When will the message hit home? The one that says that trade mark enforcement cannot be seen in a vacuum. That in the information age - and the age of social media - public relations issues must be taken into account. That companies who get bad press about their enforcement unwittingly damage the image of IP in general. Which may go some way to explaining why, in South Africa, the drugs patent issue has become so vitriolic of late.
We've seen lots of examples of companies using an uncompromising approach to trade mark enforcement and, in the process, losing the PR war. In 2005 Justin Nurse not only won the freedom of expression legal battle about spoof Black Label t-shirts (altered to Black Labour) in the Constitutional Court, but he also won the battle for hearts and minds – the fact that First National Bank apparently dealt with a similar situation by simply buying all of Nurse's FNB spoof t-shirts and handing them out to staff put SAB's approach in perspective. In 2013 we saw a case that wasn't dissimilar - the South African National Halaal Authority (SANHA) threatened a comedian called Simmi Areff with trade mark infringement if he didn't stop using an image that was similar to the certification mark of the body. Areff, who had used the image in an ad for his comedy show which read 'Simmi Areff HAHA-laal Authority', went to the media and said that he was going to defend the case on the basis of freedom of expression and on the basis that his ad posed no commercial threat to SANHA. Reasonable sounding defences!
In the USA there was the case of jacket maker North Face – tagline Never Stop Exploring – who sued a teenager named Jimmy Winkelman for trade mark infringement. Young Jimmy's crime - selling clothing called South Butt, with the tagline Never Stop Relaxing. When asked for comment by the press Winkelman had some fun at the company's expense. He said this: 'The consuming public is well aware of the difference between a face and a butt.' On his website he said this: 'If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.' And he said that his reason for choosing the name and the logo had been to make a social commentary on the absurdity of consumer culture. He explained that, whereas North Face is marketed as a product for the adventurous, it is generally bought by those who see it as a status symbol.
In the USA, we also saw a case where the chicken chain Chick-fil-A – tagline Eat Mor Chickin – tried to stop a farmer and stencil artist from selling t-shirts bearing the term Eat More Kale. The case made international news. Dealing with the claim that Chick-fil-A was simply defending its trade mark, The Economist said this: 'Its idea of self-defence looks to others like bullying.' And dealing with the absurd claim that there would be consumer confusion, the publication came up with this memorable line: 'One entity sells food, the other clothing; only the profoundly stoned or deranged would try to eat a t-shirt or wear a chicken sandwich.'
An IP blog recently did a piece on the so-called 'Court of Public Opinion'. It told of how the cycle manufacturer, Specialized, sent out two letters which it came to regret. In the first the company had threatened a bike shop called Cafe Roubaix, which the company felt was infringing its trade mark Roubaix. The second involved a business that was using the trade mark Epix, which Specialized felt was infringing its trade mark Epic. On the face of it, two legitimate complaints. But the company did not take into account the power of social media. In each case the recipient of the letter used social media to rally the cycling community. The users of the trade mark Epic sent out this plaintive message: 'They (Specialized) are over-reaching, as they did with the Roubaix bike shop. They withdrew that case thanks to social media pressure, and we would be very grateful if everyone could support us in our efforts to fight this!'
Specialized withdrew both threats and its MD eventually published this humiliating post: 'I screwed up... We went too far...There is no excuse.' But he also tried to explain himself, telling readers that his company has a serious counterfeiting problem. That he needs to commit considerable resources to monitoring online infringements. That he knows of one cyclist who was injured when he used a fake Specialized bike. And that his company now has to take IP very seriously.
As we've seen, bad PR can follow both ill-considered threats as well as those that are perfectly legitimate. So what's the answer? Perhaps lawyers should be sure that they only send out letters that can stand public scrutiny. Which means that they should think long and hard about making unsustainable claims. Because in today's world there's every chance that an absurd claim will end up in the media. But even in cases where the merits are good, it might be an idea to explain just why the letter is being sent – how IP rights are important, how they create employment, what the consequences of confusion are. Because without such an explanation the letter may seem unreasonable to the layman, and still end up in the media.
I'll end with a sweet little story about what's been dubbed 'the nicest cease- and-desist letter ever'. I'm not suggesting that we lawyers all have to start being this nice, but there are probably lessons to be learnt here. Jack Daniel's sent a letter to the author of a satirical book called Broken Piano for President, whose cover looked very much like the black and white Jack Daniel's label. Displaying true Southern civility, the company didn't demand that books be removed from the shelves, but simply asked that a new cover be used when it was reprinted. Here's some of the text: 'We are certainly flattered by your affection for the brand, but while we appreciate the pop culture appeal of Jack Daniel's we also have to be diligent to ensure that Jack Daniel's trademarks are used correctly... As an author you can certainly understand our position and the need to contact you. You may even have run into similar problems with your own intellectual property.'
This letter went viral because it was so unusual. Which had an unexpected result. Everyone wanted to read the book and it became a bestseller!
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