Make us your home page

Jack Daniels uses good ol' fashioned Southern hospitality in cease-and-desist letter

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).

Jack Daniels uses good ol' fashioned Southern hospitality in cease-and-desist letter 08/05/12 [Last modified: Sunday, August 5, 2012 4:30am]
Photo reprints | Article reprints


Join the discussion: Click to view comments, add yours

  1. Tampa Bay home prices still soaring amid tight supply

    Real Estate

    But despite Tampa Bay recording its most expensive residential sale ever — $11.18 million for Clearwater's fabled Century Oaks estate — there were signs that the pace of price increases may be slowing just a bit for single-family homes.

    The historic Century Oaks estate overlooking Clearwater Harbor has sold for $11.18 million, the most ever paid for a home in the Tampa Bay area. [Courtesy: Coastal Properties Group]
  2. These days, don't hit the theme park without an app and a phone charger


    Emile Crawford stocks two back-up phone battery chargers these days when she takes her kids to Disney World. But she dare not venture into a theme park without a smart phone app, an accessory becoming as necessary as sunscreen in Florida theme parks.

    A wristband visitors will wear at the new Volcano Bay water park in Orlando, Florida. The wristband, called Tapu Tapu, tells you when it's your turn to get on a ride. It also lets you pay for food so you don't have to carry a wallet and opens lockers so you don't have to  carry a key. (Universal via AP)
  3. James Cameron, Zoe Saldana and more appear at Disney's Pandora


    ORLANDO — As he stood on a stage at Disney World Wednesday, director James Cameron revealed his teenage dreams.

    Zoe Saldana tweeted a photo of herself from Wednesday's appearance at a new land in Disney's Animal Kingdom, Pandora -- the World of Avatar. The land is based on James Cameron film, in which she stars. Photo via Twitter.
  4. Parent of struggling DeVry University is changing its name to Adtalem


    Associated Press

    DOWNERS GROVE, Ill. — The company that owns one of the nation's largest for-profit college chains is changing its name.

    This 2009 photo shows the entrance to the DeVry University in Miramar, Fla. DeVry Education Group, which owns DeVry University, announced Wednesday that it will now be called Adtalem Global Education. 
[Associated Press file photo]

  5. New DEP secretary says there's no conflict in political side businesses


    TALLAHASSEE — When Noah Valenstein, the newly appointed head of the Department of Environmental Protection, was applying in April to be the state's top environmental regulator, he left one thing off the application: Companies he started and his wife runs have been paid nearly $1 million by politicians and lobbying …

     Noah Valenstein got the job as secretary of the Department of Environmental Protection on Tuesday May 23rd, on a unanimous vote by Gov. Rick Scott and the Cabinet. He will take the helm on June 5, with a salary of $150,000 per year. [Florida Governor's Office]