So this is a good teachable moment.

This Mashable article about “the most polite cease and desist letter ever” created quite a stir. Everybody’s tweeting it and forwarding to trademark lawyers they know. A book’s cover referred to the famous JACK DANIELS label. The owners of the JACK DANIELS trademarks asked the author of the book ‘Broken Piano For President,’ to change the cover design in future editions and they even offered to contribute to the cost of the re-design. (text of letter here). In an era where trademark owners are viewed as rapacious rent-seekers, JD has reaped a lot of good publicity.

Here’s the thing: JD didn’t assert a claim in the letter, so the letter isn’t a demand letter. There’s no reference to a law and no assertion that a right has been infringed. JD might have a claim, but it wouldn’t be a particularly strong claim.

(I speculate that) there’s a reason JD did it the way it did. Asserting a cause against the use of trademarked material in the title or cover of a book can be tricky. Asserting a bad claim can backfire.

While you can’t name a series of books HARRY POTTER, or duplicate the artwork on the cover of 50 SHADES OF GREY (ok, using that as an example was pandering on my part), it is often the case that a publisher has fair use and/or First Amendment protections with regard to a book’s title or cover art. The Hershey company tried to stop the publisher of an unauthorized bio of its founder, from using a cover that was based on the Hershey Bar trade dress. It had to settle for a disclaimer (which probably aided sales, because who would want to read an authorized bio)).

Fox News tried to stop Al Franken’s use of FAIR AND BALANCED in the title of his book. It lost at the preliminary injunction phase and dropped the suit. Sales of the Franken book went through the roof.

In a situation where the trademark owner has a negligible claim, huffing, puffing and bluffing can backfire. In one instance, the trademark owner hedged by sending a ‘demand-letter sounding’ letter to a writer who had parodied the trademark in the title of a blog column. The pseudo-demand letter noted that the trademark owner owned a trademark, that there was such a thing as the dilution statute, and that dilution of its trademark was a bad thing. What the letter never actually said to the letter’s recipient was that what the writer had done constituted dilution (or was unlawful in any way). Nevertheless, the letter demanded that the recipient change what it had written. The trademark owner didn’t like something, so it had a lawyer send a letter that looked like a lawyer letter, but wasn’t. The trademark owner was widely subjected to criticism for its heavy-handedness.

One snarky trademark blogger said at the time,: ‘what the trademark owner was asking for was a favor. When you ask for a favor, say ‘please’ and ‘thank you.’

So clearly influenced by those sage words, JD asked for a favor here, nicely, and offered to pay for the favor.

To summarize: baseless threat – bad; ‘please’ and ‘thank you’ – good