got what, now?
My friend—whom I will call Bryan (not his real name)—has just wrapped up, with my personal and professional help, some odd dealings with the California Milk Processor Board. Yes, the “got milk?” people.
Yes, because Bryan was parodying the “got milk” registered trademark (without “permission”).
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).
Bryan—aware that he’s one of many dedicated/long-suffering fans of the American indie rock band, which was active from 1989 to 1999—thought that there might be likeminded persons willing to shell out a few bucks for a T-shirt reading got neutral milk? (in the “got milk?” 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 “gotneutralmilk.com.” Somehow, it came to the attention of the Board (the cease and desist letter reads, in pertinent part, “It has come to our attention”) that Bryan had registered “gotneutralmilk.com”—but it did not appear to the Board (or its counsel) that Bryan “has rights or legitimate interests” in the domain name. The Board, on the other hand, “owns the Internet domain name gotmilk.com… [and] has spent a great deal of time, money, and effort to develop the goodwill surrounding the ‘got milk?’ marks, the Internet domain name gotmilk.com, and the corresponding marketing campaign. [The Board] does not allow anyone to use the ‘got milk?’ marks or a confusingly similar mark, or domain name without authorization.” 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 Bryan’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 “got neutral milk?”, and “agree not to register a domain name containing ‘got milk’ or anything confusingly similar in the future.” This was on April 19.
Bryan cried “Bullying!” and consulted another lawyer friend, who recommended telling the Milk Board to stick it where the sun don’t shine. Bryan, being a very nice, very polite, very smart man wrote back to the Board’s lawyer, to explain why (Bryan believed) that his use of “got neutral milk?” 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 reading—or, it did for me—but isn’t really the exciting part of this story. The (“)exciting(“) part is the negotiation that took place once I’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 “once-reclusive” 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 “got milk” 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 Bryan’s relevant/prescient thought was, “Well, I certainly wouldn’t want to do anything that might hurt the band, of course. For instance, by cutting into their merch[andise] sales….”
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 “gotneutralmilk.com” domain. Which… might smack of cybersquatting. Which is not what he was doing. But requests for money—even just to cover one’s costs of registering domain names and printing up a few dozen T-shirts—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 money—actually, a very small amount of it, but real money. (In Bryan’s first settlement offer, he earmarked a significant portion of the money he’d requested for a charitable donation… which sounds nice, but didn’t have the desired effect. The Board doesn’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 matter—rather, that is, than demand that Bryan pay the Board—I knew Bryan was in very good shape, settlement-wise. So we had this discussion (more or less):
Me: “I 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 you’ve paid out of pocket; factor in what you’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 we’ll try to get you that amount of money.”
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 “got milk” in it in the future. For reasons unclear, the lawyer for the Board declined Bryan’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 hadn’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 “got _____?” 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 it’s a third thing: His understanding is that the Board actually loves “got _____?” uses, as long as the word milk isn’t used—because they actually increase awareness of the original. It is only because he’d essentially used the original “got milk?” with the addition of “neutral” that the Board was irked. Bryan might be onto something there, but we might never know.
(Some quick research of the “got milk?” 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. “Got milk?” is a snowclone.)