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Jack Daniels Shows How To Write a Cease and Desist Letter

Posted by samzenpus on from the more-complies-with-honey dept.

NormalVisual writes "When the Jack Daniels distillery recently became aware of a book whose cover they felt substantially infringed their trademark, they didn't go into instant 'Terminator mode' — instead, they wrote a very thoughtful, civil letter to the infringing party, and even offered to help defray the costs of coming into compliance. I believe plenty of other companies (and many in the tech world) could use this as an example of how *not* to alienate people and come off looking like a bunch of greedy jerks."

50 of 402 comments (clear)

  1. Classy by rwise2112 · · Score: 5, Insightful

    That's classy.
    Why can't more companies act this way towards one another?

    --

    "For every expert, there is an equal and opposite expert"
    1. Re:Classy by SJHillman · · Score: 5, Funny

      I would like to propose new legislation in which every time you file a lawsuit for patent, copyright or trademark infringement, you must send a bottle of a nice bourbon to the defendant.

    2. Re:Classy by betterunixthanunix · · Score: 4, Insightful

      That's classy.
      Why can't more companies act this way towards one another?

      It's not profitable (or at least it is not immediately obvious why doing so would be profitable).

      --
      Palm trees and 8
    3. Re:Classy by camperdave · · Score: 5, Insightful

      That's classy. Why can't more companies act this way towards one another?

      It's not profitable (or at least it is not immediately obvious why doing so would be profitable).

      Not profitable? Do you know how many "That's so classy I'm going to buy a bottle just to support them" messages I've read on various blogs? It's not just a cease and desist letter; it is an advertising coup.

      --
      When our name is on the back of your car, we're behind you all the way!
    4. Re:Classy by realityimpaired · · Score: 4, Insightful

      It's not profitable (or at least it is not immediately obvious why doing so would be profitable).

      Well... not sure how they're advertising their product in the states, but here in Canada their current ad campaign is all about their history, and trying to set themselves up as a friend of the family. The publicity that a "fuck off and die" C&D letter could create has the potential destroy that ad campaign.

      The good will and good publicity that this letter has created, on the other hand, almost certainly helps the image they're trying to foster for their product.

    5. Re:Classy by localman57 · · Score: 5, Insightful

      That's classy. Why can't more companies act this way towards one another?

      It may well be the entire industry that acts that way. A couple of years ago I was at a tasting event with the either Grandson or Great Grandson of Jim Beam, and he was the same way. He had great things to say about all of his Kentucky competitors' products. I think their view of things is to promote Kentucky Burbon, not just their own label. A rising tide lifts all ships kind of thing.

    6. Re:Classy by SirGarlon · · Score: 4, Informative

      Unfortunately, no. Failure to enforce a trademark does weaken it. I am not a lawyer but here's a Web page by someone who is: http://www.ggmark.com/protect.html#Maintenance

      It's not that consumers are apt to confuse the book with the whiskey. It's that Jack Daniel's failure to respond would be taken as evidence by a future trademark court that they don't care who uses their logo or for what purpose.

      --
      [Sir Garlon] is the marvellest knight that is now living, for he destroyeth many good knights, for he goeth invisible.
    7. Re:Classy by SJHillman · · Score: 4, Informative

      It could be mistaken as being an official JD product. I assume JD sells merchandise (including books of some sort) in addition to the drinks themselves.

    8. Re:Classy by jedidiah · · Score: 4, Informative

      They simply can't do this. This is the one area of intellectual property where they simply cannot mind their own business. This is mentioned in the letter and is done so in a very civil matter.

      They can't just "ignore this and hope it will go away".

      --
      A Pirate and a Puritan look the same on a balance sheet.
    9. Re:Classy by bondsbw · · Score: 4, Interesting

      There is indeed a chance that the book could be confused with having been produced by Jack Daniels, and that the content reflects the views of the company.

      --
      All my liberal friends think I'm a conservative, all my conservative friends think I'm a liberal.
    10. Re:Classy by Anonymous Coward · · Score: 5, Funny

      Not to be an ass sir, but I've notice you've advocated sending a bottle of nice bourbon along with a lawsuit. I agree with the sentiment, but most note a concern on execution.

      Pedantry IMO is a worse sin than you have committed. However, I must point out that although a fine product Jack Daniels is Tennessee Whiskey and not to be confused with Bourbon that elixir of the gods distilled in Kentucky.

           

    11. Re:Classy by mooingyak · · Score: 4, Informative

      Jack Daniels produces other items as well, such as t-shirts with their logo on them. The book could easily be mistaken as a product of the company.

      --
      William of Ockham had no beard. The most likely explanation is that it was chewed off by squirrels every morning.
    12. Re:Classy by betterunixthanunix · · Score: 4, Interesting

      Yes, but the question was why other companies are not like this, and the answer is that for most companies, it is not clear that doing this would be competitive or profitable. Jack Daniels has been working very hard to make themselves seem classy, because they want to compete with high end bourbon and scotch brands (I don't think they have a chance if they continue to make whiskey their traditional way). Most companies are not marketing themselves as "classy," because it would not be profitable for them to do so in the first place -- who wants a "classy lawnmower" or a "classy backhoe?"

      --
      Palm trees and 8
    13. Re:Classy by TheCarp · · Score: 4, Insightful

      I was just thinking same thing from the opposite direction.

      Most C&D letters are written by the lawyers. What incentive does a lawyer have to be non-combatitive?

      If he is combatative it makes him look good to the people he is representing, and doesn't risk having them question whether he is really doing his job. If he is non-combatative, like this, then that doesn't make more work for him either.

      If it leads to a huge battle, the company isn't going to blame the lawyer for being to combative, since he is just fighting for them. If it looks soft or like it isn't going to be effective, they are going to blame him.

      Its true, that on a deeper analsys this is probably the better way to go... that doesn't mean that every cog in the wheel making decisions is making that deeper analsys. When the legal department gets notice of infingement, they have one hammer, and you know what that tends to make all problems look like.

      --
      "I opened my eyes, and everything went dark again"
    14. Re:Classy by Volante3192 · · Score: 5, Informative

      http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=85129461
      Looks to me like it's a valid trademark.

      Maybe you're confused as to what a trademark is?

    15. Re:Classy by Sentrion · · Score: 5, Insightful

      1. Companies don't just have the option of defending their trademarks, they have the DUTY to defend their trademarks or lose the right to those trademarks. Of course nobody is going to presume that a book is a bottle of Jack Daniels, but the design of the cover is clearly recognizable as the Jack Daniels design, even referencing "40% ALC. BY VOL." Having your trademark used by other people and companies could set a track record of not defending your trademark, which would mean that more people could use your trademark and with so many examples of others being allowed to do it you might not be able to stop anybody from using in the future. So if someone used the trademark and wrote a book that advocated giving alcohol to children it could become a real liability for Jack Daniels, both in the court of law and the court of public opinion, which could really affect a companies ability to sell and market their product.

      2. Jack Daniels also does license their trademarks to other companies, such a Friday's restaurants that serve the Jack Daniel's grilled meals, and there are also cookbooks that have agreements with Jack Daniels to use the trademark. So sub-licensing their own trademark is a profitable side business, and a business that is hard to continue when anybody can just use their trademark for free without paying for it.

      If you don't like trademark law then do something to change it, but don't disparage Jack Daniels for playing by the rules and conducting themselves in a manner that goes above and beyond what the law requires and above what is commonly accepted practice.

    16. Re:Classy by RaceProUK · · Score: 4, Insightful

      Apart from guarding against potential misuse of their trademark design, that is.

      The book may not technically be infringing, but it's close enough that JD had to do something. At least they had the decency to say 'We like what you did, but unfortunately we have to request you change it. We'll even help with the cost.', instead of the more usual 'Remove it last year of we'll sue for a kajillion dollars every second you don't comply!!!!1'.

      --
      No colour or religion ever stopped the bullet from a gun
    17. Re:Classy by rezalas · · Score: 4, Insightful

      Microsoft provides free updates to their OS even if you're using a copy they know is pirated. I'd say that has a bit of good will to it, especially since most people just get a "you may be a victim of piracy" warning and a black desktop background. When it comes to being polite to people who pirate or infringe on your work, MS isn't exactly slashing throats.

    18. Re:Classy by RaceProUK · · Score: 4, Funny

      That's probably because he's a member of the sub-species 'Homo sapiens pleasentus', rather than the parasitic 'Homo sapiens legalitus' aka lawyer.

      --
      No colour or religion ever stopped the bullet from a gun
    19. Re:Classy by scandalon · · Score: 5, Insightful

      I don't want a "classy lawnmower" or a "classy backhoe", but I'd buy one from a company who demonstrated classy behavior over a competitor who did not.

      --
      "Pain is scary."
    20. Re:Classy by somarilnos · · Score: 5, Informative

      The fact that they're asking isn't wrong - the fact that they're asking is forced. If you own a trademark, and you don't defend it when it's infringed upon, you run the risk of losing that trademark. That means that if they let this go without so much as a letter, then John Danielson's Alabama Whiskey can use an identical looking bottle (except for the name) and put it on store shelves, and Jack Daniels would be unable to legally stop them. That's why they're doing this - the fact that they approached it without threatening, with offers to help, and the like, is very courteous, and really unheard of in today's society. Kudos here to Jack Daniels.

    21. Re:Classy by Neil_Brown · · Score: 4, Insightful

      What incentive does a lawyer have to be non-combatitive?

      Preserving the company's brand, and likely closing down the issue quickly and efficiently, potentially even winning an advocate of the brand in the process?

      If it leads to a huge battle, the company isn't going to blame the lawyer for being to combative, since he is just fighting for them.

      If you've got a lawyer who can only litigate, I'd have thought you have a liability on your hands — far better someone who can assess the commercial implications along with the law, and come up with a sensible plan. If you want to reach a conclusion quickly and easily, litigation is perhaps the worst, and most expensive, way to go.

    22. Re:Classy by gman003 · · Score: 5, Insightful

      I see you've been reading too many /. comments, and now assume any enforcement of IP laws is an evil only slightly less than the Holocaust.

      "Intellectual property" laws (patent, copyright, and trademark) exist for a reason. The fact that they are heavily abused does not mean that every enforcement of them is invalid. There are millions of valid uses.

      In this case, it seems to be one of the increasingly-rare cases of the law being used properly. The book rather clearly copies the trademarked style of JD. It does not have any obvious fair use exemption - it's not being used to reference JD itself (nominative fair use), it's not a parody. It is someone using another's branding apparently either out of laziness, or deliberate deception (most likely the former, but I can't rule out the latter).

      It's not censorship. They aren't trying to get the book withdrawn, or removed (which they definitely would, if they were trying to censor the book). The cover has nothing worth censoring - it's just the title and other basic metadata. The only "artistic expression" they're trying to control is their own - the art of their trademark.

    23. Re:Classy by redneckmother · · Score: 5, Funny

      Jim Beam is actually really shitty bourbon and a bad drink all-around.

      Why do 9 out of 10 Southern Baptist preachers drink Jim Beam?

      Because the square bottle won't roll out from under the seat.

    24. Re:Classy by rezalas · · Score: 5, Insightful

      So you had multiple copies flagged as unlicensed or as invalidly licensed, and they gave multiple warnings that the issue existed so you could fix the problem but your employees failed to notify you, and somehow that is MS being a dick? After that they help you fix the problem by giving you new CD keys and appologizing to you, and they still aren't nice to pirates? That makes no sense at all. Also, considering you started by saying it was half a dozen machines and followed it up by saying "most of our computers" I'll bet you're a small business which means they didn't exactly apologize because they had to, they did it because it was the right thing to do.

      It seems to me that they were pretty damn fair the whole time.

    25. Re:Classy by operagost · · Score: 5, Insightful

      Many companies, including Jack Daniels, produce products other than their flagship product. For example, JD sells promotional items like T shirts and barbecue sauce. By your standard, other companies could sell these items as well because they're not whiskey. The confusion lies in the identity of the manufacturer, not the product itself. Imagine if a different company had decided to sell "Jack Daniels Barbecue Sauce" and accidentally poisoned a bunch of people. Now you see why a trademark is a historically valuable thing to protect. It has a purpose.

      --

      Gamingmuseum.com: Give your 3D accelerator a rest.
    26. Re:Classy by CohibaVancouver · · Score: 4, Funny

      I don't like Jack Danuals ether

      Drinking ether? I see your problem right there.

    27. Re:Classy by _anomaly_ · · Score: 4, Informative
      I'd take Jack over Jim, too, but Jim is by no means representative of what good bourbon is.

      Try Woodford, any Pappy Van Winkle, Baker's, Booker's, Blanton's... the list of good bourbons isn't short. And, if you're going to cry foul because of price differential between Jack and those I listed, try Bulleit bourbon, one of my personal favorites.

      --
      "I have no special gift, I am only passionately curious." - Albert Einstein
    28. Re:Classy by pkuyken · · Score: 4, Informative

      Irish or Scotch whiskey or no whiskey.

      I think you meant to say "Scotch whisky".

    29. Re:Classy by gman003 · · Score: 4, Informative

      That does not (IIRC, IANAL, STFU) apply to brand stylings. You can write a book called "Jack Daniels", you can make a TV show called "Jack Daniels", but you can't use the branding style of the Jack Daniel's trademark on them. It's the same reason why you can get sued for using a Superman-esque logo.

    30. Re:Classy by sumdumass · · Score: 4, Interesting

      I've seen about a dozen OEM versions of XP become tagged as pirated for no apparent reason at all outside a windows update. In all cases, after about 2 or 3 hours of tracking the original supplier of the software down, I would have to wait 24 hours to get a new product number/key then another day or two to get the license sticker.

      In one situation, I lost an account and had to hire a lawyer to stop one confused and irate business lady from going around telling people that I ripped her off by billing for the operating system then installed pirated software instead. Her defense was that Microsoft told her I did that.

    31. Re:Classy by Roujo · · Score: 5, Informative

      Copyright and trademark are two different beasts. Copyright allows you to control who gets the right to copy your work. As such, you can give out licenses, for free or for a fee, since its purpose is exactly that: being able to profit from your work. Whether aggressive copyright enforcement is the best way to do that is a whole other story. =P

      The purpose of trademark is not the same at all. Trademarks are used to protect a brand's image. They are issued to prevent brand dilution (the brand becoming a generic term, as happened with Kleenex) and brand confusion (somebody else passing a lesser product as a better known brand, hurting the latter's reputation). Because the intent of a trademark is to preserve the uniqueness your brand, you are not allowed to knowingly let someone else use it. If you did, it would weaken any later trademark claims you made since you'd have permitted others to make your brand less unique. This is why Jack Daniel's says they are forced to send the cease and desist letter.

      Regarding whether this is an American thing or not, I do not know. I think it also applies here in Canada, but then again IANAL so I can't say for sure. =)

      I hope this helped!

  2. Quite unusual by geogob · · Score: 5, Funny

    Their lawyers must be drunk or something...

    1. Re:Quite unusual by Anonymous Coward · · Score: 5, Funny

      It was a nicely worded letter. Unfortunately it was delivered by taping it to a whiskey bottle then throwing it at the offenders head.

    2. Re:Quite unusual by Nyder · · Score: 4, Informative

      Their lawyers must be drunk or something...

      It was too nice to be written by lawyers.

      --
      Be seeing you...
  3. One Word by zblack_eagle · · Score: 5, Insightful

    Why can't more companies act this way towards one another?

    Sociopaths

    1. Re:One Word by Forty+Two+Tenfold · · Score: 5, Insightful

      Sociopaths

      Maybe, or maybe just immature butthurt jerks.

      --
      Upward mobility is a slippery slope - the higher you climb the more you show your ass.
    2. Re:One Word by Anonymous Coward · · Score: 5, Insightful

      Correct. The Average American Corporation(tm) has qualities that strongly resemble (in overlapping ways) Schitzophrenia, Sociopathy, and Psychopathy. The all consuming greed, the complete and utter disregard for others, the complete narcissism. Clearly JD is not a member of "The Average American Corporation(tm)". Now business schools teach businesses and business people to behave in antisocial, psychotic, sociopathic and narcisistic ways, so its not a random accident. Its not just the corporations that are a destructive force on American Society, its the business schools too.

    3. Re:One Word by hairyfeet · · Score: 4, Funny

      Well it may also simply be the southern mindset, JD has always been a home grown southern brand and we southerners do tend to put a little more value on being social and neighborly, especially to a fellow southerner like the author was.

      Of course all bets are off if its a damned yankee, they need to take them fast talking, carpet bagging ways and git the heck off our lawns!

      --
      ACs don't waste your time replying, your posts are never seen by me.
  4. This is how you get things done by din0 · · Score: 5, Insightful

    With a tip of the hat, a please and thank you --A Southerner

  5. Win/win by Jesrad · · Score: 5, Insightful

    JD's gets free publicity, and strengthens the brand by setting a nice example and by turning Wensik's book's first edition into a collector for its own whiskey fans, while the author enjoys greater exposition for his book, and sells out the first edition as a collector item. The general public loses nothing, some of us can even enjoy an unexpected collectible.

    This really is the nicer way to handle brand infringement.

    --
    Maybe we deserve this world ?
  6. addedbytes.com by zerro · · Score: 4, Interesting

    I recall something similar occurring to ilovejackdaniels.com which was a language cheat sheet site, which is now addedbytes.com: http://www.addedbytes.com/blog/what-happened-to-ilovejackdaniels-dot-com

  7. There's a difference. by JustAnotherIdiot · · Score: 5, Informative
    Jack Daniels didn't demand the book cease printing, nor did it demand all the current books be taken off the shelf.

    we simply request that you change the cover design when the book is re-printed

    They go on to offer to help pay for the change if he does it sooner than the reprint/on the digital version.

    --
    What do I know, I'm just an idiot, right?
  8. Better than he deserved by namgge · · Score: 5, Interesting

    The Jack Daniel's company's gracious reaction to the abuse of their trade mark is more than the book's publisher deserved. Deliberately ripping-off another company's IPR for a book jacket is not the behaviour of a reputable publisher.

    My experience, however, is that book-publishers are meticulous to the point of obsession about ensuring they have all the necessary rights for the cover artwork in place before going to press. This does make me wonder whether this incident is actually a publicity stunt...

  9. Parody by hey · · Score: 4, Insightful

    Perhaps this could be called parody. Lots of times people take a famous logo and tweak it for a joke or comment. eg the Coke logo that says "Cocaine".
    Generally that's called fair use.

  10. Re:Sneaky and devious by SecurityGuy · · Score: 5, Insightful

    Nah, I'm going to give them this one. The slam dunk is a book that's "40 % ALC. By VOL". It was obviously created to connect with the brand. The decorative lines (filigree?) around the edges is also identical. You don't get to trade on someone else's brand, and that's what the author is doing.

  11. Bad editor, bad. Primary sources! by forand · · Score: 5, Informative

    This is a great article certainly worth having on the front page of Slashdot. However, the complete lack of editorial oversight is infuriating. The sole link in this article is to Mashable, which cites BoingBoing, which sites the webpage for the book. I simply clicked through those citation and found the primary source. Why didn't the Slashdot editor do this? To push traffic to Mashable? We should have the primary source as the primary reference. If the discussion on the other sites is worth it then those can be the focus of the article. Otherwise give the primary source!

  12. Whiskey people can be a nice bunch of folks... by novapyro · · Score: 5, Informative

    It may well be the entire industry that acts that way. A couple of years ago I was at a tasting event with the either Grandson or Great Grandson of Jim Beam, and he was the same way. .

    You're probably talking about Fred Noe III. Yep, he's a nice guy. As is Bill Samuels Jr. over at Maker's Mark. If you take a distillery tour here in Kentucky or attend a tasting at a Derby party or the Bourbon Festival, you might run into these guys. Or one of the many other storied distillers. To see Jack Daniels distillery, of course, you'll have to go to Tennessee. Even though the brand is now owned by a Kentucky company, (Brown-Forman) they are still most definitely a Tennessee whiskey.

    For a little bit more about the whiskey business, check out this photo book at the author's website:
    http://www.leonhowlett.com/kentuckybourbonexperience/
    or at amazon:
    http://www.amazon.com/Kentucky-Bourbon-Experience-Kentuckys-Distilleries/dp/1935001817
    Or just go visit a distillery.

    Disclaimer: I know the author, but don't receive any compensation for the book. I just think it's a beautiful book.

  13. Working link by satanclause · · Score: 5, Informative

    http://www.businessinsider.com/jack-daniels-wrote-what-has-to-be-the-nicest-cease-and-desist-order-of-all-time-2012-7

  14. Not according to Little Debbie by bbbaldie · · Score: 5, Interesting
    They stomped all over a t-shirt manufacturer a few years back over "Little Doobie" shirts.

    And as an ex-employee who was unceremoniously downsized, may I say how good it feels to get "Little Doobie" back out there where Google can find it. The self-righteous tards would like nothing better than to have that ugly little incident forgotten. ;-)

    Please mod up and help my cause?