By Jack Ellis
July 24 2012
A cease-and-desist letter from the trademark team at Jack Daniel’s has caused quite a stir after it was publicised online yesterday. But for once it was not another frenzy over so-called ‘trademark bullying’ that attracted the attention of media outlets. Instead, the Tennessee whiskey brand’s amicable approach to enforcement has drawn plaudits from online commentators.
The letter, penned by Jack Daniel’s senior trademark attorney Christy Susman, was sent to author Patrick Wensink, claiming that the cover artwork of his novel Broken Piano for President “bears a design that closely mimics the style and distinctive elements of the JACK DANIEL’s trademarks”. Wensink and his publishers eventually decided to post the correspondence online, commenting that it “is, perhaps, the most polite cease-and-desist letter ever written.” Susman also stated that the whiskey producer did not expect the author to remove his book from sale immediately; rather, they would be satisfied if changes to the cover would be made by the next edition, after the current print run sells out. What’s more is that Jack Daniel’s offered to pay some of the costs of the redesign if Wensink did choose to pull the existing copies straight away.
Online news sources picked up on the story and have generally reacted to it with positivity; as noted by Mashable in its report on this story, this contrasts with the often negative way in which the media covers trademark enforcement. “It has been quite interesting to see the level and content of the discussion on this topic,” says David Gooder, managing director and chief trademark counsel at Jack Daniel’s Properties Inc. “In many ways, it is quite flattering but not something us trademark lawyers are always used to seeing.”
Aggressive enforcement strategies can often attract negative press and have a detrimental effect on reputation, sometimes resulting in more harm than good for trademark owners. Although Jack Daniel’s has Wensink to thank for the cease-and-desist letter going viral, Gooder points out that it is crucial that a brand’s communications with its specific audience – as well as with the wider public – should be measured and consistent: “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,” he says. “We may be a bit old-school about this, but we hold the view that you shouldn't put something in writing you don't want on the front page of the newspaper. In today's world, the newspaper has become the internet – but the philosophy remains the same.”
However, it is clear that a non-belligerent course of action is not always going to be suitable. Gooder confirms that the whiskey distiller experiences a high number of cases of potential infringement each year, and that each situation is considered on its own merits. “There is no ‘one size fits all’ solution,” he says. “We assess every possible infringement with an eye towards a number of factors, including the conduct of the infringer, evidence of likely confusion, the type of product involved and consumer health and safety aspects.”
Gooder explains that wilfulness on the part of the infringer is a key consideration when assessing how enforcement should proceed and what position to take. “This is especially true in connection with non-commercial forms of speech which, in the United States and many other countries, enjoy a high level of protection under the law,” he says. Furthermore, the popularity of the Jack Daniel’s brand gives rise to imitations which could unintentionally infringe on the company’s trademarks. “Fans might think that that they are doing something positive for Jack Daniel’s when in fact the effect is the opposite,” Gooder continues. It may be counterproductive and even destructive to the brand to attempt resolve such situations aggressively.
While the primary concern for counsel is to enforce their company’s trademark rights and police for any infringement or misuse, a heavy-handed approach can backfire. Gooder suggests that trademark departments should maintain a healthy level of objectivity when assessing an infringement scenario. “This is especially important when the brand is one that is so passionately a part of people’s lives on both sides of the dispute,” he says. “It may take more time to look at each situation on a case-by-case basis, but using a sharp-edged cookie-cutter approach can create a higher risk of harm to the brand when what you’re really trying to do is protect it.” Jack Daniel’s is achieving just that with its decision to seek an amicable resolution in this matter – and in addition it has picked up the invaluable bonus of good publicity.
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