The delicate art of the cease and desist letter

Earlier this year, Jack
Daniel’s Properties, Inc issued a cease and desist letter to author Patrick
Wensink regarding the cover design of his recent novel, Broken Piano For
, which closely resembled the Jack Daniel’s whiskey label. 

The letter, seen as
being unusual for its extreme politeness, was dubbed “the world’s nicest
cease and desist letter” and brought significant positive publicity for
Jack Daniel’s.

This excerpt sums
up the approach taken in the letter: “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… if we allow uses like this one, 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.”

The letter went on to
request that the cover of the book be changed in any subsequent reprints and
offered to contribute towards the costs of changing the cover sooner, should
the author be willing to do so.

The letter has gone
viral and been universally commended. It is a great reminder that the tone and
approach of any communication should be carefully considered, and that
templates are never appropriate for something like a cease and desist letter.

David Gooder,
Jack Daniel’s chief trademark Counsel was quoted as saying: “The voice of
any given brand should be its voice regardless of whether it is an advertising
campaign on Facebook or a protest letter written to stop something that is
harmful to the brand.”

Often a trademark
owner may have very good, but not obvious, reasons for asking someone to stop
what they are doing. It may not be clear to the infringer that they are doing
any harm to the brand concerned. In that case, sometimes there is some
explaining to do before making demands that may otherwise seem unreasonable.

The positive publicity
surrounding the Jack Daniel’s letter is in stark contrast to that often seen when
a cease and desist letter goes viral. 

For example, in 2010 the National
Pork Board, a United States trade association representing the interests of
pork producers, reportedly sent a 12 page cease and desist letter to owners of
the website thinkgeek.com alleging infringement of their trademark ‘The other white meat’. Think Geek had run an April fools spoof advertisement for Unicorn
, referring to it as “the new white meat” [ed: unicorn lovers can get a taste, metaphorically, here]

Earlier this year the
University of Pennsylvania Law School promoted a symposium on intellectual
property issues in fashion with a poster parodying trademarks owned by Louis
Vuitton Malletier. The university received a sternly worded letter from Louis
stating “This egregious action is … a serious willful
infringement and knowingly dilutes the LV trad marks … I would have thought
the Penn Intellectual Property Group, and its faculty advisors, would
understand the basics of intellectual property law and know better than to
infringe and dilute the famous trademarks of fashion brands”.

In the cases above the
National Pork Board and Louis Vuitton garnered negative publicity, being
portrayed as heavy handed “IP bullies”. Given that neither case
concerned a competitor, both were one-off uses of the trademark concerned, and
neither appeared to be making any revenue from the use, one can see why these
examples got the public response that they did. An approach along the lines of
that taken by Jack Daniel’s may have been more appropriate under the

This is not to say that
all strongly worded cease and desist letters are unjustified or inappropriate. Cases
that concern an unknowing, or naive, infringer appear to be good candidates for
a softer approach. However, in situations where the infringer is malicious, or
a direct competitor who is pushing boundaries, it may be necessary to be more
blunt. Being inappropriately ‘soft’ with the tone of a letter to a large
business infringing your rights might be taken as an indication that you are
not serious about defending your rights. That would not be the right impression
to give.

As with most things,
there is an artful balance to be had depending on all of the facts—who is
infringing, what they have done, who the client is, the harm they are
suffering, the clarity and nature of the legal issues, and the outcome you are
trying to achieve—but what is clear is that one size does not fit all.

Media coverage has
recently been given to Olympic swimmer Ryan Lochte’s efforts to register his
catchphrase JEAH as a trademark in the United States. However, Los Angeles
based gangster rapper MC Eiht is claiming the phrase as his own, reportedly
saying of Lochte, “why try and trademark something his ass didn’t even
create?” MC Eiht reportedly plans to issue a cease and desist letter to Lochte.
Given his aggressive reputation, it would be interesting to see what approach
he takes to the wording. 

  • Damian Broadley is a partner and Jude Antony is a solicitor at AJ Park. 

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