Don’t Be A Dilly - A Lesson in Being Firm but Friendly

“Don’t be a d*ck.” may not be in the Solicitors Regulation Authority’s (SRA) Code of Conduct, but perhaps it should be. Trainees and experienced lawyers alike would certainly do well to remind themselves of this at times!

The law is the easy bit. You may very well be able to recite the Trade Marks Act 1994 in your sleep, but knowing the law and knowing what to do with it are two very different skills.

As we mentioned in a previous article, Fender recently won a ruling in Düsseldorf dressing the Stratocaster body up as a protected work of applied art, and promptly set about firing cease and desist letters at other builders, reportedly telling them to stop production, recall stock and destroy what’s left. It tiptoes neatly around the US case they lost back in 2009, where a court more or less concluded the Strat shape had become the generic idea of an electric guitar. But the guitar world has taken them to town for it (even legend Rick Beato isn’t happy!) and Fender has since had to put out a “we’re only really after the cheap copies” clarification. If you need to climb down, you’re probably doing something wrong.

How To Win Friends And Stop People

Let’s take a look at Jack Daniel’s. When Patrick Wensink brought out his novel “Broken Piano for President” the cover was doing its best impression of that famous black-and-white label. Their lawyer wrote back, and it’s a lovely letter, genuinely.
The flattering and good-humoured missive said “while we appreciate the pop culture appeal of Jack Daniel’s we also have to be diligent to ensure that Jack Daniel’s trade marks are used correctly…” It went on to ask politely whether he’d mind tweaking things for the next print run, and offering to chip in towards the cost. They came out smelling of roses.
Wensink even posted the “The World’s nicest cease and desist letter ever” on his website.

Brand Image Protection

Patagonia is a live example. They’re suing drag queen and environmental activist Pattie Gonia. They need to do this; sit on your hands and you risk losing the very thing you’re trying to protect. But they’ve been careful about it. They’re only seeking a dollar in damages and have made a point of saying this was never about the money. Instead, they’ve leaned into the shared values between the two brands, something that fits neatly with Patagonia’s long-standing messaging around initiatives like 1% for the Planet, “Earth is now our only shareholder” and supporting grassroots activism.

It’s still a mess and still being fought out on social channels with Pattie Gonia saying “This is how corporations bully individuals who cannot match their resources. Because this would take away not only my activism and career, but also the livelihoods of the team I employ.”

But Patagonia has clearly got a plan (which involves PR as well as legal, much like Aldi). “We cannot selectively choose to enforce our rights based on whether we agree with a particular point of view. Inconsistent enforcement might prevent us from stopping entities like the oil and gas lobby, counterfeiters, hate groups, or other bad actors from using the Patagonia name and logo. These are not hypothetical examples; they are real instances of past trade mark infringements we successfully stopped only because we have been consistent in defending our rights.”

This is where experience comes into play. Yes, AI may spit out a nice looking letter which reads well, but is there any commercial consideration? The (excuse the cliché…) ‘bigger picture’?

Being nice while getting your message across may not even NEED a letter, Bud Light’s “Dilly Dilly” adverts circa 2017 gave Modist Brewing a great idea, and they brought out an IPA called Dilly Dilly. Unsurprisingly Anheuser-Busch InBev sent a cease and desist immediately. However, they decided to deliver it in a pretty unique way. Matching their adverts, a town crier dropped by in medieval dress, with a scroll proclaiming that Modist needed to change the name of their beer.

The crier declared.

“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 limited-edition, 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”

The Modist team pinned the scroll up behind the bar. Bud Light triumphed, in more ways than one (and cleverly wove in a nice little advertising opportunity too).

The law tells you what’s possible but judgment is working out what’s actually wise. There has been a hell of a lot of coverage of the SKE v BB Crystal Bar dispute, and the contempt and other related proceedings. No detailed comment here, other than agreeing with the court that a contempt action should only be exercised when properly justified (and not just another stick to beat your opponent with). Just because you can doesn’t always mean you should.

The snippy without-prejudice letter, the showboating, the cheap dig at the other side’s drafting. None of it makes you cleverer, and worst of all it does nothing for your client.

Perhaps the other Guitar builders should take a leaf out of the Cleveland Brown American Football Team’s playbook. In 1974, they received a letter complaining about paper planes being thrown by fans during the Browns’ games. Dale Cox threatened to sue them unless this risk of “serious injury” to eyes and ears was stopped. The Browns responded by sending the letter back to him with their own, which read “Dear Mr. Cox: Attached is a letter that we received on November 19, 1974. I feel that you should be aware that some asshole is signing your name to stupid letters. Very truly yours, CLEVELAND STADIUM CORP.
James N. Bailey, General Counsel.”

Being sharp is not always the same as being tough. Always do your best for your client; just don’t be a d*ck about it.