Jack Daniel's has a very nice trademark lawyer

Patrick Wensink has posted a very nice and friendly cease-and-desist letter from Christy Susman, a Jack Daniel's company's trademark lawyer, who were concerned about the cover on his book Broken Piano for President. The JD lawyers offered to help pay for a new print run.

The Whiskey Rebellion. (Thanks, Leah!)


  1. Well now, that’s different.

    I don’t even *like* the stuff, but I have to give them kudos.

  2. Because most trademark lawyers appear to be dicks, they won’t understand how choosing to handle this sort of incident in the way it was handled (reasonably, humanely) doesn’t represent a cost for a given brand but that it is something actually adding value.

    And like swordmage, I’m not a JD drinker (Johnnie Walker black usually) …but what the hell, maybe I’ll give it a try.

    1. My brand preferences run to Maker’s, Woodfield, Blanton’s, etc. But just for this, I’m willing to try Jack Daniel’s for the first time in more than 20 years.

        1. The thing about Jack Daniel’s is that it just seems like every bottle should come with a biker attached, preferably Sam Elliott.

        2.  Except those are both whisky. The person above is referring to Bourbon. And Blanton’s is divine.

    1. Well, it does, but is it really going to create brand confusion?  That, to my understanding, is the most important factor in determining trademark infringement.  Certainly nobody will mistake a book for a bottle of Jack; would they mistake that book for a licensed Jack property at a glance?

      That said, while I don’t think there’s any provable infringement here, I think it’s for the best that he and his publisher complied with the request — if only because it demonstrates to IP lawyers of the world that asking nicely is a good way to get what you want.

    2. Which trademark does it rip? t doesn’t use any of its trademarked names, nor does it even use the same typefaces. Do they have a trademark on those embellishments? I can’t find info on it. It’s vaguely in the style of the Jack Daniels label, but it isn’t selling whiskey or any beverage of any sort — it’s a book cover. Politeness is probably a good idea when asking for something you don’t really have the legal right to ask for.

  3.  Wow, that’s a classy move. Next time I have money (and am of age), JD’s it is.

    Everyone else who cares about their brand reputation: this is how it’s done.

  4. Now, of course, parody is protected under US copyright laws, so this publisher is under absolutely no legal obligation to change it…

    1.  This isn’t a copyright claim, it’s a trademark claim.

      Trademark doesn’t have fair use, per se. But the standard for trademark — a commercial use likely to cause confusion in a naive consumer — is much more liberal than the comparable limitations on copyright.

        1. In the UK ™ doesn’t actually really mean anything. It’s simply a statement that you believe something to be a trademark. You can literally stamp it on anything for added fanciness.

      1. Yeah, so doesn’t this amount to still being an acceptable use? Nobody’s going to pick up this book thinking it’s in fact a bottle of whiskey. That would be one very naive consumer. Or is it not OK because people might be confused into thinking it’s an officially sanctioned JD publication? 

        1.  “Or is it not OK because people might be confused into thinking it’s an officially sanctioned JD publication?”

          Pretty much this, yeah.

          1. I agree, the label is significant and would turn a head in a bookstore or on Amazon or whatever. That turn of the head has value that the author sought to take advantage of without considering that someone built the ability to turn the head and considers their efforts worthwhile or worth something.

        2. According to the lawyer, there’s a slippery slope. If they allow this, they may be coerced into allowing other small bits due to precedent, until the brand is know to be easily remixable. I imagine personally they don’t mind, but they have a legal obligation to defend their trademark whenever possible.

          1. Exactly. If they don’t defend their trademarks vigorously, they can legally lose them.

            I think the author could take a chance at publishing this anyways, and probably even get away with it, but it is probably not worth the risk.

        3. As the note says, if the company doesn’t defend the mark they can risk losing it entirely over the course of time. So if JD didn’t send letters like this at some point a competitor (or whoever) could show a judge that the company can no longer enforce the trademark and shouldn’t be able to enjoin more obvious competing uses.

        4. There’s a reasonable chance that a consumer might think that this book has an association with JD; which is a brand, not just a bottle of whiskey.

          You cold take every word away from this article and most people would still recognise the book as being connected with JD, that’s the problem.

      2. For trademarks there is nominative fair use, which allows for purposes of reporting, commentary, criticism, and parody, as well as for comparative advertising. Additionally, the lawyers stated reason for the demand is that the cover may weaken the brand. No allegation of any economic harm from the cover, but simply the assertion that over time use of elements of its trademark may harm its ability to enforce its trademark against other uses of the brand for non-related products or services. As a legal matter this assertion is suspect. As a policy matter, is it true that we want the famous owners of brands to spend millions in advertising to make their trademark part of our cultural lexicon, but then to allow those brand owners to control how and when we can use it for purposes that don’t compete with their product? 

        1. Congrats. You’ve just demonstrated why most lawyers don’t bother to be as nice as this one.

      3. Explain then Wacky Packages, which has been around for 30 years. All it consist of is stickers making fun of famous brands and bastardizing their logos and product packages. 

        Im pretty sure there is a Wacky Package for JD. If a brand is represented by a icon, logo or package, how can you do a parody of it if you can’t mock a trade mark design? The answer is you can’t, which is why it is also legal. The Supreme court has shown time and again when it comes between free speech and protecting a institution, person, or product, the First Amendment is paramount and more important to society then protecting something from criticism.

        1.  There’s an obvious difference here. The “Wacky Package” labels are actual parodies of the trademarks they, um, parody. Here, the packing doesn’t really comment on Jack Daniels per se — it just co-opts it. See the “Mutant of Omaha” case for more on this.

    2. This isn’t parody. How is Jack Daniels being parodied, or otherwise commented upon? Even if this -were- a copyright claim (as Cory has claimed, it isn’t), it still couldn’t be protected under the rubric of parody.

      1. And with water it’s the fastest way to get the alcohol into your system, too. Unless you mainline it, that is…

          1. Gentle reminder that bourbon is not the water of life.

            Still worth drinking, though.

            edit: I forgot that JD walks like a bourbon duck, quacks like a bourbon duck, but is only the next door neighbor to a bourbon duck.

      2. nope– Geo. Dickel is so pure it’ll prevent a hangover, even after you’ve been drinking rot-gut.  JD  has always coveted the Dickel formula.

      3. Funny you should say that. I just recently discovered that tip, and follow the booze up with LOTS of water, over the next 8 hours or so, and it really does help. 

        Why don’t they teach us this stuff in school?

    1. Speaking as a Kentuckian for Kentuckians, I say no. Definitely no. That would only leave us thoroughbred horses, pot, and goddamncoal. On the upside, though, we might get fewer drunken Ohio/Tenn tourists.

        1. We’ll even throw in a little barbecue on top of all that. No need to do business on an empty stomach after all.

    2.  Jack Daniels is bourbon.  They only call it Tennessee Whiskey as a marketing plot, the stuff meets every legal requirement for bourbon. 

      1. Legal requirements?
        Made in USA, from corn, in charred oak barrels and not too strong. 

        Bourbon is from Kentucky.

        1.  No.  Yes on the USA, at least 51% corn in the mash, new charred oak barrels, but here’s no requirement that it’s be from Kentucky.  It wasn’t even first made there, it was probably first produced in Bourbon County, *Virginia*, and some of the best bourbons ever made aren’t even from the southern US; AH Hirsch from the now-defunct Michter’s distillery in Schaeferstown, PA, goes for well upwards of $500. 

          1. There was no Kentucky when Bourbon County Virginia existed.  When borders were redrawn over time, what was Bourbon County Virgina became Mason County Kentucky.  And under current NAFTA law, Tennessee Whisky could be labeled as bourbon.

  5. These lawyers must be dipping into their product.  Way to laid back and smooth to be sober.

      1. God, I love that show. I must have seen every episode by now.  

        (Mitchell and Webb look,  worth a look if you have a Netflix account.)

    1.  Jack Daniels was sampling I hear. 
      Rumour has it he drunkenly kicked a safe once that he had forgotten the combination for, breaking his foot. 
      The resulting gangrene killed him. 

      Maybe that wasn’t a safe but just a bucket. 

  6. Because when it comes to being a good person, it boils down to economical gain? I somewhat naively choose to believe that people do things like this mainly for the simple reason of wnating to be nice, ‘doing good is feeling good’.

    I mean, i think it is important where ones values are. If smart marketing is what one values, and decency and kindness is just a byproduct of that rather than the reverse, then there is sure to be another time when smart marketing might mean something totally different.

      1.  And yet, we have the very real possibility of ending world hunger and a million of other very real problems.. but we don’t. :/

  7. Heartwarming, but if you look at Wensink’s initial reaction on his site (July 20) you can see he was much less impressed by the genial approach. Good thing he decided to go with the voluntary change, but still uncool of him to use such a civilized approach to a trademark request as advertising while continuing to refer to “boozemoney” and encouraging buyers to snatch up the ‘collectible’ infringement cover edition. 
    (edited for clarity)

      1.  At the same time it’s easy to be polite when you know the other person has no choice but to do what you say. Of course the offer to pay some of the cost may be a clever way of avoiding the Streisand Effect.

        1. Actually, this isprobably one of those cases where he doesn’t have to cease and desist. Maybe, but not necessarily. The label design is a trademark, but trademarks exist only to avoid confusion in the market for related products. This book clearly cannot be mistaken for a bottle of sipping whiskey.

          Now, if necessary the JD lawyers could argue that that there is a merchandising brand — t-shirts, posters, even possibly books — which has sprung up around their whiskey, which deserves similar copyright protection. At that point, the author can respond that this is parody and protected speech, so still nothing will probably come of it.

          At the same time JD isn’t being unreasonable in its request: if too many people, even in disparate industries start using similar logos, you run the risk of your trademark becoming generic. Which is a good reason this letter should be of the form, “not to be rude, but I think you may be standing on my trademark. Would you please consider lifting your foot?”

          1. The design has been used for the book cover because it’s so well known. 

            I don’t care if he uses it or not, or if it’s ultimately legal to do so or not. But no need for him to be a douche about it. Now it just look like he using the whole situation *intentionally* as marketing for his book. Looks planned, but has totally backfired. 

            JD come across as cool, author bloke as a tool.

          2. Given that I have seen other JD products like shirts, I’d think that this very much does fall into the merchandising brand situation.  Jack Daniels’ primary product is their whiskey, but they do make money off of other uses of their trademarks, even if those other uses are ostensibly to attempt to promote their primary business.  As such, they maintain control over what additional uses (ie tshirts and other memorabilia) their trademarked designs are applied to.

          3. T-shirts, shot glasses + a dozen other styles, key ring fobs, bandanas, hats, towels, mouse pads, posters, mirrors, signs, light fixtures, hand fans, coozies(sic?), patches, tote bags/backpacks etc, the list is quite endless.

            And  it is all gravy, even though Jack Daniel’s may only see 5-10% of the net from sales, doesn’t matter.

            It’s all vertical, they sign a contract and collect a check, made possible by having a recognizable brand that other manufacturers to retailers wish to exploit. 

            JD probably contracts the creation of less than .005% of the JD branded merchandise available, but they collect on it all. It’s the easiest money there is, but can only be had with the hard work or luck involved in building the brand to begin with.

            It’s free money, they can and should defend it as it is all based on their initial & continued efforts.

  8. Southern hospitality. Although the first sentence does suggest that Wensick might not have encountered such generousity had he been a sober northerner. Still a classy move, even if rye is better than bourbon.

    1. Well pick your poison as you like, but have the good grace to have some manners.

      Which obviously these guys have. I end up getting in a mood for drink I’ll probably have to pick a bottle of theirs up. Granted i don’t drink, but still might have to as a show of support for the non-dick approach.

  9. Now that’s what I call “Southern hospitality.” That woman must have gone to the Atticus Finch school of lawyerin’!

  10. That makes me want to go buy a bottle of Jack, right now. We don’t currently have any whiskey in our pantry, anyways, and I’ve always felt that was wrong.

  11. yay JD – hats off, classy, kind, sensible and excellent PR – big hugs and a kiss to the lawyer & others responsible

    for anybody interested in responsive design check out JD’s site – v. nice i think

  12. I would send that lawyer a bottle of the good stuff, to thank him for his affable tone — and apologise for the derangement. What do you think he likes to drink?

  13. The brilliance of this move is that the letter is itself an advertisement. Just read the comments on this thread. For other companies, look at how it’s done.

    1. Given that both are in North America and both are supported by trademark sophisticates it was likely worked out amicably in advance. In the case of a big rock band album release JD would probably view that as adding value to their brand and agree to a contract, clearly Motley Crue/promoters could see the value in association too.

  14. I see this is all from Cory Doctorow, who, ahem, has opinions on this matter.
    The cynic in me suspects this was ‘leaked’ to Doctorow by the PR people at Jack Daniels headquarters. Wait, not the cynic, the optimist in me. This is how to handle this sort of thing.

  15. I posted something with the Reddit logo in it and they were really friendly about it! Not all lawyers are crazy assholes, some are just doing their job protecting their clients (and have clients that respect their legal team to be nice to people).

  16. Their Contact Page in case anyone wishes to leave a few friendly words directly.

    Least we can do for their taking a positive adult stance on business is to let them know it’s a reason they’re going to see a good deal of positive publicity and possibly a spike in sales.

  17. In the not-so-distant past, this would have been considered a tribute and helped to extend the fame of the brand.  Free advertising, in other words.  See that book cover?  Looks like a JD bottle.  Don’t know about you, but I’m thirsty.  Let’s go put down a few, shall we?

    1. Totally agree. Imo, the content of the letter is at flaw, but the delivery is flawless. We should be thankful for small things, considerin’ how crazy all this patent BS has gotten.

  18. So, because they were nice about it we’re supposed to be OK with them asserting a level of control over an image that is a piece of pop culture? Isn’t this sort of usage of a symbol or design such as this one the exact hallmark of the artists that BB claims to love so much?

    Should we then say that we’re OK if companies start issuing nice takedown notices, even when the art they are taking down is fair use?

    1. Should we then say that we’re OK if companies start issuing nice takedown notices, even when the art they are taking down is fair use?

      Did you not read any of the comments in this thread before you made yours?

      1. I read a few and they all seemed glowingly cheerful about the “niceness” of a corporation seeking to quash a book cover that’s probably going to be seen by fewer people in its history than see a bottle of Jack in a weekend.

        I am not particularly cheered by it.

        First off, his publisher should fire their lawyers for giving it a pass in the first place. Second, he should reconsider his publisher for not telling them to stick it, nice or not.

        Just because I ask you nicely to do something, it does not logically follow that you should just do it.

        Or is it because this is more a trademark issue and not a copyright issue, because I’m not terribly good at separating the two – especially in this context.

        Or what? What is your problem with me today?

        1. 70 comments into the thread, you bellowed out a gormless question that’s already under discussion.

          1. @twitter-350895279:disqus
            This question:

            Should we then say that we’re OK if companies start issuing nice takedown notices, even when the art they are taking down is fair use? 

            So far, based on the discussion above, the answer is “no.”  Also, fair use may not apply to trademarks in the same way it applies to copyright, this particular instance is not a parody or any other aspect of fair use, Jack Daniels has a legitimate interest in protecting their brand, and the author doesn’t seem to have any legitimate interest in appropriating the JD brand.

            I would recommend conserving your outrage for genuine outrages.

    2. Yeah, but the letter seems to imply a possible renegotiation of the issue… Like if the author can make a good case for it (“I love you guys and I did it as a tribute, I’ll even mention you as a free PR, whaddaya say?”) the JD might possibly go with it.
      It’s a civilized manner of settling things, all hobbity and sensible, unlike those warty brutes barging in and threatening to smash everybody up that we’ve all grown to know and despise.

  19. As I don’t drink, I never thought alcohol could make my day. These folks proved me wrong.

    Yay for lawyers who have actual, working hearts!

  20. I was dragged to the JD distillery on a road trip by my father in law (a big JD fan) and I was amazed at the reverence and respect towards the brand and history that was evident everywhere on the premises by both staff and visitors. The whole tour was actually quite fascinating and delightful, with none of the cashing in or money grubbing you would expect. I only wish that George Lucas took his brand and legacy 1/10th as seriously.

  21. I don’t drink, but kudos for being sane and decent, JD legal counsel. This is how it’s done.

  22. Kudos to them for this. I’m not a huge fan of JD, but Brown-Forman also makes Woodford Reserve, which is a perfectly respectable Bourbon carried everywhere. I’ll be ordering it the next few times, just to show my support. Between the greening of the company, and this absolutely rare display of gentlemanly lawyering, BF is winning a lot of points in my book.

  23. Awww a benevolent, “im your buddy” style, threatening letter *L* Ok ok, no threats were made but gag me, I dont have any doubt this would escalate if the author said no, so whats with the smoke screen by JD?  

    I distrust big companies as much as the next person but there is something that seems more honest about a bastard company sending stern cease and desist letters then someone trying to rub my back and pretend like we are friends.

  24. Kinda reminds me of the early 1980s when the CEO of SouthWest Airlines took a small company to task for using their trade mark slogan. SWA challenged the small company’s CEO to an arm wrestling competition for the right to use the slogan. Whoever won could use it and the other would have to go out and find another. SWA won (and I always thought it was fixed) but it was great PR for SWA at the time. 

  25. Seems like a win win situation to me. JD comes of as “gentlemanly” and there is an obscure book that’s getting a ton of free advertising . JD is also getting a ton of free advertising but they could afford to buy it if they wanted to. Buying a reputation as being reasonable and giving the little guy the benefit of the doubt is as another trademark goes “priceless”.

    Or maybe the JD PR dept vets the lawyers instead of the other way around?

  26. A special message brought to you by the Jack Daniels:  

    If you choose to “file cease and desist orders” always “file cease and desist orders”  responsibly.

  27. Hey Cory, there was a joke about Josef Stalin.

    “Stalin kicked a child in the face.
    What a wonderful man, he could kill the kid but he only…”
    Same here.

    Wake up You booze making guys, yours bottle label is so widely parodied and used in differed ways in culture that you technically already lost it!

    People just put:
    “jack daniels label parody”
    “jack daniels label satire”
    in google images…

  28. I understand JD position, and agree with how they are moving forward, makes me want to have a JD bottle in my bar cabinet!.

    JD brand is sooo strong, that book cover is a visual magnet due to the fact of the uniqueness of its graphic design. they have a case. the law is the law, and that is hard to change.

    not like the getty images extortion letters, they hit one of my clients, for a mistaken placed picture stamp size, my client scared pay the amount, i paid my client 1/2 and lost the client, and getty lost my agency work and i will always recommend you look for a good decent image broker…

    I will never use Getty but i will make an effort to drink JD, this is good PR take a bad and make a good for all.

  29. Wow, that’s a really nice offer. Kinda makes me want to drink some Jack as a gesture of good-will. (One good turn does deserve another!)

  30. Boy, this is much classier than when Smucker’s threatened to sue me for using a red green, and blue striped background on my web site. Downright decent.

  31. On the other hand, the Jack Daniels website  is trying to enforce the same nonsensical rules about linking that Cory was mocking LOCOG about a few days ago…

    “6. You agree not to use the link on any web site that disparages the Brand, the Site, or the Brand’s products or services, or which infringes on the Brand’s or Brown-Forman Corporation’s or its affiliates’ intellectual property or other rights.”

    Much more in this vein at http://www.jackdaniels.com/linking-policy and they expect you to register your agreement.

  32. But the JD label, while recognizable, is too generic in my opinion to be really defensible as an exclusive trademark.
    It’s just generic old-timey fonts and styling that are common to many things of a whole era.

    You can’t have squigly lines? You can’t have plain words in an arch? You can’t have white text on black background? There is nothing about the JD label that is unique to JD.

    About all I can see is, maybe the exact shapes of the squiggly lines should have been less exact. Like the Lynard Skynard T-shirt above.

    If JD wanted to have a protect-able trademark, then they should have made themselves an actual trademark of some sort besides plain text in completely standard  fonts.
    It is indeed good that they are asking nicely, because by rights they should have no right to demand it.

  33. Love Jack d’s approach! Its a reflection of the culture and brand and in fact believe when this story really hits main street that their performance will improve substanially.

    I think ill go get me a bottle right now just because of this.

Comments are closed.