Health And Human Services Apparently Unable To Recognize Satire; Sends Bogus Legal Threat

from the because-shut-up dept

Another day, another story of someone with skin way too thin not comprehending satire and dashing off an angry legal threat. In this case, it’s worse than usual because the bogus legal threat is coming from the US government. Popehat has the full story of how some of the legal geniuses at the Department of Health and Human Services have sent a bogus cease-and-desist letter over a pair of obviously satirical posts on the site AddictionMyth.com. While we’ve long been skeptical of the medical profession’s desire to label all sorts of things “addictions,” that particular site takes it to extreme levels, arguing that there’s nothing that’s addictive, and all talk of addictions (including drug and alcohol addictions) are just a big scam “perpetrated by law enforcement, rehab groups and the entertainment industry.” I think that’s nuts, but they certainly have their right to say so.

They also have the right to post a satirical conversation with a so-called “addiction guru.” As Ken at Popehat points out, there’s no way to read this without realizing it’s satire:

AM: According to your research, blackouts occur not just in middle age alcoholics, but in young college students who may not have built up much tolerance for alcohol. Their drinking often ended up in unprotected sex, vandalism, and fights, of which they had no memory until cued by a friend. What was their response to their memory? Regret? Horror? Delight? Glee? A little of each?

AW: I wasn’t the author of the research. But I would say a little of each, at least based on my own experience. I suspect they remembered more than they wanted to admit. Though one time I got really drunk at a party and my friend told me that I was talking to his sister in French, and I had absolutely no recollection of that. It was surprising to me as a brain scientist because alcohol has been shown to suppress activation of the inferior frontal region (Broca’s area also known as the ‘language center’). I probably shouldn’t have been able to talk at all, let alone French, given my BAC. But what was really weird was that I don’t even know French!

Following this, AddictionMyth posted a bogus mocking satirical cease-and-desist, which pretends to be angry about the satirical interview. This too, is obvious satire. I mean, the letter includes this line:

Do you realize how psychotically insane that sounds? In my field we have a term for it: CRAY-CRAY!

Either way, this bogus cease-and-desist appears to have stirred up the attention of a lawyer at the real US Department of Health and Human Services (HHS), which apparently has some extra time on its hands now that Healthcare.gov’s website is kinda, sorta working. Lawyer Dale Berkley sent a cease-and-desist in which he argues both that (1) the interview is clearly not true and (2) that it might be defamatory. You can’t really have both of those things be true.

We recently became aware of two items that you posted on your website directed to two employees of the National Institute on Alcohol Abuse and Alcoholism (“NIAAA”)–one which purports to be an interview with NIAAA Project Manager Dr. Aaron White, and the other a letter from NIAAA Director Dr. George Koob.

Of course Dr. White did not in fact participate in the interview and Dr. Koob did not write the letter attributed to him.

We are concerned that, especially with respect to the mock interview, the public could be deceived and misled into believing that Dr. White in fact contributed to the interview. Those items are defamatory, and expose you to potential liability.

We therefore request that you either remove the articles from your website, or provide a prominent disclaimer indicating that Dr. White and Dr. Koob did not participate in the interview or write the letter.

As noted above, by admitting it’s obviously fake, Berkley undermines his own legal argument. Ken White summarizes it nicely:

When the target of satire complains that it is defamatory, the relevant question is whether the satire can reasonably be taken as a statement of fact about its subject. Dr. Berkley, by saying that “of course” the satirical articles do not reflect the actual words of the subjects, has just proclaimed that the satire he is complaining about cannot be taken as a statement of fact.

You paid taxes for that.

White goes into a more in-depth legal analysis of just how preposterously bogus the letter from HHS is, and questions if Berkley was even remotely aware of the law before sending the letter, or if any other lawyer at HHS bothered to look it over. In the meantime, we’re wondering if HHS has any programs for helping with the tragically satire-impaired?

Filed Under: addiction, cease and desist, defamation, free speech, health and human services, hhs, satire, threats

The Greatest Response To A Cease And Desist Letter, Probably Written While Drunk

from the cc:-mr.-bucks dept

This year certainly had its share of ups and downs in terms of lawyerly antics, but in our minds, 2013 shall forever be known as the year of the snarky cease and desist response letter. Back in June, we broke the news of the now famous response to a cease and desist letter received from the Town of West Orange, New Jersey, which went viral worldwide thanks to the power of sarcasm. A few months later, we wrote about an equally entertaining response to a cease and desist letter received from the American Bankers Association, rife with Spice Girls lyrics and Valley girl lingo.

It’s been a while since we wrote about one of these treasures, so we figured we’d close the year out with a bang. We discovered yet another amazing response to a cease and desist letter, and this one may be the greatest of them all — if only because we think its author might have been drunk while writing it….

Jeff Britton, the owner of Exit 6 Pub and Brewery in Cotteville, Missouri, received a cease and desist letter from none other than Starbucks, specifically from Anessa Owen Kramer of Honigman Miller Schwartz and Cohn, over a beer named “Frappicino.” As the world knows, the lords of coffee sell a frozen drink (a coffee Slurpee?) by the name of “Frappuccino.” Yes, the names are similar, but to be confused enough to think you could order the nectar of mall-hopping teenage girls at a bar, you’d have to be pretty drunk.

Rather than cower in fear over the legal consequences threatened by America’s coffee monarch, Britton decided it would be in his best interests to write a response on his own, without the assistance of legal counsel, because he didn’t need no stinkin’ lawyer. Here’s what he posted on the Exit 6 Facebook page:

So quick little story. Last week I received a cease and desist letter from the attorneys at Starbucks. Apparently there was a beer on Untappd that someone named “Frappicino”. 3 people had checked into said beer. 3. Starbucks [didn’t] like that. So I got a letter. They wanted me to remove the beer and promise never to use their names again. They also wanted my written response and guarantee. Here is their letter. And also my response.

Needless to say, Britton’s response is amazing — he even threw in some legalese, despite the fact that he’s not a lawyer (oh yeah, heretofore, baby). Here are some highlights from his letter (all errors included in the original). You’d have to be drunk to write something like this, right? Who cares, it’s freakin’ awesome:

Exit 6 has proudly sold at least 38 drinks in Cottleville MO and has a strong presence in St Charles county, a suburb 40 miles outside the St Louis metropolis. It has recently come to Exit 6 Pub and Brewerys attention that there were 3 check ins to the beer with a very similar name to the “F Word”. Unfortunately it was only similar to the F Word because we meant to call it the same thing. Lucky for us, we’re poor spelers.

I would like for both Ms Owen Kramer and Mr Bucks to rest assured we meant no deception, confusion, or mistaking in the naming of the beer F Word. We never thought that our beer drinking customers would have thought that the alcoholic beverage coming out of the tap would have actually been coffee from one of the many, many, many stores located a few blocks away. I guess that with there being a Starbucks on every corner of every block in every city that some people may think they could get a Starbucks at a local bar. So that was our mistake.

Mr. Bucks isn’t Ms. Owen Kramer’s co-counsel; no, this “poor speler” is addressing Mr. Star Bucks himself, as if he were an actual human being. We imagine Britton was at least six Frapps in at this point.

We haven’t even gotten to the best part yet. To show Mr. Bucks just how sorry he really was, Britton enclosed a check in the amount of Exit 6′s profits made from its “Frappicino” beer to be applied to Ms. Owen Kramer’s legal fees, which he admits were “probably … more than Exit 6 made last year.” Here it is:

Behold: the legal equivalent of a mic drop. Cheers to you, Jeff Britton! We raise a glass in your honor.

Filed Under: beer, cease and desist, coffee, frappicino, frappuccino, likelihood of confusion, trademark
Companies: exit 6 pub and brewery, starbucks

Apple Wants To Sell Fewer Products; Kills Off Website That Made Finding iPads And iPhones Easier

from the your-periodic-friendly-reminder-that-Apple-will-tell-YOU-what-you-like dept

Apple is still one of the most desirable brands in the world, no doubt largely due to the company’s fierce protection of that brand. In addition to periodic bouts of trademark bullying, it has also displayed an alarming antipathy towards developers who stray over the boundaries of what it considers to be acceptable.

Its tight control over the content of apps offered on its platform is notorious. Some see this as nothing more than excessively good quality control. Others see it as something far more arbitrary — apps removed simply because someone at Apple didn’t like them.

This attitude extends far beyond the boundaries of the iTunes app store, as one developer found out.

A website that helped users locate Apple stores with iPhones and iPads available for sale has shut down its service after being hit with a notice alleging that it violated Apple.com’s terms of service.

Apple-Tracker.com and iphone-check.herokuapp.com examined publicly available inventory information from Apple.com and tried to make it easier for people to navigate. The service gained some attention, with articles in the Los Angeles Times and other news sites.

The site now shows a message from developer Mordy Tikotzky saying, “I’ve decided to turn off the site. I’m not doing this because I want to, but rather because I received a DMCA takedown notice from Apple. I’m not really interested in picking a fight with apple so….. I guess it time to just say good bye.” On Twitter, Tikotzky wrote, “It might be legal but I don’t have the resources to fight with Apple.”

First, just for clarification, what Tikotzky received was not a DMCA notice. It’s simply a “takedown notice” issued by Apple’s legal team asking him to take down his site.

But why would Apple take his site down? Its sole purpose was to help potential customers find the exact phone or tablet they were looking for by aggregating item availability from all the stores in a certain zip code. Yes, Apple’s own site contains a search function but it doesn’t do what Tikotzky’s site did. Apple will allow you to search for one item (16Gb iPad Air) and list stores where it’s available. Tikotzky’s apple-tracker did this better. It provided a table of all available models and lit up with an easy-to-see green if it was available at a certain store.

To achieve this using Apple’s site, a person would have to run multiple searches and keep track of which one had what models. Titkotzky’s automated this — which is likely what Apple determined to be a violation of its TOS. Here’s the relevant part of the TOS as quoted in the takedown letter.

Your Use of the Site. You may not use any “deep-link”, “page-scrape”, “robot”, “spider” or other automatic device, program, algorithm or methodology, or any similar or equivalent manual process, to access, acquire, copy or monitor any portion of the Site or any Content, or in any way reproduce or circumvent the navigational structure or presentation of the Site or any Content, to obtain or attempt to obtain any materials, documents or information through any means not purposely made available through the Site. Apple reserves the right to bar any such activity.

Apple doesn’t want you to do much with its site. And this very restrictive wording is what turns handy tools into “violations” and “circumventing the navigational structure” into an unacceptable situation, according to Apple. (Not only that, but if so inclined, someone could probably push for charges under the CFAA, which views this sort of “circumvention” as a crime.)

All this does is maintain the status quo. Do not screw with Apple’s stuff. If it wanted a handy aggregation tool, it presumably would have built it itself and covered it in tastefully rounded corners and pleasing color gradients. Tikotzky’s tracker may have increased sales, but it ultimately doesn’t matter, not when there’s turf to protect.

People are constantly searching for ways to improve the services they use, but they’re running head on into companies like Apple and Craigslist who take the stance that the customer will get what’s provided by the company, instead of what they actually want. It’s unfortunate, but for some, protecting the brand is more important than serving those purchasing their products.

Filed Under: cease and desist, legal threats, takedowns
Companies: apple

Cosplayer Sent Cease & Desist By Carpet Company For Hotel Carpet Camouflage

from the carpet-bombing dept

The realm of cosplay seems to hold a strange spot in intellectual property limbo, where everyone is conscious that the getups are homages to popular movies, comics and video games, but nobody really seems to do more than shrug it off. Perhaps it’s because everyone realizes these people are fans and are probably doing way more good than harm in expressing their fandom, or perhaps it’s because you just shouldn’t take the kind of forty year old guy willing to dress up in a Hello Kitty outfit to court and expect any good to come out of it. Either way, you typically don’t see a great deal of hand-wringing by media companies over cosplaying.

But carpet companies are apparently a different story. Harrison Krix, a prop-builder and cosplayer, put together an incredibly cool camouflage outfit for DragonCon in Atlanta. The design was based off of the carpet used by the host of the convention, Marriot Marquis Atlanta.

Then Krix decided to sell the fabric he made so that other visitors to the convention the following year would be able to melt into the floors of the hotel as well. That’s when the manufacturer of the carpet sent him a cease and desist.

Seems Krix was selling some of the fabric he made for the costumes on textile site Spoonflower, so that others could make their own for next year’s show. He’s since had to pull the design, having received a Cease and Desist from Couristan.

Someone, anyone, is going to have to tell me in what strange, stupid world it makes even a semblance of sense for Couristan to go legal on a dude selling outfits. Yes, they’re based on the carpet design. Yes, they’re designed specifically to look exactly like the carpet. But so what? Krix isn’t competing with Couristan. The company isn’t going to lose any business because he mocked up camouflage based on its carpet. What the hell?

In fact, this could have been an opportunity for Couristan to build up some good will around its name by acting human. Or, at the very least, it could have sat back and done absolutely nothing. Going legal seems to be the only possible choice that could produce a negative consequence, like getting the company name in lights for pulling a d-bag move. Well, done, Couristan!

Filed Under: carpets, cease and desist, copyright, cosplay, designs, harrison krix
Companies: couristan

Epic Response To A Bogus Cease And Desist Letter: Bravo For Your Legal Satire!

from the how-it's-done dept

In case you don’t know by now, many lawyers — maybe even you — enjoy writing cease and desist letters in a foreign language called legalese. This exotic tongue often contains Latin phrases, SAT vocabulary words, and various here-and-there words (e.g., herein, heretofore, hereinafter, hereunder, thereof, thereto, therewith, thereunder, therefor, thereon, and therefrom).

A person unfamiliar with legalese may become frightened and run to another attorney for help in deciphering this mystical language of lawyerly legend. The lawyer who has been tasked with translating legalese to English may then become annoyed, and issue a scathingly funny letter in return.

For an example of how to write a great response to a cease and desist letter, keep reading…

Jake Freivald, a resident of West Orange, New Jersey who once ran for town council and lost, started westorange.info, a rudimentary website that provides basic information about the town, like “places to talk [online]” and “places to get news.” It doesn’t look like a site that’s sponsored by West Orange in any way, shape, or form — unless the town hired middle schoolers to create its online presence.

That said, not long after he started the site, Freivald received a demand letter from Richard D. Trenk, the township attorney for West Orange (and an alum of my alma mater). Here is Trenk’s cease and desist letter (retyped online by Freivald, who added sics where necessary to indicate errors in the original):

Dear Mr. Freivald:

I am the Township Attorney for the Township of West Orange (“Township”). It has come to our attention that, on or about May 13, 2013, you registered and began to use the domain name “westorange.info” (the “Info Domain”). The Township interprets this action as an effort by you to confuse and conflate the Township’s official domain name and Web site with the Info Domain that you maintain.

The use of the Township’s name is unauthorized and is likely to cause confustion [sic], mistake or to deceive the public and may be a violation of the Township’s federally protected rights. The Info Domain falsely creates the impression that the Township is associated or affiliated with the Info Domain. At a minimum, this action has been taken with constructive knowledge of the Township’s name and Web site, and constitutes bad faith use of the Info Domain.

Accordingly, the Township demands that you cease and desist from use, ownership and maintenance of the Info Domain. The Township further demands that, within ten (10) days, the Info Domain be withdrawn from the current registrar, and that you cease all current and future use of the Info Domain, or anything else confusingly similar thereto.

The Township reserves all rights and remedies.

Please be guided accordingly.

Very truly yours,

Richard D. Trenk, Township Attorney

We hope you didn’t get “confusted” by that. Freivald’s lawyer, Stephen B. Kaplitt — formerly of Weil Gotshal, Cadwalader, the U.S. State Department, and Beacon Financial — wasn’t, and it looks like he was “guided accordingly” (don’t you hate that phrase?) when he penned this <a href=https://www.documentcloud.org/documents/716418-148538709-stephen-kaplitt-cease-and-desist.html”>fantastic response:

My favorite line: “So that I may properly counsel my client, please also explain what in Sam Hill’s name you meant by ‘anything else confusingly similar thereto.’” What an epic letter. Bravo, Mr. Kaplitt!

My Cease-and-Desist Letter [West Orange, NJ Forum]
My attorney’s response to the cease-and-desist letter [West Orange, NJ Forum]

Filed Under: cease and desist, jake freivald, legal satire, response

Fox Sends Cease & Desist Letters To Firefly Fans Selling Jayne Hats, Because Money

from the pissing-off-fans-left-and-right dept

As a whole bunch of you sent in, via a variety of different sources, apparently a maker of “Jayne hats” from the cult TV show Firefly has received a cease & desist letter from the legal attack dogs at Fox, just as an “authorized” version has shown up for sale on Thinkgeek and other sites.

People are not at all happy about this.

Recently, though, Ripple Junction, a company that produces licensed apparel, obtained the rights to mass-produce the Jayne Hat. It instantly became a hit seller on popular nerd sites like ThinkGeek. It seemed that getting a Jayne hat was easier than ever. But that ease came with a price.

Firefly fans are coming out of the woodwork, and they are hopping mad. Why? Turns out in the last few weeks many of them have received cease-and-desist letters or have simply been banned from Etsy for producing DIY Jayne Hats. This communal endeavor, it seems, is coming to a close, and fans of the show are asking themselves why. Isn’t the whole point of the Jayne hat that it be homemade? Doesn’t it mean anything that the hats are often auctioned off at charity events? After 10 years of nothing, isn’t it unfair for Fox to suddenly force lifelong fans to cease production of something they love?

The good folks over at ThinkGeek, who are known for being generally cool and with it — and not at all prone to dickish legal behavior — were quick to put out a statement about all of this, noting that they had nothing to do with the cease and desist letters, and in fact, they’re happy to compete with the homemade sellers.

We just wanted you to know that ThinkGeek has nothing to do with the C&D notices. The hat is licensed by a vendor with whom we have a relationship and while the hat is not an exclusive to ThinkGeek, we did have a hand in its development and answered the difficult questions like, “Are the earflaps long enough?” and “Is that man afraid of anything?” (Yes and no, respectively.)

Would the C&D have happened if we did not carry the hat on our site? We’re not sure; we’ll leave that question to sharper legal minds than ours. We’re here to carry the shiniest of goods from ’round the ‘verse, even maybe makin’ them ourselves. We just want y’all to know that while we might not always aim to misbehave, we’ll always be sure to get you the best stuff this side of the Eavesdown Docks.

The way we see it, if people want to make their own, shiny. For those out there who can’t knit to save their gorram lives, we can help.

See? Now that’s a reasonable attitude to take. But big media companies like Fox tend to employ lawyers who aren’t known for their “reasonable takes” on things, no matter how much goodwill it might destroy among fans.

Filed Under: cease and desist, firefly, jayne hat
Companies: fox, thinkgeek

Spineless Web Host Shutters Site Over Toothless Legal Threat Because Comments Are Too Much Trouble

from the bad-hosting-company dept

What is it with hosting companies who are quick on the trigger to take down entire sites in a kneejerk response to legal threats, going way, way beyond their legal obligations? We recently wrote about hosting firm ServerBeach taking down 1.5 million blogs over a single copyright claim (when to keep their DMCA safe harbors, they only needed to take down the one bit of content highlighted). Now another hosting company, PhoenixNAP, has done something even more ridiculous. In response to a takedown notice (pdf) sent by Atlanta mayor Kasim Reed’s lawyers, PhoenixNAP took the entire gossip site LipstickAlley offline without any notice to the site owner.

Reed was arguing that comments on the site were defamatory, though it’s telling that his lawyers went straight to the hosting company, rather than the site itself. Even so, PhoenixNAP was under absolutely no legal obligation to comply. Unlike the notice-and-takedown provisions of the DMCA, when it comes to defamation, hosting companies have even greater safe harbors under Section 230 of the CDA, which makes it clear that service providers are not liable for speech made by others. Period. They don’t have to take down the content. If Reed wants to sue those who actually made the comments (which are Lipstick Alley users, rather than Lipstick Alley itself), that’s his business, but PhoenixNAP is under no obligation to do anything.

Amazingly, even after being informed of this, PhoenixNAP stood by its decision (with the exception of noting that it should have informed Lipstick Alley’s owner that it was cutting off the site). As noted by Public Citizen’s Paul Levy:

In response to a strong protest, Phoenix NAP acknowledged that its failure to give notice was a mistake in process, but it had no sympathy for Lipstick Alley’s legal rights; PhoenixNAP told me that it takes claims of defamation seriously and, without regard to the merits of the dispute, its customers must “resolve the issue with the complaining party.” Indeed, PhoenixNAP was not at all disappointed to learn that Lipstick Alley felt it could no longer continue as a hosting customer, because, apparently, PhoenixNAP believes that web sites on which users can post comments generate too much trouble. The discretion accorded to hosting services to avoid certain kinds of web sites is the other side of the coin from the important protections that section 230 affords, but consumers should be aware of the limitations before they are induced to sign on as customers. PhoenixNAP might consider doing a better job of explaining its preferences

These days, if you’re hosting a website, you want a hosting company that will stand up for your rights, and recognize its own rights as well. This move by PhoenixNAP has made it clear that it doesn’t stand up for its own customers, and it should raise alarms for anyone who hosts a website with PhoenixNAP. Apparently the company will shut you off if anyone complains, and it’s your problem to deal with it. That’s not a hosting company that I would want to work with. Furthermore, as Levy explains, actions like this only encourage more complaints to be sent their way:

You would think that a hosting service like ServerBeach or PhoenixNAP would respond with hostility to complainants who take their demands straight to the hosting service instead of beginning with the web site where supposedly improper content is hosted. When the service responds directly, and especially when it responds by taking down the customer’s entire site, the service not only encourages others to impose on the service by complaining there instead of to the underlying site. The service also risks losing long-term customers who think that they ought to be given a bit more respect.

It is not only hosts of message boards or bloggers who allow comments who should worry about PhoenixNAP’s attitude about mere claims of bad content. With PhoenixNAP playing the role of super censor for any web site it hosts, whenever an unhappy target of criticism takes its complaints straight to the data center, no web site operator can be confident about using its hosting services for sites that discuss public issues or public figures in ways that those who can afford to hire lawyers to send threatening letters may not like.

As for the complaints of defamation against Lipstick Alley itself, the site has made it clear to Reed’s lawyers that it is also protected by Section 230 (pdf) and that the site “does not negotiate with bullies”, such as those who send questionable takedown notices to web hosting companies rather than going to the appropriate parties.

Filed Under: cease and desist, defamation, hosting, safe harbors, takedowns, threats
Companies: phoenixnap, serverbeach

Nutella Nastygrams Restaurant Promoting Its Product, Opens The Door For Competitors

from the i-drink-your-milkshake dept

It’s astounding and depressing how often companies seem to abuse trademark law to pretend it’s about complete ownership of a brand, rather than its roots as a consumer protection statute to stop someone from buying a product believing it was made, supported or endorsed by someone else. The latest ridiculous news comes courtesy of the Citizen Media Law Project in Boston, who notes that their local popular-with-the-college-kids “wraps and smoothies” joint, Boloco, has been legal nastygrammed by Nutella. Why? Because of this: their Nutella Milkshake, which they’ve sold for 14 years:

Andrew Sellars from CMLP points out that the legal basis for this is… questionable at best:

Courts have long confronted this unauthorized-but-accurate use of another company’s name. In a 1924 Supreme Court case the court considered a New York company that took a French company’s cosmetic powder, blended it with a binding agent, and sold it as a compact including both the New York company’s and French company’s names on the packaging. The Supreme Court allowed the defendant to do this, provided that the defendant include a prominent disclaimer that the district court in the case initially imposed, informing the public that the two companies are not affiliated. Writing for the majority, Justice Holmes observed:

[W]hat new rights does the trade-mark confer? It does not confer a right to prohibit the use of the word or words. It is not a copyright. . . . A trade-mark only gives the right to prohibit the use of it so far as to protect the owner’s good will against the sale of another’s product as his. . . . When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo.

Many courts have adopted this case’s approach to this question: you can use the trademark so long as you are not misleading the public into there being an affiliation between you and the company, other than your use of the company’s product in your product. For example, a 2004 case from the Southern District of New York allowed a company that makes tuna salad display on the lid of its container – in letters about as large as the company’s own brand name – that the salad was “Made with Bumble Bee Tuna,” over objections from the famous tuna company.

In response, Boloco has decided to cave and is instead looking for alternatives to Nutella for their shake, even to the point of showing some of the other brands they’re considering:

In the end, it’s difficult to see how any of this helps Nutella. They show themselves to be a bully, pissing off fans, and Boloco goes looking for competitors to promote in their place. As Sellars concludes in his article:

…when I was in Boloco today (field research!) I couldn’t help but see the dozens of jars of Nutella in the back, and thinking about the dozen-or-so other locations around Boston with similar stacks of Nutella jars. Those will be replaced by a competitor’s product, in a chain that seems to be growing with each passing month. Not to mention the thousands of Bostonians who have heard about this case and will naturally root for the local guy; you get the feeling that this whole experience is going to leave a bitter taste in [Nutella’s] mouths.

Perhaps, next time, they’ll realize that bullying may be legal, but it’s often not a particularly smart business strategy.

Filed Under: cease and desist, marketing, nutella
Companies: boloco, nutella

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

from the it-can-be-done dept

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.

Filed Under: broken piano for president, cease and desist, friendly, lawyers, patrick wensink, trademark
Companies: jack daniel's

'Kony 2012' Filmmakers Can't Take Parody; Send Cease-And-Desist Claiming Copyright & Trademark Infringement

from the hello-copyfraud dept

It’s really quite amazing how frequently those targeted by parody freak out and reach for intellectual property law in an attempt to silence the speech directed at them. The latest is the group “Invisible Children”, which became quite famous (or infamous) earlier this year for the viral success of the “Kony 2012” video, which sought to build support for arresting Joseph Kony. Apparently a group of NYU grad students created a website called Kickstriker, which is a parody of Kickstarter, but to pretend that it’s a crowdsourcing campaign to hire people to go get Kony.

However, as Wired’s Danger Room blog discovered, Inivisible Children doesn’t like being parodied. So they sent a cease-and-desist arguing that it violated both their copyrights and trademarks.

“It has come to our attention that you are causing public confusion through your use of Invisible Children’s copyrighted and trademarked property on www.kickstriker.com. This impermissible use is a blatant and egregious infringement of Invisible Children’s valuable copyright and trademark rights,” reads a letter Invisible Children sent last week and acquired by Danger Room. “[F]ailure to cease and desist your unlawful use of Invisible Children’s intellectual property will result in legal action.”

Among Invisible Children’s demands: “Confirm in writing that you have permanently deleted all electronic copies of the unauthorized and infringing materials from any computers, servers, or other distribution media”; take down any links to Invisible Children’s material; and declare “in a prominent location” that Kickstriker is “in no way associated with Invisible Children, Inc. or the Kony 2012 campaign.”

Thankfully, the students behind Kickstriker appear to know that these demands are ridiculous and have replied, with an explanation of fair use. You would think, in this day and age, that someone might have explained all that to the Invisible Children folks before they sent the takedown.

Filed Under: cease and desist, kickstriker, kony 2012, parody
Companies: invisible children