” of a C&D on discourse, communication and the development of new ideas is incredible. And the problem is great enough to have prompted the Electronic Frontier Foundation and several law schools to set up Chilling Effects.org, which monitors the impact of things like C&D notices. Their catalog of C&D letters people have received is astoundingly large.
So why am I so delighted by a C&D letter from the attorney for Jack Daniel’s to the author of a book? Well, for one thing, it is most decidedly not a false claim. The cover of this author’s book was modeled after the distinctive label for a bottle of Jack Daniel’s whiskey. Since that label is trademarked, the use of that distinct look and style on the cover of the book is more likely than not to hold up as infringement (nothing is ever 100% certain). While I have mixed feelings about the way trademarks in general have been warped*, within the current legal environment, protection of a trademark is legitimate and important to many companies.
So that’s one plus.
But even more than it just being a legit request, is the way the attorneys for Jack Daniels approach this. There is no high-handed threat in this letter. It acknowledges and shows appreciation for the fact that the choice to emulate the Jack Daniel’s label is flattering. By and large, the people receiving C&D letters are not pirates, thieves or crooks–they’re fans–and yet when you look at other C&D letters received by people in similar situations, the letters are written to intimidate and imply if not openly accuse the recipient of being crooks of the lowest order. Mad points to Jack Daniel’s for NOT taking that accusatory route and actually acknowledging a fan as a fan.
Wait, wait! There’s more! Not only did the Jack Daniel’s letter acknowledge a fan politely, they made a very reasonable request (rather than a demand). They asked not that the book’s cover art be immediately changed, but that the author and publisher change the art when the book is re-printed later. Ha! Completely reasonable.
And, to add just a little more awesome to this thing, Jack Daniel’s offered up money to defray the costs if the author was willing to make that cover art change immediately. Jigga what? I can’t even tell you just how incredibly impressive that move is. I just don’t have the right words. Sure, not everyone could afford to help pay so that someone doesn’t infringe their mark, and no company wants to make a habit of paying off infringers–but in this case it was an appropriate move and shows that these attorneys (and their corporate client) put thought into the situation and made an appropriate decision.
While the author and publisher did not accept the money to change the initial cover art, they made immediate changes to the print-on-demand versions and will be changing in the second printing as requested. Clearly, they have retained the appreciation of the infringing party, rather than alienating them as a customer. And, in the case of myself and others, Jack Daniel’s gained customers. While I do enjoy whiskey, I had no preference or brand loyalty driving my choices and did not purchase it frequently. The day this popped up on twitter, I was so impressed, I stopped on my way home from work and bought a bottle of Jack. I’m not saying it is the only whiskey I’ll ever buy, but good, bad or indifferent, I am now more willing to purchase from them knowing, at the very least, that my money will go to a company that uses humanity and sense in their intellectual property dealings.
Now, contrast all that, with, oh, this letter at Chilling Effects sent to a fan-site from Paramount. As an attorney, I am sad to say that there are far, far more letters like this one, than like the Jack Daniel’s letter. And while I know lawyers work at the pleasure of our clients, we are called counsel for a reason. Advising our clients that there are reasonable and polite options that still protect property and intellectual property is something we can and should do. It may not always work, but this letter proves that it can.
*The original purpose of a trademark was not for the benefit of the owner, but for consumer protection. The idea was that trademarks should allow consumers to feel confident about the source of the product/service they were paying for. Along the way, however, the emphasis on trademark has become focused on the protection of the owner of the mark and the investment they’ve made in it. Honestly, at the end of the day, how many people were going to be misled into buying that novel because it had a cover that looked a lot like a Jack Daniel’s bottle? And how many would actually be dumb enough to think that a maker of whiskey is involved in writing novels? It’s not really protecting a consumer, so it’s perverted the intent of trademarks, in my opinion.