Competent Lawyering in an Age When Everyone can be Groucho Marx

By David Hricik

Mercer Law School

I regularly present on legal ethics in patent practice at CLE conferences around the country, and, less often, on general ethics or other IP ethics areas, such as trademark practice.  While doing some research a couple of years ago for one of those, I ran into the phenomenon of “trademark bullying,” which is when a powerful trademark owner sends a C&D letter to a small business, threatening a tour of the pits of misery (wait for it) if the small business doesn’t stop using the big business’ mark.

Of course, these letters are often necessary for trademark owners to avoid dilution, and so on.  And, of course, C&D letters aren’t as significant a part of a patent litigation as trademark litigation, but there are lessons to be learned for all. So excuse the slightly off-topic post.

The hook I developed for talking about this is a bit of interesting history.  It seems that after Warner Brothers released the movie Casablanca, the Marx Brothers decided to do their parody of “Night in Casablanca.”  Apparently (there is some doubt), this caused Warner Brothers to inquire about the movie.  Groucho Marx used that request to create a firestorm of publicity, poking fun at the (alleged) claim to own the word “Casablanca,” which, of course, was the name of a city.  Marx’ letter and a bit about this is here.  It’s worth a read (even though if you’re like me, you would rather do anything than look at a computer screen).  Marx’ tactic of using sarcasm and portraying WB as a bully worked and the Marx Brothers’ movie was more of a hit than it likely otherwise would have been.

So what’s that got to do with ethics.  Well, today, everyone can be Groucho, thanks to social media.  If you look, you can find very humorous responses (that put the TM owner, unfairly no doubt, in a bad light) to C&D letters from Starbucks (TM — don’t want to receive a C&D), Caterpillar (TM, same concern), and others (Google “trademark bully” and take a few minutes off).  If you’re short for time, read the Starbucks (TM) one.  These C&D letters — threatening immediate misery and litigation — may have been needed, but the tone and the threats may be not.

So, there’s the lesson.  Compare the “if you don’t stop we will crush your bones to dust” approach of some C&D letters with the approach taken by Jack Daniels (TM but they won’t C&D me, and in fact I bet they’ll send me some free bourbon.  (Hint).). A fellow published a book and the cover was plainly based on a Jack Daniels label (TM and, as a further hint if you’re reading, Mr. Daniels, I’ve never had any fancy Jack Daniels, though I hear it is quite good).  The in-house lawyer for the company wrote a very effective letter but explained that the author and Mr. Daniels’ interests were aligned. The full story can be found here, but here is a portion of the C&D:

“We are certainly flattered by your affection for the brand, but while we can appreciate the pop culture appeal of Jack Daniel’s, we also have to be diligent to ensure that the Jack Daniel’s trademarks are used correctly. Given the brand’s popularity, it will probably come as no surprise that we come across designs like this on a regular basis. What may not be so apparent, however, is that if we allow uses like this one, we run the very real risk that our trademark will be weakened. As a fan of the brand, I’m sure that is not something you intended or would want to see happen…

In order to resolve this matter, because you are both a Louisville ‘neighbor’ and a fan of the brand, we simply request that you change the cover design when the book is re-printed. If you would be willing to change the design sooner than that (including on the digital version), we would be willing to contribute a reasonable amount towards the costs of doing so.”

So, it may be that a tour through the pits of misery (Budweiser, I like beer, too, and the Super Bowl) (oh, TM) is what is needed, but lawyers need to recognize that in today’s world everyone can be Groucho, and more harm than good may come of that type of threat.

Addendum:  Don’t “Google” (TM) those words; search for them using Google (TM).