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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  • icon
    That Anonymous Coward (profile), 21 Sep 2017 @ 10:58am

    When I saw this on the twitters I retweeted it and said this is how you cease and desist.
    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.

    reply to this | link to this | view in chronology ]

  • icon
    Anonymous Anonymous Coward (profile), 21 Sep 2017 @ 11:01am

    Consumer Confusioning

    Let's see. Netflix, a business involving distributing and creating shows of various varieties. The Upside-Down, a business involving the selling of liquor. As nice as Netflix's letter was, and as nice as the results are, just where is the potential consumer confusion? Where does Netflix get off crossing industries, in contravention of the whole design and execution of IP law?

    One proffers videos, and the other proffers liquor. Is the person drinking thinking they are consuming a video instead?

    reply to this | link to this | view in chronology ]

    • identicon
      Vic, 21 Sep 2017 @ 11:21am

      Re: Consumer Confusioning

      Totally agreed. I am already confused why Netflix would send this letter. Considering that the Upside Down is a regular expression in English, nothing extra creative went into thinking up this name for the show. No hint, no quirks, no word plays. The only "damning" part for the bar owners I guess is the timing. OK, folks, if you named your bar Upside Down in like 2015 - you're OK. But after July 15 of 2016 - damn you!
      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?

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 21 Sep 2017 @ 11:36am

        Re: Re: Consumer Confusioning

        I don't think you read the article.

        reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 21 Sep 2017 @ 12:52pm

        Re: Re: Consumer Confusioning

        "Considering that the Upside Down is a regular expression in English"

        It is? "Upside-down" is, but "the Upside Down"?

        The article calls it an obvious reference, but it wasn't obvious to me.

        reply to this | link to this | view in chronology ]

    • identicon
      kallethen, 21 Sep 2017 @ 11:30am

      Re: Consumer Confusioning

      According to the linked article, it wasn't just the name. The whole bar was themed on the show, including menu items.

      reply to this | link to this | view in chronology ]

      • icon
        Anonymous Anonymous Coward (profile), 21 Sep 2017 @ 11:53am

        Re: Re: Consumer Confusioning

        Hmm, I have read that article twice, and I don't see anything about menu items or other uses of 'theme', just that it was themed.

        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?

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 21 Sep 2017 @ 12:11pm

          Re: Re: Re: Consumer Confusioning

          If you want to see just how mush of the theme they are using, this is probably the best link https://chicago.eater.com/2017/8/18/16164822/stranger-things-pop-up-emporium-logan-square

          reply to this | link to this | view in chronology ]

          • icon
            Anonymous Anonymous Coward (profile), 21 Sep 2017 @ 12:28pm

            Re: Re: Re: Re: Consumer Confusioning

            Thanks for that, not knowing the show I don't know all the references but it appears that there was an effort to associate with the show.

            It still leaves my question about the disparate industries though.

            reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 21 Sep 2017 @ 12:45pm

          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.

          reply to this | link to this | view in chronology ]

          • identicon
            Anonymous Coward, 21 Sep 2017 @ 12:54pm

            Re: Re: Re: Re: Consumer Confusioning

            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.

            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?

            reply to this | link to this | view in chronology ]

            • identicon
              Anonymous Coward, 21 Sep 2017 @ 1:15pm

              Re: Re: Re: Re: Re: Consumer Confusioning

              If Fox weren't using it in trade for 20 years, does it really belong to them?

              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.

              Or should it belong to whoever used it first in the trade of beer?

              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?

              reply to this | link to this | view in chronology ]

              • identicon
                Anonymous Coward, 22 Sep 2017 @ 10:01am

                Re: Re: Re: Re: Re: Re: Consumer Confusioning

                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

                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.

                reply to this | link to this | view in chronology ]

                • identicon
                  Anonymous Coward, 22 Sep 2017 @ 11:21am

                  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.

                  reply to this | link to this | view in chronology ]

        • identicon
          Thad, 21 Sep 2017 @ 12:49pm

          Re: Re: Re: Consumer Confusioning

          That it implies endorsement.

          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.

          reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 21 Sep 2017 @ 11:40am

      Re: Consumer Confusioning

      Besides that, Stranger Things and Upside Down are completely different as far as I'm concerned. This is just completely dumb of Netflix. Who is remotely going to mix the 2 up?

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 21 Sep 2017 @ 12:29pm

        Re: Re: Consumer Confusioning

        Please look a the Chicago Eater link above. It features the following:

        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.

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 21 Sep 2017 @ 12:56pm

          Re: Re: Re: Consumer Confusioning

          That sounds like an advertisement for the show. Netflix should've given them a few thousand dollars and a license and pretended it was their idea all along.

          reply to this | link to this | view in chronology ]

          • icon
            XcOM987 (profile), 22 Sep 2017 @ 5:25am

            Re: Re: Re: Re: Consumer Confusioning

            I wouldn't be at all surprised if Netflix licence it to them for nothing or a very small ammount, or even better, get them to do themed popups of their other shows over time, they can outsource it all to them,

            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.

            reply to this | link to this | view in chronology ]

            • icon
              ralph_the_bus_driver (profile), 9 Nov 2017 @ 5:48am

              Re: Re: Re: Re: Re: Consumer Confusioning

              I agree. Netflix is looking long term at the PR this establishment gives the show. The name does not injure Netflix or their show in any way as the network makes their money off of subscribers, not ad revenue. Anything that brings them subscribers is a good thing.

              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.

              reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 22 Sep 2017 @ 11:30am

      Re: Consumer Confusioning

      Because the bar uses images from the TV series as well as naming drinks after characters, places, and story elements from the TV show.

      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?

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 21 Sep 2017 @ 11:15am

    You catch more fish with worms than with an old boot...

    but the fish still gets hooked, gutted, and cooked while the cat eats its head. (Another original cliche by Elmer W Litzinger. Licensed to copy freely if give due credit.)

    To me, you're also attempting a new writing style: just telling a story.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 21 Sep 2017 @ 11:16am

    But I am still left wondering: SO, "fist in velvet glove" is okay?

    No problems remain in trademark with soothing terms in C&D letter?

    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.

    reply to this | link to this | view in chronology ]

    • icon
      firebird2110 (profile), 21 Sep 2017 @ 11:36am

      Helps if you read the linked article

      "The letter was sent to The Upside Down, a Chicago pop-up bar themed on the popular Netflix series Stranger Things. Having opened in August with the initial intention of operating for six weeks, the venue planned to extend its lifespan until after the show’s second season premieres in October. However, it had not sought or received Netflix’s permission to use its protected branding."

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 21 Sep 2017 @ 9:19pm

      Re: But I am still left wondering: SO, "fist in velvet glove" is okay?

      You believe the RIAA can do no wrong. Not really a position to criticize from.

      reply to this | link to this | view in chronology ]

  • identicon
    JEDIDIAH, 21 Sep 2017 @ 12:40pm

    Sounds like a good idea but...

    The idea of being nice and civil sounds appealing. However, quite often people will just abuse you and try to take advantage of you until you go all medieval on them. They may even start out being accommodating and then change their minds until you get out the big guns and make ugly threats.

    This is true for just basic consumer to corporate interactions. Forget about this b2b stuff.

    reply to this | link to this | view in chronology ]

    • identicon
      Thad, 21 Sep 2017 @ 12:50pm

      Re: Sounds like a good idea but...

      The idea of being nice and civil sounds appealing. However, quite often people will just abuse you and try to take advantage of you until you go all medieval on them. They may even start out being accommodating and then change their minds until you get out the big guns and make ugly threats.

      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.

      reply to this | link to this | view in chronology ]

  • icon
    Jinxed (profile), 22 Sep 2017 @ 10:38am

    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.

    reply to this | link to this | view in chronology ]

    • identicon
      Thad, 22 Sep 2017 @ 1:27pm

      Re:

      You haven't really provided any kind of argument, though, just insults. Maybe you're right, but you haven't cited any law or precedent to support your position. This seems like a perfectly reasonable trademark claim to me. I can see a case for copyright infringement too, but that doesn't make the trademark claim invalid. If there's something I'm missing, you haven't explained it.

      reply to this | link to this | view in chronology ]

  • icon
    Jinxed (profile), 22 Sep 2017 @ 10:39am

    PS: Web developers, please fix the "markdown" coding. We're losing our line breaks.

    Thanks.

    reply to this | link to this | view in chronology ]

  • identicon
    Hans, 22 Sep 2017 @ 8:35pm

    Imagine

    Wow. I had this 60's flashback moment where I thought I heard John Lennon singing and I was in a world where lawyers were actually nice... because it was in their interest and made the world a better place.

    Then I remembered these are lawyers we're talking about. Snap! Back to the present.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 24 Sep 2017 @ 8:18pm

    If lawyers had sent out cease and desist letters to Star Trek fans in the early 70s who put on conventions and put out fanzines, the fans wouldn't have worked like a troupe of unpaid interns to bring value to the property and made Star Trek the cash cow it's been for a good 40 years for Paramount and now CBS.

    reply to this | link to this | view in chronology ]


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