Jack Daniel's is polite. The Tennessee whiskey maker recently sent a cease-and-desist letter to independent book publisher Lazy Fascist Press and author Patrick Wensink, informing them that the Jack Daniel's-themed cover of Wensink's novel, Broken Piano for President, violated its trademark. But instead of asking Wensink to immediately change the cover, the company said it was "flattered" by the imitation and asked only that a new cover be commissioned if the book is reprinted. ¶ "If you would be willing to change the design sooner than that," Jack Daniel's wrote in its letter, "we would be willing to contribute a reasonable amount toward the cost of doing so." ¶ Companies rarely treat trademark violators this kindly. David Gooder, managing director of the chief trademark counsel for Jack Daniel's and its parent company Brown-Forman (BF/A), spoke to Bloomberg Businessweek about the company's good ol' fashioned Southern hospitality.
Why are you so nice?
We don't always send letters like this. We get so many infringement situations a year, and we look at each of them separately. We don't have a standard approach to them; we just do what we think is the most fair. As a trademark lawyer, one thing I've always been concerned about is how a brand will present itself in one voice to consumers and then come out swinging a sledgehammer when someone does something it doesn't like.
Are infringements like this common?
We get hundreds a year. They range from people setting up shop outside a Zac Brown Band concert and selling Jack Daniel's T-shirts without our approval, to — well, there's this bar in Sweden that's using our logo and filigree and looks like a Jack Daniel's-themed bar.
Are most violations innocent, like this one?
I don't know what the numbers are, but I would say that the misguided fan, the truly innocent infringer, is in the minority.
And yet you still treat the person with respect?
Most people probably won't buy this book just because the cover looks like a Jack Daniel's label. So we thought, is the author really trying to take advantage of Jack Daniel's to make money? Probably not. We've used this general approach when we see a situation that warrants our response. Whenever we've taken this tone, we almost always get a very favorable reaction back. It solves the problem faster.
Does this tactic ever backfire?
Our first letter to the Swedish bar said something like, "Hey you guys, the signage you're using is a copy of our trademark, and we need you to change it." They ignored us, so we sent a stronger letter. Then, after that, a much more forceful one. You have to be prepared to ramp things up if the subjects ignore you. But our first approach in most cases is a fairly polite letter.
Have you heard from the author? Is he going to change his book?
Yes, he was very cooperative and appreciative of the approach we took. His publisher said, "No worries, we'll take care of it." It turns out that it's a print-on-demand book, so the cover will be much easier to change. That's good for us because we've dealt with book covers in the past, and they're not always easy to change right away because of the volume that gets printed.
Why aren't more companies as polite as Jack Daniel's?
I don't know. Some people just have a tougher view of these violations. We also handle these issues internally, rather than ask an outside counsel to do it, and they'd probably send a more standard letter. In some instances the bigger companies are simply overrun with infringements, and they have to take a tougher line to squash them. But there's also a backlash toward intellectual property owners and a discussion of how hard of a line is needed or appropriate to protect their rights. Other companies may also do what we do, but you don't hear about it as often (as the hard-liners).