A Kinder Approach to Cease and Desist Letters
In the world of intellectual property, the “Cease and Desist” letter is king. These are letters from attorneys for the owner of a work or invention, sent to an alleged infringer of the owner’s intellectual property rights. The letters cite the legal basis for the owner’s claim, may threaten doom, destruction, and huge financial damages, and are often quite stern.
Overly aggressive cease and desist letters can backfire. The Lumen Database website (originally chillingeffects.org) began as a project to track overzealous use of the Digital Millennium Copyright Act’s enforcement mechanisms, spotlighting the most egregious examples of cease and desist letters. Such letters can also end up in the news, bringing negative publicity to the lawyers and companies involved. There is a better way to protect owners and to respond to cease and desist letters: selective use of humor, and a deft touch, can work much more effectively than blunt threats.
Take the case of the Doobie Brothers band and the comedian, Bill Murray (even the sentence brings a smile). The Doobie Brothers’ attorneys sent a cease and desist letter to Bill Murray after William Murray Golf (run by Bill and his five brothers) allegedly used the band’s song “Listen to the Music” in an ad for their “Zero Hucks Given” golf shirts. The Doobie Brothers’ lawyer, Peter Paterno, sent a letter to Bill Murray with a few jokes thrown in, including this gem:
This is the part where I’m supposed to cite the United States Copyright act, excoriate you for not complying with some subparagraph that I’m too lazy to look up and threaten you with eternal damnation for doing so. But you already earned that with those Garfield movies.
Mr. Paterno concluded by adapting Bill Murray’s line from Caddyshack, “In the immortal words of Jean Paul Sartre, ‘Au revoir gopher!'”, which became, “In the immortal words of Jean Paul Sartre, ‘Au revoir Golfer! Et payez!'” [and pay!]
Not to be outdone, Bill Murray’s lawyer, Alexander Yoffe, wrote back to acknowledge in appreciation the light touch of the Doobie Brothers. He wrote that the company includes fans of the Doobie Brothers’ music, “which is why we appreciate your firm’s choice of ‘Takin’ It to the Streets,’ rather than to the courts, which are already overburdened ‘Minute by Minute’ with real problems.” Fans of the Doobie Brothers will appreciate the inclusion of two famous songs in that one sentence. He continued, “… so let’s pour one up and unwind with a listen of the recently-released Quadio box set and plan to cross paths at a Doobie Brothers’ 50th anniversary show in 2021 when some level of normalcy resumes.”
Consider, on the other hand, the example of BrewDog, whose lawyers sent a more formal and unsympathetic letter to a small pub with the same name as one of its beers. This resulted in negative press and harm to BrewDog’s reputation as rebels against corporate breweries. BrewDog was forced to back down and was stuck with a costly and extensive effort to repair its reputation.
By using a gentle touch, the Doobie Brothers opened the door to fruitful negotiations with Bill Murray and his brothers, and both parties received great amounts of free, positive publicity, due to the approaches of the companies and their legal teams. Lawyers, don’t discount the tangible benefits of a kinder approach. Because your clients are “Dependin’ on You”.
— Joshua D. Waterston, Esq.
*Originally posted on October 1, 2020