Ron
Site Admin
Joined: 07 Dec 2002
Posts: 2031
Location: State College, PA
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 Posted: Wednesday Jan 04, 2006 |
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Cease and Desist
By Bret A. Fausett
| Quote: | Dear Sir or Madam:
This law firm is intellectual property and litigation counsel to Fud Worldwide Ballbearings Corporation. It has come to our attention that you are the registrant of a domain name incorporating the letters "F-U-D" and that you are using this domain name to maintain a Web site devoted to displaying examples of how some corporations spread fear, uncertainty, and doubt.
Please be advised that Fud Worldwide Ballbearings Corporation is the holder of the trademark "Fud," which the United States Patent and Trademark office has accepted for registration on the Principal Register. Since 1972, my client has used the "Fud" mark in connection with its quality ball-bearing products, and in that time, the Fud mark has become famous worldwide. Internet users looking for Fud clearly expect to find my client's products.
You are hereby warned and notified to CEASE AND DESIST your use of the term "Fud" as a domain name, which you have obviously registered and continue to use in bad faith. If you do not immediately transfer this domain name to the Fud Worldwide Ballbearings Corporation, we will take all action necessary to protect our mark. Your failure to comply will result in my client's full and forceful prosecution of all of its rights, and you could incur liability for damages in excess of $100,000 and responsibility for our attorneys' fees. |
Yes, though I hate to say it, many in my profession make their living sending letters like this one. Even I send them from time to time, though my versions are kinder and gentler. The worst cease-and-desist letters often resemble Usenet flames more than any documentation you'd want to share with a judge. Many lawyers believe "the nastier the better" is a good policy for such notices. While lawyers have an obligation to a court to say things in documents that are reasonably based on the law and fact, they have no such obligation when sending the proverbial nasty letter. Sometimes the people sending these letters aren't even lawyers.
However, the Internet changes the dynamic of these threats, and few lawyers or their clients have learned that managing their legal rights in a networked world sometimes requires more diplomacy than they're accustomed to using. The legal strategy that works so well on a hard-knuckled competitor may have unintended consequences when used against an unknown Web-site operator. Who you contact and how you contact them, can have important ramifications for your business.
Terrorizing Toddlers
Here's what I mean. You can read Fud's cease-and-desist letter one way if it's sent from a business to a long-time competitor, but it acquires an entirely new meaning if it's sent to a nonprofit organization, or worse, a two-year-old girl.
That's what Archie Comics discovered a couple of years ago when it sent one of its own nasty letters to David Sams insisting that he "cease all use of the Internet domain Veronica.org" and "all use of the Veronica trademark." The letter, sent with instructions to respond immediately, insisted that Mr. Sams shut down his Web site and transfer the domain name to Archie Comics. Mr. Sams, you see, had committed the cardinal sin of registering the domain name, Veronica.org, for his two-year-old daughter named, get this, "Veronica." On his Web site, Mr. Sams posted pictures of his daughter, who bore little resemblance to the dark-locked cartoon teenager.
Whatever shock and anger David and Veronica Sams may have felt upon receiving the cease-and-desist letter must have dissipated quickly after Mr. Sams posted Archie Comics' letter and his polite and amusing response to it on the Veronica.org Web site. These letters quickly circulated through Internet mailing lists as an example of corporate stupidity and greed. The story was recounted widely in the online and print press. In virtually every report, Archie Comics was made to look foolish, if not mocked outright. The flood of bad press is even more incredible when you consider that Archie Comics was trying to protect the reputation of its trademark.
David v. Goliath
The stories of trademark owners stumbling in the enforcement of their rights have become humorous standards in news stories about the Internet. A shoe company tried to shut down a purveyor of free open-source software; a toy maker took on a teenage boy who shared a name with one of its products; a computer company known for thinking different thought it should go after a teenage girl; and many people still believe that bad karma from a poorly considered legal action against a group of French artists lead to the precipitous downturn in eToys' stock price.
In each instance, the pattern is the same. A lawyer sends a sternly worded letter threatening future legal action if a certain response from the recipient isn't immediately forthcoming. The cease-and-desist letter comes on embossed law firm letterhead and often contains the lawyer's obtuse "heretofore" and "aforementioned" prose. Sometimes the threats are excessive and exaggerated. When the recipient of this paper missive is an individual maintaining a simple home page, the conflict has all the elements of a classic David and Goliath tale. And just as in the biblical story, the Internet David has his own slingshot.
Rather than consult a lawyer, the recipient of such a letter is just as likely to consult his or her peers on the Net. News travels fast in a networked world, and the Internet community protects its own. Email campaigns and boycotts can spring up overnight. One letter sent by your trademark paralegal can result in thousands of angry emails to your CEO, sometimes accompanied by press inquiries about the abusive legal tactics practiced by your company.
This doesn't mean that companies should ignore trademark violation, theft of copyrighted material, or trade-secret disclosure—far from it. These are important rights that must be protected, regardless of the prospective defendant's identity.
But most of these David and Goliath scenarios are examples of Goliath failing to make the appropriate judgment call about what's an infringement of its intellectual property interests and how to handle such an infringement.
You Don't Look So Good
The Internet has its own culture and norms, and it moves quickly to enforce them against violators. Lawyers and companies that fail to appreciate this can make a bad situation worse.
| Quote: | Dear Sir or Madam:
It has come to our attention that you have posted our previous letter, asking that you cease and desist use of the famous "Fud" trademark, on your Web site. You have also posted the email addresses of the undersigned counsel and the CEO of Fud Worldwide Ballbearings Corporation (hereafter "Fud") in prominent locations on your Web site, thereby encouraging the hateful and abusive email we have received over the last week. You have also made inflammatory comments to the press, creating an incorrect perception of Fud and its fine Fud products.
Please take note that we will hold you personally responsible for all libelous and other false and derogatory statements made about Fud by you and those persons acting at your behest.
You are hereby warned and notified to CEASE AND DESIST all public posting of this and all other correspondence from this law firm. If you do not immediately cease all reference to Fud on your Web site, we will take all action necessary to protect our trademarks and our upstanding reputation. |
Some lawyers might think a follow-up letter like this one is a good idea, but anyone minimally conversant with Net culture knows that the author of such a letter just started wriggling around in quicksand.
Of course, I made these letters up—but not out of whole cloth. Nearly every sentence in these examples is patterned on a letter posted somewhere on the Internet by a Web-site operator who thought the cease-and-desist letter he or she received was equally ridiculous. In nearly every instance, despite the self-assured, threatening words of the cease-and-desist letter, the corporate bully either lost in court or tried its best to withdraw quietly with what was left of its online reputation. Sometimes the little guy loses, but even then, he or she usually gets in a good public relations punch or two.
Now that you know how some legal strategies can backfire when used online, how do you prevent yours from doing so?
Worth the Fight?
The first question that any intellectual-property owner wants to ask when confronted with potential infringement or theft is: What use is being made of the property in question? Archie Comics had a registered trademark on the word Veronica, but certainly nothing in its trademark rights would preclude the use of the word Veronica by people named Veronica. Even if the only information Archie Comics had was that a man named David Sams had registered Veronica.org, there was a substantial probability that the manner in which the site was used wouldn't create consumer confusion with the Veronica cartoon character. The registration was in .org, not .com, and the word Veronica is better known as a girl's name than as a corporate trademark. Pictures of a little girl and well-known fictional characters can coexist quite peacefully in their respective top-level domains without raising legal issues.
This point also extends to criticism, commentary, and parody sites. When Bell Atlantic and GTE chose the name Verizon for their newly combined business, they also made a name for themselves in quite a different sense, by registering domain names in all top-level domains on innumerable permutations of Verizon. Some of the names it registered included critical names like Verizonsucks.com. Verizon thought that if it registered them first, these critical names couldn't be used against the company by anyone else.
Of course, it was only a matter of time until someone registered Verizonreallysucks.com, more to poke a little fun at Verizon's practices than to criticize the company. But Verizon wasn't amused. It fired up the legal machinery and sent an angry cease-and-desist letter to the domain name registrant. Not a week passed before someone had registered VerizonShouldSpendMoreTimeFixingItsNetworkandLessMoneyonLawyers.com—a name that took full advantage of the newly extended DNS character set.
The variations of derogatory names for a company or its trademark are virtually unlimited. It's safe to say that there are more possibilities than you can track down. Sometimes, trying to shut down a Web site simply because it says critical things about you or your products is a little like pulling a weed after it has gone to seed. Yes, you've pulled one weed, but five more will take its place next week. Think twice before you waste energy chasing something you can't catch.
Symbiosis
In some cases, coexistence is preferable to stirring up a public relations disaster. Some companies set time bombs by sending cease-and-desist letters to their most loyal customers—those who have put up fan sites devoted to a person, band, product, or even a company. Yes, some lawyers want to stop these people, too.
The principal justification given by intellectual-property lawyers who have tried to shut down fan sites is that companies must vigorously enforce their trademark rights or risk losing them. In some sense, this is true. One important component of trademark law requires you to monitor and enforce your trademark rights or you may, over time, find that you no longer have any. The key here is to ensure that others use your trademark in a way that doesn't dilute it, tarnish it, or confuse consumers. This doesn't mean that fans can't use it, it only means that they should use it in a way that's acceptable to you. Rather than litigate against your best customers, license them to use your mark in connection with their fan sites. You maintain control of the trademark; your fan uses that mark strictly in conformance with your corporate trademark policy, and you now have an evangelist instead of an enemy.
Think Before You Act
The Internet is one of the few places where individuals and the world's largest corporations can speak and interact as virtual peers. This has produced an unprecedented set of conflicts between intellectual-property owners and individual speakers.
While no one doubts that intellectual property owners have reason to fear the widespread piracy of their works, not everything that moves is a pirate. Cease-and- desist letters and lawsuits directed at fair use or innocent mistakes can have a quick and lasting negative impact on your company's reputation among Internet users.
Every time one of these legal actions backfires against an overreaching lawyer and his or her client or company, I always ask myself, "What were they thinking?" The answer usually turns out to be that they weren't.
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Bret is an intellectual property and Internet attorney, and a partner with Hancock, Rothert & Bunshoft. You can reach him at bret@lextext.com.
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... and then the wheel fell off. |
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