The cease and desist letter is one of those frequently-used weapons in the lawyer's arsenal – perhaps too frequently used.
While there are often many good reasons to write such a letter warning an individual or a company to stop certain activities that infringe upon another company's valuable intellectual property, some lawyers tend to go a little overboard.
On occasion, the heavy-handed tactics are met with an entertaining blend of common sense and humor.
For example, Method cleaning products, which has used a daisy in the advertising of its wares for at least six years, recently received a cease and desist letter from Clorox, the makers of a "Green Works" line of environmentally friendly cleaning products. Clorox's lawyers maintained that Method was infringing on it's ownership of a "yellow flower design for use in connection with cleaning products."
Method responded by not only posting Clorox's "friendly note" on its website, but also by creating a poll asking consumers to vote on who should be the rightful "owner" of the daisy – Clorox, Method, or Mother Nature herself.
While Method looked to the power of the people, the folks at comedy website Netfunny.com put their faith in the power of humor. Years ago, the website featured a parody of the Mastercard "Priceless" ad campaign (the one built around the refrain "There are some things money can't buy; for everything else, there's Mastercard").
This one was based on the Columbine high school shootings. While I found the takeoff on such a tragedy to be rather tasteless and offensive, I nevertheless recognize that the First Amendment protects such parody.
Evidently, Mastercard's lawyers were lacking both a sense of humor and a rudimentary grasp of constitutional law. They sent Netfunny.com a cease and desist letter, accusing the site's owners of infringing on Mastercard International's trademarks associated with the "Priceless" advertisements, and demanding that the offending material be taken down.
Netfunny.com's owners responded with a retort that I found, well, priceless:
"Website hosting for anybody: $10/month and up.
Threatening letters to people who satirize you, hoping they won't know the law: $500.
Reputation as giant corporation required to intimidate small publishers: $ billions.
Supreme Court decisions protecting satire from accusations of copyright and trademark infringement... Priceless.
There are some rights money can't buy. For everything else, there's Mastercard's lawyers."
Sometimes cease and desist letters go out to people who aren't even seeking to profit from someone else's work, but who are, in fact, just fans.
John Fontana of Palm Harbor, Fla., is a self-confessed Beatlemaniac who lost his hearing while in his teens. He fed his obsession by starting a website devoted to the Fab Four, Beatlelyrics.com, in 1999.
Fontana didn't sell anything; the site featured band photos, Beatles album covers, lyrics and song lists, and provided a means for fans to connect.
And then one day in 2002, Fontana received a cease and desist letter from a large law firm's New York office, warning him that his website was infringing on the Beatles' copyrighted and trademarked material, and giving him one week to remove the "illegal content" before further legal action would be taken.
Fontana was heartbroken, but lacked the means "to launch a legal fight with the most influential pop group of the last century," as he put it.
He took down his website, posting a notice telling the thousands of visitors what had happened, and he received sympathy messages from all over the world. Many bands (U2 is one example) take a different approach of not only allowing but even encouraging fan-created websites.
Unfortunately for John Fontana and others, the Beatles' lawyers weren't willing to "Let It Be," "Help," or believe that in the end, "We Can Work It Out."
On other occasions, the unfortunate recipient of a cease and desist letter has to wonder, why me?
A few years ago, the owner of a small coffeehouse in Astoria, Oregon, got a cease and desist letter just because of her name.
Sam Buck (her married name is now Lundberg, but she says everyone around the community knows her by her maiden name) started her eponymous 10-foot wide coffeeshop, Sambuck's, when there was no Starbucks within 100 miles.
That wasn't enough for Starbucks' lawyers, who sent her a threatening letter and later sued her for trademark infringement.
Although Sam couldn't imagine how people could confuse the mammoth coffee chain with her tiny establishment, let alone envision a judge telling her that she couldn't use her own name on everything from coffee cups, cards, and her front window – that's exactly what happened.
No matter how improbable the risk of confusion may be, individuals and companies receive cease and desist letters all the time because of their names. Just ask journalist Bill Wyman (who received such a letter from attorneys representing Rolling Stones bass player Bill Wyman) or the folks at the Spike TV network (who were threatened with legal action by director Spike Lee).
Personally, I would've told Mr. Lee to "Do the Right Thing" and drop his silly claims.
Even New York City's "Naked Cowboy," famed for roaming Times Square with nothing more than his briefs, cowboy hat and guitar, has sent a cease and desist letter to one Sandy Kane, who wears a cowboy hat and matching bikini while promoting herself as the "Naked Cowgirl."
The Naked Cowboy (real name: Robert Burck) wants her to either stop or become a "licensed franchisee" by signing a "Naked Cowboy Franchise Agreement," going through a screening process, and paying him $5,000 a year for the privilege of strumming a guitar in public while scantily clad.
Seriously? Is there a big demand for this line of work in cities across America?
And for those of you who believe there's a likelihood of confusion between a naked cowboy and a naked cowgirl, my advice is a refresher course in the birds and the bees.
For sheer extremes in ridiculousness, the winner has to be the cease and desist letter sent recently by the attorneys (again, a large national law firm is the culprit) for the National Pork Board.
On April 1(yes, April Fool's Day), the creative minds behind the ThinkGeek blog "launched" a fake ad for what most people with half a brain would recognize as a make-believe product: canned unicorn meat.
With tongue firmly in cheek, the ad touted unicorn as "the new white meat," observing that in their final days of "pooping rainbows and marshmallows," the unicorns are lovingly cared for by the Sisters at Radiant Farms in County Meath, Ireland, and fattened "on a diet comprised entirely of candy corn."
Even laying the humor on that thickly was not enough for the National Pork Board's lawyers, who sent ThinkGeek a 12-page long cease and desist letter demanding that the blog stop using the phrase "the new white meat" due to the NPB's concern that it was infringing on the trademarks for the Board's slogan "The Other White Meat."
Scott Kauffman, president and CEO of Geeknet (owners of the blog) cheekily responded in a press release that "It was never our intention to cause a national crisis and misguide American citizens regarding the differences between the pig and the unicorn."
I know that companies have to be vigilant about protecting their trademarks lest they be accused of abandoning them, but c'mon, people.
Here's a little free legal advice the next time a massive law firm feels compelled to waste its considerable resources on a lengthy cease and desist letter:
1. Parody is protected free speech;
2. If something is dated on April Fool's Day, you might want to lighten up; and
3. Unicorns don't really exist.
John Browning is a partner in the Dallas office of Thompson, Coe, Cousins & Irons, LLP. He may be contacted at: jbrowning@thompsoncoe.com