Wednesday March 29, 2017

When A Cease & Desist Letter Backfires

Authored by: Marc J. Belliveau Posted in: Intellectual Property

This week, during the most popular week for burgers in Halifax, it was reported that lawyers for McDonald’s Corporation sent a cease and desist letter to a Halifax restaurant. The restaurant was advertising and selling their Burger Week burger named THE BIG WACK which is similar to the iconic BIG MAC trade-mark. As a result, the local restaurant chose to change the burger moniker to THE COPYRIGHT INFRINGEMENT BURGER providing great social media publicity for the “David” and making the “Goliath” seem petty and ridiculous, in this HRM David & Goliath burger week story. The new burger name should probably be THE TRADE-MARK INFRINGEMENT BURGER because the infringement in question was not about copyright but rather about potential trade-mark confusion.

A similar case occurred in New York back in 2013 when an environmental artist used the iconic “Smokey The Bear” image to protest hydraulic gas fracturing, commonly known as “fracking”. In the appropriated image, Smokey’s hat states “NO FRACKING” and the slogan underneath the bear’s face manipulates the well-known tagline “ONLY YOU can prevent FAUCET FIRES”. The artist’s parody went “viral” on the web and international sales of t-shirts, tote bags and patches displaying the parody grew quickly. In response, the U.S. government agency with oversight for Smokey The Bear, through its legal counsel, sent the artist a cease and desist letter threatening six months in jail and $150,000 in penalties under the 1952 Smokey Bear Act, among other possible intellectual property claims. The deadline to halt use and marketing of the offending image and slogan came and went, yet sales continued to climb.

Once the press got hold of the dispute and turned it into a constitutional free speech and copyright fair use story, the artist ultimately succeeded. Under US laws, the satirical use of a famous image for public protest purposes is unlikely to cause trade-mark confusion or dilute the value of a mark, or to amount to actionable copyright infringement.

In Canada, our Copyright Act was amended in 2012 to confirm and enshrine into Canadian law two new categories of “fair dealing” user rights, namely parody and satire, which are complete defenses to a copyright infringement claim. Arguably, THE BIG WACK burger was parody and satire, perhaps an “homage” to the BIG MAC, but not copyright infringement.

While it’s true that cease and desist letters can have a strong deterrent effect, if it is without a solid legal foundation, the sender loses much credibility and the recipient capitalizes even more on the “culture jamming” purpose of the satire or parody by waving around the ineffective cease and desist letter. Although it’s instinctive to want to protect the scope of one’s intellectual property rights through lawyers’ letters and the courts, care and contextual pragmatism is warranted in these satire and parody disputes in order to avoid falling into a negative publicity trap.

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