Jack Daniels, Shell Demonstrate The Better Alternative To Legal Threats

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63 Responses

  1. Owen says:

    What a lovely letter. I feel as though I should misappropriate a little Jack Daniels' intellectual property – I could use a friendly word or two.

  2. Rob says:

    The letter comes off as so eminently courteous and non-reasonable…

    I think you may have made a mistake there…

  3. Chris R. says:

    Yeah, if Jack Daniels sent me that letter I'd happily comply with their terms for the sake of civility.

  4. Jennifer says:

    The letter comes off as so eminently courteous and non-threatening that it makes me want to buy a bottle of Jack, and the author comes off looking somehow less classy in comparison.

    The comments definitely don't help the author's image.

    Nice post, Ken. It brightened my afternoon to see people being polite and smart on the internet for a change. :D

  5. Kelly says:

    It is a nice change to see people acting their ages for once. Now, the bigger question… will Jack Daniels pay me to fix any infringement in … well Jack Daniels? If so, I need to get to the drawing board.

  6. Valerie says:

    I wonder if the larger corporations are smarter about responding to criticism (as opposed to individuals) because they are more aware of branding and how PR works – they have to be since they operate nationally or internationally and need to appeal to a variety of diverse markets. (Also doesn't hurt to have a legal department).

    With more voices in the room, someone is likely to be the voice of reason & because its a corporation, the criticism or satire can be viewed as an attack on a non-human entity – the brand – and thus the individuals working for that brand needn't take it personally.

    I don't mean this as a diss to individuals, nor do large companies always behave smartly (the BP CEO who went to a yacht race in the wake of the oil spill comes to mind), but it does strike me that both of the above examples are very large businesses.

  7. Kreshon says:

    Sheesh, that letter from Jack Daniels feels like it was written by my Grandma asking why I haven't worn the sweater she sent for Christmas not a lawyer protecting a trademark.
    Maybe there is hope for lawyers after all.
    And sorry about the sweater Grandma.

  8. Jack B. says:

    @ Valerie, I would tend to think larger corporations (most of them, at least) pay a little attention to risk/reward factors. Shell's response to The Yes Men probably bought a lot more good PR for a lower price than litigation would have.

    It didn't receive a lot of press in the US, but the McLibel Case probably taught a valuable lesson in the Streisand Effect to a few multinational corporations.

    I know that someone could easily post a thousand counterexamples of corporations that "don't get it" (Monster Cables, Mattel, Disney the film & music industries, etc), but I think there are a few corporations that do.

  9. alexa-blue says:

    The letter from from Jack certainly sounds reasonable. From a legal perspective, is it reasonable? It is still backed with the implicit threat of lawsuit.

    And ignoring the legal aspects of this case in particular, wouldn't a folksy, censorious grandma be worse than a censorious douchenozzle, because rhetorically so much more effective.

  10. TJIC says:

    > fooled the also-difficult-to-fool Cory Doctorow

    Um…what?

    Have you read Bng Bng…at all?

    Cry Dctrw is like Andrew Sullivan except without the calmness and deliberation.

  11. Gal says:

    @alexa-blue: To be fair, the guy is clearly using their brand to promote his work.

  12. Nicholas Weaver says:

    Alexia-Blue: Its more than reasonable. If you don't take efforts to protect your trademark, you can lose it.

  13. Elegy says:

    I love the very clear sense of the iron fist hiding behind the velvet glove in this demand letter. All while being extremely polite. Well done Jack Daniels.

  14. Joe Pullen says:

    Yeah, if Jack Daniels sent me that letter "and a bottle of Jack" I'd happily comply with their terms for the sake of civility.

  15. Xenocles says:

    I wonder what JD thought of Neil Strauss's "The Dirt."

  16. CLH says:

    OT OT
    Via Volokh Conspiracy and Jonathan Turley, there is an interesting first amendment issue not really related to blogging, except that I found them in blogs. Apparently a girl is being threatened with potential contempt of court for publishing the names of people who sexually assaulted her. There was some kind of gag order in place, and the lawyers for the two young men named in the social media are asking that she be held in contempt of court. Courier Journal article here- http://www.courier-journal.com/article/20120720/NEWS01/307200106/Assault-victim-s-tweets-prompt-contempt-case?odyssey=tab%7Ctopnews%7Ctext%7CHome

  17. AlphaCentauri says:

    I hope Shell's disaster response team can respond as quickly and effectively as their PR department. It's not easy to remain sharp and ready to respond to something that isn't ever supposed to happen.

  18. C. S. P. Schofield says:

    Valerie,

    What I see in these two instances is two companies who are (rightly or wrongly) widely despised. They have learned the hard way that they can lose more by heavy-handedness than they can possibly gain.

  19. John Berry says:

    TJIC,

    >Cry Dctrw is like Andrew Sullivan except without the calmness and deliberation.

    I love Cory (and Andrew) but I really love this description.

  20. Chris R. says:

    C. S. P. Schofield, why is Jack Daniels widely despised? I must have missed something.

  21. Orville says:

    I really like the tone in that Jack Daniels letter. It is definitely polite, almost apologetic, yet still manages to convey exactly what their position is.

    The Shell statement was low-key and minimalistic. The quiet voice in a room full of shouting people. Definitely a good approach when facing a group that seems to have energy to spare.

  22. alexa-blue says:

    Gal and Nicholas Weaver: Dammit, I'm a doctor not a lawyer! Anyways, what y'all say may well be true, although I did find this:

    Courts have recognized a number of additional "First Amendment" defenses in particular situations. For example, in Rogers v. Grimaldi, 875 F2d 994 (2d Cir. 1989), the Second Circuit Court of Appeals held that a filmmaker could use Ginger Rogers' trademark (her name) in the title of a film called "Ginger and Fred," even though the film was not primarily about Rogers. The court indicated that trademark law should be applied to artistic works "only where the public interest in avoiding consumer confusion outweighs the public interest in free expression."

  23. Robert White says:

    eh — I just drink the stuff, I don't think about it much.

    If the book is any good, and I were Jack Daniels I'd offer the third option to keep the cover in the second edition with a trademark attribution notice/thanks in an asterisk note or an acknowledgment. You know a "thanks for Jack Daniels and JDXX corp for use of their trademarked labeling style."

    Of course if they think the book is tripe or completely contrary to the JD brand then the might not like that.

    I am pretty sure that (whatever) is a registered trademark of (whomever) goes a long way even if you don't have permission to use.

    IANAL

  24. Gal says:

    I'm not a lawyer either, but it seems to me like a slippery slope issue. Let things like this slide, and suddenly it becomes much harder to protect your brand when a real issue comes up because there's a bunch of other products on the market with similar designs.

  25. M. says:

    Too bad Shell didn't think to hire a proofreader…/unemployed editor

  26. Mark Lyon says:

    I was planning to stop and pick up a bottle of Woodford tonight, but as a direct result of seeing how cool their counsel can be, I'm buying a bottle of Jack instead.

  27. Joe Pullen says:

    Well speaking about threats, the wife got a nice one today from Oncor – the company here in Texas that provide the electricity that everyone else sells.

    Anyway, there is a process going on here in Texas about switching the old analog meters out for the new smart readers. Seems a few folks are against them alleging they provide too much private information to the utility companies, are a health hazard due to EMF radiation, etc. Frankly I haven’t worried too much about the privacy issue since all they can do is tell us how much electricity we’re using – supposedly for certain devices – so now the missus will have even more excuses to beat me up for turning the AC down so low all the time.

    As I had mentioned on a prior thread, we have a locked fenced backyard. 8 foot privacy fence on top of a 3-4 foot retaining wall, etc. Also the electric meter and the FioS Internet stuff is attached to the wall of the garage INSIDE the fenced yard and is further enclosed by an 8 foot board on board unit that is screwed into 2x4s anchored to the house. In other words, there is no freaking way are they replacing the meter unless I’m home to unlock the gate and remove the cover. So, being the good citizens we are, we called Oncor as soon as we received the letter to let them know they needed to give us 3-5 business days advance notice on when they wanted to change out the meter so we could be sure to be home and get them access to the equipment.

    Did that happen? No. Today an Oncor rep pounds on the door after I’m off to work and the wife is getting out of the shower. She finally answers the door to be told that he is there to change out the meter. She tells him they were supposed to call and make an appointment. He then threatened her with cutting off our power at the transformer unless she allowed him access today to change out the meter.

    She called me at work in a panic since she doesn’t know where the equipment is located or how to remove the locking cover.
    So, I interrupt my busy day to head home to take care of this. Keep in mind, there is no Federal mandate to replace the meters. In Oncor’s letter, they site the previously mentioned Texas bill, H.B. 2129. However there is no language stating it is mandatory only that it encourages the deployment of advanced electricity meters. Encourages does NOT mean mandatory. I have sent an email to several executives of Oncor “encouraging” them not to illegally threaten my wife like that ever again or they will find themselves with a “mandatory” court appearance. I will wait to see what their response is to my email.

    Meanwhile, I am well and truly pissed off at Oncor.

  28. Joe Pullen says:

    Should have been "cite" not "site' spell check sucks at catching grammatical errors.

    Neighbor just called and said the Oncor guy went into their gated fenced backyard without prior permission. He's ex Navy and carries a guy. The Oncor guy is lucky he didn't get shot. Geez.

  29. Joe Pullen says:

    Aack – carries a gun not a guy. Although that would be interesting. I can't type properly when I'm pissed. I think I'm going to go have a margarita and knock off early today.

  30. Nicholas Weaver says:

    Mark: Spring the extra bucks for Gentleman Jack, its really worth the premium.

  31. Grifter says:

    @Nicholas Weaver:

    Have you tried the Honey Jack yet? I have tried a little bottle, but am hesitant to go full fifth.

  32. Emptyeye says:

    I like that Jack Daniels letter a lot. As I understand it, IBM are a similar company regarding trademarks–99% of the time (The other 1%, they throw the lawyers at the offender anyway, just to keep people honest), the letters they send out are a more legalesey version of "Hey, you're infringing on our trademark, we know you probably didn't mean it in malice, so we'll give you a small amount of money in return for your doing what it takes to get the hell away from our trademark." This is apparently a change from the 80s when IBM were very suit-happy regarding trademark infringement.

  33. Adam says:

    Normally attorneys don't sign off Firstname Lastname, J.D., but if I were an attorney working for Jack Daniels, I wouldn't be able to resist.

  34. Gavin says:

    Wow, this is great. I think a lot of companies are completely out of touch with the emerging culture. We really hate corporate speak because it feels so impersonal and faked, this felt real and not contrived at all.

    In the spirit of gratitude for both sides. I have purchased the book before it goes out of stock and will retry some jack which I had written off long ago as "icky" to the ol' taste buds.

  35. Charles says:

    Though the Jack Daniels letter was gentlemanly and reasonable, it is only so compared to real assholes. It doesn't make the company's trade dress argument any less ridiculous and overbroad. That letter is a polite way of propagating bad intellectual property law.

  36. Gavin says:

    @Charles,

    How so? Do you think that companies should not be able to protect their brands from other companies coming in an taking them? Jack Daniels doesn't just make whiskey, they also make books and merchandise using this exact font and setup. Why should this author be able to profit or make his book stand out soley off the prestige/artwork of another company?

  37. Luis says:

    @Charles
    dont you think the book covers is based 99.99% on JD´s image? really?

    I can´t, resist, is your last name Carreon?

    heheh sorry

  38. VPJ says:

    Well, according to Yahoo, the Jack Daniels letter has gone viral. In the end, it's probably a very nice PR bump, but still, I wonder how this squares with the Streisand effect.

    In this case it appears to be an all's-well-that-ends-well situation. I just wonder if it had been, like many Streisand-ready situations, something that JD was very unhappy to see; would this have been such a satisfactory result, even given that they appear to have taken Ken's advice in this case. After all, the book almost certainly had orders of magnitude more people learning about its existence than would have otherwise happened. What if it *had* been defamatory (or close to it). Still a satisfactory result?

  39. Gavin says:

    Using the streisand-effect for a positive outcome is the best possible way to use it. This is, as you stated, positive PR for Jack Daniels and provides advertisement and brand recognition that an advertisement compaign can't buy. I wouldn't be too surprised if the whole thing was staged (but I doubt it, as people don't surprise me as being that intelligent and that good at predicting the internet).

    I wonder if this shouldn't be the new norm in such events, to assume the streisand-effect will happen and so to make sure you don't make an ass out of yourself in the process.

  40. Charles says:

    @Gavin and @Luis: Obviously the cover is based on the JD label. That isn't what dilution means. There is no reasonable argument that the cover implies anything on behalf of the company – it neither mentions JD or anything LIKE JD or even alcohol. It doesn't "compete" with JD in any meaningful way.

    Trademark holders are big on expanding what their trademark means because it allows them to control their own images – to remove them from the discussion, whether it is parody or a possibly unflattering acknowledgment of a brand's place in the social conciousness. That's more than trademark law protects.

  41. Charles says:

    My point is this: find me ONE trademark dilution case that allows a brand to enforce their trademark the way JD is claiming to do here. You will not be able to find one. You will, however, find a lot of letters from trademark holder's attorneys claiming that trademark dilution means MUCH more than it actually does in order to cow people into complying with the brand's vision for itself.

  42. Chris R. says:

    Charles, it's actual more legal to use a trademark for parody or discussion/criticism of a brand then it is to use the trademark for other purposes. However a book cover is in my honest opinion advertising. It's what is shown on amazon, the first thing people see when it's on display, and usually what all marketing material revolves around. Using the likeness of someones brand to advertise your own products is exactly what trademark law was made to prevent. This is especially relevant because the book doesn't parody or discuss Jack Daniels. There is literally no reason to use the trademark other than for brand association to increase your own sales.

  43. Charles says:

    But that hardly represents "dilution," Chris. This isn't a question of whether or not the book was trading at some level on nostalgia for the brand; I concede that they were. The question is whether JD has any claim in trademark that they aren't allowed to.

    I ask again: find me ANY actual legal authority for the JD definition of "trademark dilution."

  44. Grifter says:

    @Charles:

    I reread your first post; it seems to me that you may be laboring under a misapprehension of what trademark dilution is. Trademark dilution does not necessarily mean that the item competes with the trademark.

    http://en.wikipedia.org/wiki/Trademark_dilution

    "With famous marks, any use by another person of the mark has the potential for confusion since a famous mark is so well-known among the consuming public that people will assume affiliation with the owner of the mark regardless of the product or service being sold under the infringing use."

    "The strength required for a trademark to deserve dilution protection differs among jurisdictions, though it generally includes the requirement that it must be distinctive, famous, or even unique."

    "Truly famous trademarks are likely to be seen in many different contexts due to branching out or simple sponsorship, to the extent that there may be very few markets, if any, that a consumer would be surprised to see that famous trademark involved in. A prime example may be the past involvement of Coca-Cola in clothing lines."

    The JD logo is clearly "truly famous". As such, consumers may think that this book talks about JD and/or is authorized by JD. A fair use argument could be made (not necessarily won, but made) if this book were about JD, but from what I understand it isn't in any way. The graphic was used as a marketing gimmick. And it worked only because people recognized it as substantially similar to the JD logo.

  45. Charles says:

    I will say it again: find me one case that says that trademark dilution is what JD says it is. What you are citing is the IP bar's fantasy definition of what trademark dilution is, not what the courts have actually held it to be. Look at your own wikipedia link. You will find zero legal support for the argument that you quote, just naked argument.

    The link cites three actual cases: one involving cybersquatting and two where tiny companies that competed in the same market as a famous brand were trying to trade on the names of the famous brand (a lingerie company that called itself "V Secret" and a coffee company that sold a "Charbucks" blend).

  46. Grifter says:

    @Charles:

    Can you show one where it was ruled that it wasn't? A lot of these rulings end up being settled (A book cover picturing Hersheys, but that was actually about Hersheys [and thus more likely to be considered fair use] comes to mind…and was settled)

  47. Grifter says:

    Correction: A lot of these cases, not rulings…whoops, sorry.

  48. Grifter says:

    http://scholar.google.com/scholar_case?case=13691261230662846265&q=Avon+Shoe+Co.,+Inc.+v.+David+Crystal,+Inc&hl=en&as_sdt=2,3&as_vis=1

    That one went poorly for the plaintiff because it was right around when the Act was passed, so some behavior was prior to the act, but also because it was found the defendant had acted in good faith, and that here was little likelihood of confusion.

    In this JD case, the defendant can't argue they "didn't know" about the trademark in question, since they obviously used it for that reason, and confusion is likely in the sense that people would assume it has something to do with JD…but according to other posters it does not. Therefore, I would see it as clearly diluting.

    Fair use could be a defense, but where's the fair use here if this is not talking about anything related to JD or even whiskey?

    Since I'm not a lawyer, maybe one of the lawyers could weigh in here, since Charles seems to take a narrow view of trademark protection?

  49. Charles says:

    @Grifter: All of the cases settle because they are all too expensive for the little guy to litigate and there is always a risk that a judge will agree with the very broad reading of the law for the first time.

    The example that you cite is (a) an shoe company suing an apparel company for an injunction; (b) it was the small company trying to enforce a not-very-well-known mark against a larger company who (unintentionally) used the small company's trademark to much greater success and (c) the court said that the trademark holding shoe company COULDN'T GET AN INJUNCTION against the apparel company. And that was even after finding that there WAS a likelihood of confusion!

    In other words, the trademark holder COULDN'T enforce the trademark as they wanted to and that was in a case with litigants selling things in much more closely related category than whiskey and novels.

  50. Grifter says:

    @Charles:

    1. You may be right and that's why it's usually settled. You may be wrong, and they settle because they realize they won't win. A solid court case example would help both of us understand.

    2. As regards to the case: Those are things I addressed. Read the court's reasoning for why the injunction was denied, I listed the reasons, neither of which apply here.

  51. Charles says:

    You are being ridiculous with respect to (1). It flies in the face of how the world works when someone rich threatens to sue someone… not. The cases that don't settle literally do not get brought because no trademark holder actually wants to test this farkakt theory. You know who else cited no law for the proposition that the book might be a dilution of the mark? Jack Daniel's' gentlemanly lawyer.

    With respect to (2), you are grasping at straws. It was an inapt case that didn't get you closer to proving that this is a legitimate dilution argument and even shows how even likelihood of confusion isn't enough to enforce a trademark.

  52. Charles says:

    You are simply wrong that the court said that there was little likelihood of confusion; the court said exactly the opposite and STILL didn't grant the injunction.

  53. Charles says:

    For a final comment, this overbroad claim of trademark dilution comes from the same IP fantasyland that leads lawyers to claim that their cease and desist letters are "copyrighted" and that the recipients "may not republish them without permission."

  54. Grifter says:

    @Charles:

    You are right re: the confusion claim. Mea culpa.

    But you have still not established you are correct in your claim that this is invalid. You keep asking others to defend their views, but have given on legal underpinning to your own, instead saying "Nobody defends the claim because of money!" While you may be right, and I haven't said you aren't, you need to back yourself up with more than that, which you have yet to do.

    By the legal position that seems to be your logic, I could write a book about how to sell heroin in South America, and color it red with a white swoosh white and make the title "Cohca-Cola!"? If that is not your position, can you please differentiate it?

  55. Chris R. says:

    Charles, I agree that trademark law isn't created to stop people from using freedom of expression. However I believe that a book cover by modern sense is advertising more than anything else. When the book in question doesn't discuss, parody or criticize the brand it is then just using the brand for association. Had the book been about Jack Daniels I would agree with your point that they had no right to ask for a change. However as it stands the book used a completely unoriginal cover that was meant to draw attention based on brand recognition.

  56. Charles says:

    Chris: Nice opinion. No courts have agreed with you as far as I am aware. Parody is not the only rationale for fair use and commercial use is not per se excluded.

    Grifter: You are asking me to prove to you that ghosts don't exist because a lawyer who is professionally interested in the existence of ghosts says that they do and you are choosing to accept the argument of a very polite ghost-promoting bully. I will pass on this opportunity and merely repeat that the argument that the Jack Daniel's attorney is making is one that has no basis in precedent.

  57. Charles says:

    If you want a quick analysis of the Trademark Dilution statute, read this and tell me if you still think that a book cover that incorporates a parody of a Jack Daniels label constitutes trademark dilution under the statute. I don't mean "see if you can play amateur lawyer and construct an argument"; I mean actually think through the use at issue and whether this is what the statute was intended to combat.

  58. Robert White says:

    "We think this dilutes our trademark, would you please stop, can we pay you for the inconvenience?"

    You can -ask- anybody to do -anything- (legal) based on -any- legal theory or whim.

    It didn't hurt JD to ask no matter what the law might say.

    They may just think the book sucks donkey balls and they wish it to be further from their property line.

  59. Charles says:

    Robert: when the letter comes from a law firm, there is an implicit threat behind it when they explain that they are legally obligated to send it to protect their rights, but I'll grant that this is more courteous than most lawyers tend to be.

  60. andrea says:

    For those who don't think JD has a leg to stand on, this image was created by one of the commenters on the authors blog: http://i.imgur.com/bgMHr.png

    I will fully admit to not knowing a lot of the ins and outs of the copyright and trademark laws, but I can say that as an artist, if I were responsible for the JD label, I would see the homage-y intents of the Lynard Skynard Albulm, and while it is close, I wouldn't pursue anything or follow up on it. The book cover, however, can be dropped directly on the JD label in photoshop and a significant number of design elements will match up perfectly. That does seem like a heck of an issue, and is something I'd try to follow up on.

  61. Grifter says:

    @Charles:

    To be clear on the discussion so far:

    I have said that it seems to apply, since the work was in no way related to discussing JD or to whisky, and is changed only in the most slight of ways from the original. You have said the direct theft of a trademark is totally ok, and that I should "prove you wrong".

    I pointed out most of these cases settle, so it is hard to find an appropriate court case that actually went to trial, and that might speak to what the defendants thought regarding the merits. You said that's just because the other side was rich.

    I pointed you to another court case prior to federal dilution protection, that would have won but that lost on other grounds besides the debate here. You said that's not good enough despite what it says in the brief when it addresses the concept of the claim.

    I asked if you had any court cases that establish your position, and you equated it to proving a negative. Then you gave me a PDF that includes phrases like:

    "virtually any reference to a trademark influences the consumer’s mental association regarding the brand, in ways that one could characterize as tarnishing” or “diluting” the trademark holder’s carefully crafted commercial identity."

    and

    "The Federal Trademark Dilution Act of 1995 (FTDA), Congress’s first foray into dilution law, applied only to the “commercial use in commerce of a mark or trade name . . . [that] causes dilution of the distinctive quality of the mark.”

    And, of course, this:
    "The legislative history made clear that Congress intended ‘commercial use’ to cover only those uses that would constitute “commercial speech,” as that term is understood in First Amendment jurisprudence. Commercial speech is speech that “does ‘no more than propose a commercial transaction,’” which, in the trademark context, means a use that has no expressive function except as a brand."

    Which would pretty expressly include….book covers.

    If Pepsi "parodies" the Coke trademark by making a can identical to Coke, except that it says "Pepsi-Cola", that is trademark infringement. If a book cover completely cribs a brand, that is trademark dilution. It seems pretty clear from the analysis you gave me.

    And it's also worth remembering that trademark law is such that it must be protected or it is lost, as I understand it, therefore firms will always err on the side of protection.

    This article

    gives some examples of various cases that went various ways based on various definitions. In some cases, whole books were "commercial speech". But the courts have also ruled otherwise. And, again, when in doubt about trademark, step in or you run the risk of losing it.

  62. PK says:

    Question… was Ginger Rogers name actually a trademark?

  1. July 23, 2012

    […] to be gentlemanly in a cease-and-desist. [Mashable, Popehat] […]