Via Twitter, The Huffington Post and all manner of other sources the IPKat has been receiving links to and news of a polite cease-and-desist letter which, he suspects, is no longer news even in the furthest galaxies. Such is the effective manner in which interesting news is disseminated that there is probably scarcely a remote asteroid on which this news has not been consumed, perused, reformatted and passed on to the next-most-distant recipient. The following version is however specially commissioned for the IPKat weblog by Colin Davies (Senior Lecturer in IP, University of Glamorgan). You will not find another one like it:
Let’s raise our glasses of Old Jack and drink a toast to the existence of civility and restraint in the (often) otherwise confrontational world of trade mark infringement. Many of us like a wee dram when reading a good book – Patrick Wensink, it is alleged, went a little further and used a variation of the Jack Daniel’s trade mark on the cover of his recently published tome – Broken Piano for President. The design that was commissioned for the front cover bore a remarkable similarity to the iconic trade mark on bottles of Jack Daniel’s. The design and presentation are fairly alike – though the words do differ.The IPKat and Merpel, having read Colin's piece, can't help feeling a little suspicious at such a perfect win-win situation (they've already discounted the 'win' in terms of lawyers being perceived as human, since any gains have already been lost by the perception that lawyers are paid to write cease-and-desist literature in the first place). How much would any brand-based company have paid to achieve the degree of publicity which Jack Daniel's has gained -- and how many right hands would any publisher, never mind the unsavoury-sounding Lazy Fascist Press, have given for what is effectively instant global recognition?
On becoming aware of the use of the mark on the front cover of this novel, described as “a comic masterpiece about the fast food industry, booze and the necessity to choose happiness over work and security”, Christy Susman, senior attorney in the legal department at Jack Daniel’s Properties sent Wensink this very pleasant cease and desist letter. Rather than requiring the publisher to remove all offending copies from the shelves, this letter just asked that the publishers replace the cover on future runs. Is this because both the drink and the author originate from Louisville, Kentucky? Jack Daniel's generosity went even further: they even offered to contribute to the cost of redesigning the cover. This offer was however declined ("We’re proudly independent and don’t need any of that sweet corporate booze money to redo the cover”).
The cynical amongst us might say this was a calculated move by Jack Daniel’s Properties. It minimised the potential for expensive litigation, which it is always conceivable they may have lost, while enhancing their reputation in general, certainly among the whiskey (correct spelling -- if you don't believe the internet you can check the label) drinking population. But one wonders how many other multinational companies would have been so conciliatory and would have refrained from using their superior position in the market to browbeat alleged infringers.
So Jack Daniel’s gained, as did Patrick Wensink, as the increased publicity would no doubt have fuelled demand for his book. Wensink's website seems to indicate that the book sold out initially in Powells (a large US bookstore), although it is again in stock (should we purchase several boxes of the books carrying the offending cover, to sell on eBay when they become collectors’ items?)
Some may question the need for any form of action at all. Since Jack Daniel’s are not in the business of producing books they have lost nothing. But what they have experienced is a dilution of their mark. A failure to initiate any action against Mr Wensink could count against them in any subsequent proceedings for dilution brought by them against other alleged infringers.
So it looks like Jack Daniel’s conciliatory actions have produced a satisfactory outcome and resulted in a win-win-win situation – enhancement of Jack Daniel’s reputation, a potential increase in sales of Broken Piano for President due to the publicity and the emergence of a perception of lawyers as human in the eyes of the public.
So should we encourage all our clients to proceed in a like manner? Unrelated to the above but no less interesting is a controversy over the origin of the recipe and the claim that, like the author of this blog, the originator is Welsh, one John “Jack the Lad” Daniels from Llanelli".
This is not the first time that parodic versions of the Jack Daniel's label have appeared. Two more are featured above. The IPKat wonders whether the same degree of Southern courtesy was extended in the direction of their perpetrators. Do any readers have any information concerning these, and any other parodies, allusions, nods and visual references to the Jack Daniel's black label? The Kats would be delighted to know.