My friendâ€”whom I will call Bryan (not his real name)â€”has just wrapped up, with my personal and professional help, some odd dealings with the California Milk Processor Board. Yes, the â€œgot milk?â€ people.
Yes, because Bryan was parodying the â€œgot milkâ€ registered trademark (without â€œpermissionâ€).
Yes, to promote a band.
Yes, that band is Neutral Milk Hotel (which might or might not have been styled by a CIA band-name-generating computer algorithm).
Bryanâ€”aware that heâ€™s one of many dedicated/long-suffering fans of the American indie rock band, which was active from 1989 to 1999â€”thought that there might be likeminded persons willing to shell out a few bucks for a T-shirt reading got neutral milk? (in the â€œgot milk?â€ typeface), despite that the band has been on hiatus for well more than a decade. And Bryan was correct: after having some shirts made (at his own cost), he did sell a few. Bryan also registered the URL â€œgotneutralmilk.com.â€ Somehow, it came to the attention of the Board (the cease and desist letter reads, in pertinent part, â€œIt has come to our attentionâ€) that Bryan had registered â€œgotneutralmilk.comâ€â€”but it did not appear to the Board (or its counsel) that Bryan â€œhas rights or legitimate interestsâ€ in the domain name. The Board, on the other hand, â€œowns the Internet domain name gotmilk.com… [and] has spent a great deal of time, money, and effort to develop the goodwill surrounding the â€˜got milk?â€™ marks, the Internet domain name gotmilk.com, and the corresponding marketing campaign. [The Board] does not allow anyone to use the â€˜got milk?â€™ marks or a confusingly similar mark, or domain name without authorization.â€ So advised counsel for the Board.
The rest of the cease and desist letter covers the expected territory: some argument of similarity of the marks; an explanation of Bryanâ€™s lack of rights or legitimate interest; a statement of his bad faith; a paragraph about trademark infringement; a (polite) threat of filing a Uniform Dispute Resolution Policy claim and/or federal complaint without further notice; and a demand that Bryan stop using the domain name and transfer it to the Board, stop selling any T-shirts or other products that read â€œgot neutral milk?â€, and â€œagree not to register a domain name containing â€˜got milkâ€™ or anything confusingly similar in the future.â€ This was on April 19.
Bryan cried â€œBullying!â€ and consulted another lawyer friend, who recommended telling the Milk Board to stick it where the sun donâ€™t shine. Bryan, being a very nice, very polite, very smart man wrote back to the Boardâ€™s lawyer, to explain why (Bryan believed) that his use of â€œgot neutral milk?â€ in the various ways in which he was using it was not infringement and not actionable. The back and forth between Bryan and the lawyer makes for interesting readingâ€”or, it did for meâ€”but isnâ€™t really the exciting part of this story. The (“)exciting(“) part is the negotiation that took place once Iâ€™d convinced Bryan to stop fighting, in large part because of another development.
In a coincidence that can only be described as astounding, on April 29, news broke that Neutral Milk Hotel is reuniting. The â€œonce-reclusiveâ€ frontman of the group is reportedly getting the whole band back together for their first concerts in fifteen years. And this made a big difference because even before Bryan had undertaken to have T-shirts made, a heretofore unmentioned friend of his had called in a favor owed to her and got Bryan a free half-hour of legal consultation from a heretofore unmentioned third IP lawyer, who told him that he was unlikely to get any pushback from the â€œgot milkâ€ people… but he might hear from the band (or the individuals that had made up the band, which at that point had been on hiatus for fifteen years). And Bryanâ€™s relevant/prescient thought was, â€œWell, I certainly wouldnâ€™t want to do anything that might hurt the band, of course. For instance, by cutting into their merch[andise] sales….â€
Now, by this time, Bryan had done something I would not have advised (and indeed have advised others against strenuously): he asked for money. Nicely, politely… but still. In response to a cease and desist letter that more or less accused him of cybersquatting, Bryan asked for money to turn over the â€œgotneutralmilk.comâ€ domain. Which… might smack of cybersquatting. Which is not what he was doing. But requests for moneyâ€”even just to cover oneâ€™s costs of registering domain names and printing up a few dozen T-shirtsâ€”can rub a Milk Processor Board the wrong way. Incredibly, though, the Board did not immediately file a lawsuit and complain to ICANN. Rather, the Board did the truly unthinkable: The Board made a counteroffer. Of money. Real money. Not a lot of real moneyâ€”actually, a very small amount of it, but real money. (In Bryanâ€™s first settlement offer, he earmarked a significant portion of the money heâ€™d requested for a charitable donation… which sounds nice, but didnâ€™t have the desired effect. The Board doesnâ€™t need to give Bryan money to be passed on to charity, after all.)
Once the Board had offered to pay Bryan anything to settle the matterâ€”rather, that is, than demand that Bryan pay the Boardâ€”I knew Bryan was in very good shape, settlement-wise. So we had this discussion (more or less):
Me: â€œI want you to sleep on this, and in the morning I want you to think of a number that will let you put this behind you, never to let it bother you again. Factor in what youâ€™ve paid out of pocket; factor in what youâ€™d hoped to make in profit selling the T-shirts you had printed, and factor in the Neutral Milk Hotel is getting back together, so you almost certainly will not make up any more T-shirts and will not have any further need for the domain name. And then weâ€™ll try to get you that amount of money.â€
And in the end, after a little more dickering, the Board agreed to pay Bryan a satisfactory amount, in return for his transferring the domain name, sending them the T-shirts he had, and agreeing not to register a domain name with â€œgot milkâ€ in it in the future. For reasons unclear, the lawyer for the Board declined Bryanâ€™s request that the settlement agreement be memorialized in a formal document, mentioning that their email exchanges would suffice. I can only imagine that he charges the Board $500/hour and wants to save it the expense, especially under the circumstances. The Board had asked Bryan to document his expenses, but Bryan responded that he hadnâ€™t saved his receipts. The Board chose to overlook this.
Finally, a very brief note about why Bryan found himself on the wrong end of a cease-and-desist letter: There are a bazillion â€œgot _____?â€ products out there, so either the California Milk Processor Board is lazy about policing its mark (unlikely), or the Board has an unexpansive view of what it owns and can protect (possible)… or something else is afoot. Bryan believes itâ€™s a third thing: His understanding is that the Board actually loves â€œgot _____?â€ uses, as long as the word milk isnâ€™t usedâ€”because they actually increase awareness of the original. It is only because heâ€™d essentially used the original â€œgot milk?â€ with the addition of â€œneutralâ€ that the Board was irked. Bryan might be onto something there, but we might never know.
(Some quick research of the â€œgot milk?â€ campaign on my part taught me a terrific new term: snowclone. A snowclone is a multi-use, customizable, instantly recognizable, time-worn, quoted or misquoted phrase or sentence that can be used in an entirely open array of different variants. â€œGot milk?â€ is a snowclone.)