Cease and desist: Tough but fair
You don’t have to be a bomb-thrower like me to have strong opinions about muscle-bound cease and desist letters. Duets Blogger Steve Baird, no defense-side snowflake, has agreed with me in the past on this topic. He has a new post that includes some great advice for would-be trademark enforcers, whom he advises to put down the club:
As reported by Munchies, MusicFeeds, and Timothy Geigner of Techdirt, the Ruby Tuesday restaurant chain is threatening trademark litigation against an Australian band, Ruby Tuesdays.
In a twist of double irony, Techdirt hangs the pejorative “trademark bully” name on Ruby Tuesday, for copying the Rolling Stones’ song title and then bullying an Australian band from using it too.
While the reported facts are incomplete and insufficient for judging the merits, one of the lines from the restaurant chain’s demand letter caught my eye, as it appears to impute bad faith:
“[T]he knowing adoption of a mark intending to play off a well-established mark is among the most egregious of trademark violations, warranting courts to apply the harshest of consequences.”
If you’re humming to the lyrics “yesterday don’t matter if it’s gone,” please still consider reviewing an early blog post gem about imputing bad faith, When Intent Matters in Trademark Matters:
One of the unfortunate aspects of trademark practice is the permission that exists in the law to challenge the motives and intentions of people.
[T]his permission is frequently abused . . . when the strength of a case doesn’t seem like enough without injecting an unhealthy dose of emotion into the matter.
Even the pejorative “trademark bully” label . . . garners public sympathy while imputing evil intentions to the trademark owner aiming to enforce its rights.
Less emotion and more objective facts should drive decisions on the question of likely confusion. If a case screams bad faith based on the objective facts, fine, make the case, but recognize this is likely a rare case.
Great point. Frankly, histrionics in a cease and desist letter — or the response to one — tip off a lack of genuine experience and surfeit of confidence. The quality of mercy is not strained! And if you’re not in a position to dispense mercy, then, well, maybe you definitely should lower your voice fast.
unfrozen caveman lawyer from de hump on Vimeo.
We don’t have be Neanderthals to get the job done. Posturing and fuming may impress a rough-hewn client with what looks like an unstoppable display of testosterone, but we owe it to ourselves and our clients to listen to our kindler, gentler, smarter-lawyering side.
In fact, those whom we so love must understand that by keeping the finger-pointing and table-pounding out of it, at least at the outset, we make it easier for the other side to back down. Who really wants trouble?
“In other words,” as Steve says, “initial demand letters shouldn’t attack motives, but instead objective, unlawful actions.”
And of course those letters should be on real bond stationery and signed with a fountain pen. Steve didn’t write that, but I know he agrees. Evolution has its limits.