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.