Wednesday, 25 July 2012

Darren Olivier

Give that girl a ...

Two good friends have sent me the Jack Daniel’s cease and desist letter dubbed the nicest ever! And you can see why here.
If diplomacy is the art of letting someone have your way, then this letter is a trade mark litigator’s Van Gogh. It has ensured that JD’s IP has been respected and at the same time won over a fan and through the viral reaction, very much more. But before we exclaim “Give that girl a ...!”, is this the way in which all cease and desist letters should now be written?

Afro Leo attended two presentations at INTA in May by brand owners of well known marks who strongly advocated a more engaging approach much like the one illustrated by the JD letter. They emphasised tone, less threatening language and the use of persuasion to curb the infringement. Hell, one even suggested a telephone call!

But attorneys chatting in the hallways afterwards expressed their disquiet. There are times when you need to be more forthright.  Some infringers are crooks and wasting time on niceties is costly, inefficient and may even promote the infringing behaviour; the infringer just senses hesitation and weakness which is then exploited. In short, Jack Daniel’s often works better straight up, not diluted. Afro Leo agrees.

However, the trend to be more diplomatic and user friendly has been coming for some time:

1.    In jurisdictions such as the UK and Ireland there are provisions against unjustified trade mark threats precisely to curb abuses, especially by big brand owners. There are also guidelines on what must be contained in letters enforcing trade mark rights.

2.    Big brand owners and attorneys have become more cautious too. The power of the infringer has increased significantly because of social media and the web. An ill conceived cease and desist letter is easily published for the world to see, to the detriment of both the brand owner and lawyer.

3.    The role of the brand is also changing. It needs to be far more communicative and engaging now than it has ever been. Consumers are attracted to brands because they associate with them and an overly aggressive trade mark lawyer is often a turn-off. Who wants to date the steroid fuelled bouncer at the door?

4.    The public is also more aware. It is not difficult to research case law on infringement and it is very satisfying to draft a snorting retort to a letter that is not spot on; and

5.    The persona of IP is also experiencing a shift. Copyright, for example, is at risk of being perceived as an outdated inhibitor in an age where collaboration and sharing has become the rage. In Africa, the perception is more acute because the vast majority of enforcement is by foreign brand owners, and access to information/education that much more expensive, allegedly because of copyright.

So, kudos to JD’s attorney for raising the profile of us lawyers and for becoming the only IP attorney that I know to become famous for a job for which we are infamous. Now go on “Give that girl a hug”.

Darren Olivier

Darren Olivier

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