Back in 2012, the legal team at Jack Daniels came across a book cover bearing a striking resemblance to the label for its Tennessee Whiskey. However, instead of filing suit, the company took the situation as an opportunity to show some of that famed Southern charm. The cease and desist letter sent by Jack Daniels’ lawyers to the book’s author drew praise from various media sources for being “exceedingly polite.” They even offered to cover some of the costs of changing the book cover. Jack Daniels’ chief trademark counsel summed it up as being “…positive sort of all the way around.” For another example of using clear trademark infringement to further one’s own marketing goals, consider Bud Light’s cease and desist approach when small Minneapolis brewery Modist Brewing Company created and sold a “Dilly Dilly Mosaic IPA.” Consistent with its now longstanding medieval-themed marketing campaign, Bud Light sent a town crier (no, really, an actual town crier) to Modist’s taproom to issue the following decree:
Dear friend of the Crown, Modist Brewing Company, Congratulations on the launch of your new beer, Dilly Dilly Mosaic Double IPA! Let it be known that we believe any beer shared between friends is a fine beer indeed. And we are duly flattered by your loyal tribute. However, “Dilly Dilly” is the motto of our realm, so we humbly ask that you keep this to a limitededition, one-time-only run. This is by order of the king. Disobedience shall be met with additional scrolls, then a formal warning, and finally, a private tour of the Pit of Misery. Please send a raven, letter, or electronic mail to let us know that you agree to this request. Also, we will be in your fair citadel of Minneapolis for the Super Bowl, and would love to offer two thrones to said game for two of your finest employees to watch the festivities and enjoy a few Bud Lights. On us. Yours truthfully, Bud Light These examples demonstrate the utility of a creative approach to brand protection. Make no mistake, each of these brands could likely have found enough change in the couch cushions of the finely upholstered furniture of their lawyers’ offices to sue into oblivion the infringing party, but they didn’t take that route because they understood that everything they did on behalf of their brands was itself a representation of their brand. Every public statement — legal or otherwise — was an interaction with their customers and the buying public, so each of these companies worked to identify and pursue a brand-enhancing strategy to address the infringement, turning a potentially negative situation into a positive one and building up some goodwill in the process. Your distillery can take a similar approach to address its WWW.ARTISANSPIRITMAG.COM
challenge with the restaurant. Rather than sink money, time, and a whole lot of stress into a risky lawsuit, you are determined to find a better path to resolution. So you call up your lawyer, and being well aware of most lawyer’s overall aversion to creative writing, you make it clear that you don’t want to fire off a threatening, boilerplate cease and desist letter demanding that the restaurant stop profiting off your goodwill. Since getting a lawyer to do other than they are used to can take directness, you should first make your goals clear. Do you want to stop them from using the colors, or the regional ethos? Do you want a settlement payment? Or maybe there is an opportunity for business collaboration and you may want to extract a license or co-existence agreement. Determining the end goal will go a long way toward helping your lawyer understand the nature of the cease and desist. From there you and your lawyer can think through important facts such as the timeline of your brand’s development, the applicable registrations of your intellectual property, and the aspects of their brand strategy that you believe are infringing on your marks. Ultimately, any successful consumer product business — such as a distillery — will have executed some level of brand creation and ensuring that your brand assets are protected is an essential function. Talk to your lawyer if you believe that there are aspects of your brand that are protectable and obtain the appropriate registrations. In the unlucky event that you find yourself in a difficult situation with a rival business over aspects of your brand, you will always be in a better position to protect your assets if you do not have to rely on common law rights as opposed to the protections available to the holders of registered marks. However, as shown in these examples, over-protection of your brand assets should also be avoided. Every business wants to avoid the pain of legal proceedings, the potential for social-shaming, and any sort of reputation as a trademark bully. Think through your distillery’s brand approach and find unique ways to exert an appropriate amount of pressure on the infringer without stepping over the line. You may find that this approach achieves your brand goals in unexpected ways.
Brian B. DeFoe is a business lawyer at Lane Powell, where he focuses his practice on helping companies in the customer-facing food, beverage and hospitality industries. Brian can be reached at (206) 223-7948, on Twitter @BrianBDeFoe or Instagram @HoochLaw. Visit www.hoochlaw.com for more thoughts on spirits and the laws that govern them. Brandon J. Archuleta is business lawyer who is well-versed in negotiating commercial agreements and providing advice on data privacy and security. Prior to joining Lane Powell, he worked in-house as legal counsel for Molson Coors Brewing Company. Brandon can be reached at (206) 2237239 or email@example.com. This is intended to be a source of general information, not an opinion or legal advice on any specific situation, and does not create an attorney-client relationship with our readers.
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