Think Before You “Cease and Desist” Somebody

Author: Mona Conway

Intellectual property attorneys have at least one standard form in their protective arsenals against infringement: the “cease and desist” letter. For the novice business owner or individual receiving such correspondence, this can be quite worrisome. The reason is that such letters do not tend to merely state, “Knock it off, Buddy,” they threaten litigation (usually of the federal kind) and contain statutory citations, which appear to be cryptically forceful. And they surely are packed with a punch. Many federal intellectual property statutes allow for coveted remedies such as attorney’s fees, costs, treble and punitive damages. Perhaps unlike your run-of-the-mill cease and desist letter, the ones served to prevent intellectual property infringement are to be taken most seriously.

But, what if the infringement is actually a good thing for the intellectual property holder? What if the infringer’s actions actually resulted in a benefit to the holder of some intellectual property right?

Here is a case in point. Long Island Newsday created a clever ad for the iPad, which, as luck would have, went “viral” on YouTube. The ad says that Newsday’s iPad app is better than the paper in all kinds of ways, except for one. The video then depicts a man attempting to swat a fly with the device (instead of a newspaper), which, of course, shatters into a million pieces. The 30-second clip received 600,000 views in just days and was well on its way to receiving even more attention, when the ad was abruptly pulled. Apparently, all that good, free publicity was not worth seeing the iPad smashed to bits. Some call this decision by Apple one of the biggest business blunders of 2010.

Now, what if the infringement is just too ridiculous to be taken seriously? Can sending a cease and desist letter be bad for business in addition to being a tremendous waste of time and legal fees? Here is a case in point. Last year, attorneys for the National Pork Board (NPB) sent a 12-page cease and desist letter to ThinkGeek, Inc. for using the slogan, “Unicorn – the new white meat” on its website, thinkgeek.com. The “infringer” launched the fake product on April Fool’s Day (um, as a joke). The NPB owns the mark “The Other White Meat.” ThinkGeek publically apologized, albeit sarcastically, by responding, “It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn.” It seems that the April Fool’s stunt ended up making fools of the NPB when their letter became disclosed to public reaction. News agencies and bloggers have had a field day poking fun at the NPB’s way-too-serious reaction to the parody of their mark.

Finally, the Nestle matter should advise intellectual property attorneys to think carefully before sending out their cease and desist letters, because the backlash of such action could be much worse than the infringement. Greenpeace posted a graphic video on YouTube about how the food conglomerate, Nestle produces palm oil in a way that negatively impacts an endangered orangutan population. This is where the battle began. In response, Nestle had the video pulled for copyright issues. Greenpeace then fired-up its resolve and resources by using Facebook to get its message across to the public. Nestle then made a slew of what it admits to be “rude” remarks to its Facebook “fans,” which resulted in an onslaught of bad press. In the end, Nestle changed its source of palm oil, folding under the pressure of consumer outrage, which would not have been so forceful had it not been for Nestle’s determination to fight for its intellectual property rights.