This article originally appeared in the 6.27.13 issue of Metroland
One very funny bit blew through the web last week involving a
cease and desist letter from the town of West Orange, New Jersey, trying to
wrest the domain name “westorange.info” away from a blogger. The response, from the blogger’s pro-bono
attorney, was a brilliant, funny, scholarly, and scathing take-down of the town
and every “argument” its lawyer had tried to make. The responding lawyer even asked for a
property tax refund for himself in a footnote. Not
only did this stop the town’s bullying dead in its tracks, it became an
international sensation. And, hopefully,
an inspiration for recipients of bogus C&D letters in the future.
letters are a lawyer’s stock in trade.
Especially in the world of IP, when a rights owner finds somebody
violating those rights, out goes the C&D.
The templates are ready; five minutes cutting and pasting and it's gone. They’re cheap and they’re effective. As a general rule,
people don’t like getting letters from lawyers.
The creeping sense of dread followed by the bad news that one’s been
caught usually ends the infringement quickly.
letters come in an assortment of lengths and temperatures. I tend to vary mine
depending on things like: how blatant the infringement is, whether my client
has already told the other party to stop, how big and sophisticated the other
party is, how important it is to stop the infringement immediately, and whether
the dispute is of a nature that the C&D letter might go public, in which
case I’m in a position to affect the public’s perception of my client. Even if you’re 100% in the right legally, an
overbearing C&D letter can backfire and be a PR disaster.
course, sometimes you can’t win no matter what you do. A few months ago a band-client contacted me,
frantic because another band with the same name had just been
discovered gigging on the west coast. My
guys have been around for years, they’ve toured and garnered nationwide press,
and while they aren’t exactly famous, they’ve got a name and a reputation worth
protecting. And when they called me they
were about to release a new album and do a bunch of dates across the country. And now here’s this other band with the exact
same name announcing a big tour out west.
My guys found out about it when a promoter sent over the itinerary from
an online rock magazine with the message “WTF is this you guys?”
you can’t have two bands with the exact same name. Even if they play vastly different kinds of
music. There’s iTunes, Amazon,
Spotify... and there’s only room for one band per name. A few years ago local heroes Hair Of The Dog
called me after a fan bought a Hair Of The Dog album and the lead track was a
screaming metal number entitled “Whiskey Dick.” Turns out there was an LA hair-metal band
called Hair Of The Dog that had just released their first album. Not a good situation. Out goes the C&D letter, conversations
ensued, and the LA band recalled the album and changed their name.
I wasn’t quite
so lucky this time. Since my guys’ new
album and tour was imminent, and since the west coast band’s tour was starting
in a matter of days, I needed to get their attention, so I wrote a medium-hot
C&D letter: stop using the name and tell the clubs you’re booked into to stop
advertising you under that name. NOW!
the west coast guys were kids, and a couple of them had a show-biz daddy who
responded on their behalf by telling me that my music sucked (not my client’s
music!), that I
was a sucky drummer, that my clients
were creeps whom he had never heard of, etc. and so on. He also contacted one of the schools I teach
at and demanded that they fire me! Who
knows what else he tried to do, although he quieted down pretty quick. Maybe he went to a lawyer who advised him
that I was right and that he should STFU.
there’s more to this story, but I need to make this point: because C&D letters are cheap to reel
out, there’s typically little downside to sending them out even when one
doesn’t have a case. And this leads to
bullying. Lots of bullying. And lots of threats of lawsuits that are
totally bogus. So just because you’ve
received a four page C&D letter from some fat white-guy law firm with six
last names on the letterhead and offices in 12 cities doesn’t mean you’ve done
anything wrong. And just because Getty
Images has sent you a blistering C&D letter with an invoice for $300 for
the use of that puppy picture on your website doesn’t mean they’re going to
federal court if you ignore them. Do
your homework and stand your ground.
Paul Rapp is a
woodsman and IP attorney who was up ‘til 2AM last night yanking porcupine
quills out of his dog’s face.