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Cease and Desist 101

by Paul Rapp on June 26, 2013

 

One very funny bit blew through the web last week involving a cease and desist letter from the town of West Orange, N.J., 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 takedown of the town and every “argument” its lawyer had tried to make. The responding lawyer even asked for a property-tax refund 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.

C&D 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 to go; five minutes cutting and pasting and out it goes. They’re cheap and generally they’re effective. As a general rule, people don’t like getting letters from lawyers. The general sense of dread followed by the bad news that one’s been caught usually ends the infringement quickly.

C&D 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 percent in the right legally, an overbearing C&D letter can backfire and be a PR disaster.

And, of 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 one-word 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?”

Simply put, 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 titled “Whiskey Dick.” Turns out there was an L.A. 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 L.A. band recalled the album and changed their name.

I wasn’t quite so lucky this time. Since my guys’ new album and tour were 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!

Apparently, 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, my 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.

Urgh, 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 2 AM last night yanking porcupine quills out of his dog’s face.