December 11, 2017
Practice Tip: With cease and desist letters, one size does not fit all.
Intellectual property (IP) rights holders risk loss of their exclusive rights if they fail to enforce them vigorously. The cease and desist letter (C&D) is generally the first step in the process. I pride myself on successfully drafting persuasive and compelling cease and desist letters that set an appropriate tone for the circumstances and get positive results for trademark, patent and copyright holders facing unauthorized use. Several recent C&Ds from large brands demonstrate that when it comes to such demands, one size does not fit all.
Last week, Bud Light became the latest large brand to eschew the traditional cease and desist format in favor of a humorous, social media and marketing friendly approach. Bud Light dispatched a costumed medieval town crier, complete with parchment scroll, to deliver an olde-English-themed letter asking Minneapolis-based Modist Brewing Company to limit the sale of its “Dilly Dilly” Mosaic Double IPA, which allegedly tread upon Bud Light’s “Dilly Dilly” “motto.” A video capturing the event can be seen on Modist’s Facebook page.
Bud Light’s C&D set a light tone by congratulating Modist on its launch and expressing “flattery” at the imitation, but then asserted its rights and demanded that Modist limit “Dilly Dilly” to a single run: “Congratulations on the launch of your new brew, ‘Dilly Dilly’ Mosaic Double IPA. Let it be known that we believe that any beer that is shared between friends is a fine beer indeed, and we are truly flattered by your loyal tribute. However, ‘Dilly Dilly’ is the motto of our realm, so we humbly ask that you keep this to a limited edition, one-time only run.”
The makers of Jack Daniel’s are credited with pioneering this approach with a 2012 letter that was well received across social media and followed a similar pattern:
“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 on a regular basis. What may not be so apparent, however, is that 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 strategy has been used to great social media acclaim by other brands, including TGI Fridays and Netflix, who sent a “Stranger Things” themed C&D to the owners of a pop-up bar based on the popular television franchise. After insisting that the pop-up not extend beyond its 6-week run, Netflix wrote: “We love our fans more than anything, but you should know that the demogorgon[, a monster from the show,] is not always as forgiving. So please don’t make us call your mom.”
The approach of these brands is not for all (or probably most) situations. Some cases, such as intentional counterfeiting, demand the sternest response. The lesson is, however, that a single C&D template is not suitable for all situations. A mark/IP holder, aided by the judgment of experienced counsel, should thoughtfully consider that nature of the infringement and what approach is most appropriate and likely to achieve the desired objective.
This article is intended only as a general discussion of these issues. It is not considered to be legal advice or relied upon. If you need to send or respond to a cease and desist letter, Larry Brocchini would be pleased to consider providing additional details or advice about specific situations.