Creative Trademark Enforcement: Thinking Outside the Box

In 2000, Lars Ulrich, drummer, co-founder of and ostensible spokesperson for the metal band Metallica discovered that fans were sharing an unreleased, unfinished recording of a song for the Mission Impossible II soundtrack on the then hot file sharing software platform Napster. Ulrich set about the process of filing suit against Napster, several universities and other entities in an effort to stop end users from sharing the band’s entire catalog. A judge agreed with the band’s objections enough to issue an injunction against Napster, and the software company eventually settled out of court. It was an aggressive and ultimately successful legal strategy that got Metallica what they wanted, protection of their intellectual property.

Ulrich may have been satisfied with the outcome; however, many of his fans weren’t. The band’s aggressive and unrelenting songs were their brand — take no prisoners, be your own person because “nothing else matters.” The aggressive legal action Ulrich took was completely rational yet it made them appear “corporate” and greedy. Ulrich’s ire appeared to be directed at their millions of fans rather than a few file sharers given the fact he had 300,000 Metallica fans banned from using the software. Some of those fans vowed never again to purchase another Metallica song.

Nothing Else Matters Except Your Bottom Line

While Metallica survived the ordeal, their relationship with their fans and their brand was irrevocably damaged. The Napster incident has become a large part of their legacy even though they are in the Rock and Roll Hall of Fame. Could Metallica have handled the file sharing incident and maintained their identity as heavy metal’s iconic rebels? File sharing was a new problem back then and few really knew how to react other than to contact an attorney, always a good strategy, but perhaps in the end aggressive legal tactics do more harm than good. Some entities manage to protect intellectual property without resorting to a kick down the door, guns blazing mindset.

Hook and Ladder and Hook

When your brand name has become so iconic to act as a synonym for an entire type of product, like Kleenex®, like Vaseline®, you have hit the top of the game in both marketing and production. Velcro® is one of those kinds of products. The brand name of the company’s hook and ladder fastener is used synonymously with all products of the same kind. Realizing this, Velcro® made a short music video featuring a chorus of attorneys singing a catchy song, “Don’t Say Velcro,” to remind people that all hook and ladder fasteners are not Velcro® brand.

The music video went viral in 2017. Major media outlets covered the video as if it were a release from a major artist. This extended the brand’s visibility as well as consumer good will. The song’s message, that Velcro® is a unique product and not just another hook and ladder fastener, was delivered in a dynamic and creative way.

Soft Pedaling C&Ds

The breakout Netflix hit “Stranger Things” inspired everything from Halloween costumes to Internet memes. It also inspired one enterprising event promoter to create a pop-up bar event using characters, graphics and ideas clearly taken directly from the show. The event was originally planned for a six-week run, but it proved so popular the promoters wanted to extend it. That’s when the Netflix corporate lawyers stepped in.

The usual cease and desist letter, normally a bland request intended to stop infringing, brand destroying or larcenous behavior, has become a weapon in the war against copyright infringement, often employed in the battle against piracy. In the hands of hacks and amateurs, the C&D has become a tool to badger and threaten consumers who may incorrectly believe their behaviors are harming no one. It’s become so bad that judges are sanctioning lawyers whose C&D letters are considered harassing or bullying, and lawyers who engage in the practice are called “copyright trolls.”

Netflix knows that the good will created by the success of “Stranger Things” called for a different solution to the problem. Perhaps after seeing the heavy-handed way Paramount’s attorneys addressed “Star Trek’s” fans’ unauthorized use of their IP, Netflix went with an attention-grabbing and fun C&D that built upon their show’s attachment to 1980s pop culture. Like the Velcro® video, the Netflix C&D letter received positive coverage on major news outlets and went viral on social media. The target of the letter agreed to Netflix’s demure demand not to extend the pop-up bar past the originally planned six-week run and to contact the company for approval for further fan-inspired events.

If you feel another entity, group or individual is infringing on your trademark, you are well within your rights to protect your brand through legal action. Often, consumers are loyal customers and fans are eager to support, and a letter asking for assistance and cooperation are enough. Psychological studies show that asking for assistance strengthens bonds between two people while demanding conformity may alienate others. A C&D can be disguised as a request, a gentle reminder or a giant, snarky joke.

Geeks Bearing Gifts

Yet, in our consumer society, if one really wants to promote good will and strengthen attachment, one might want to include a token of appreciation in the C&D as did AB Inbev, better known to many of us as Anheuser Busch. A few years ago, the brewery used an ad campaign that riffed on the popularity of medieval fantasy epics featuring the nonsensical catch phrase “dilly dilly.” As the phrase wormed its way into popular culture, another beer maker Modist tried to market a microbrew called Dilly Dilly. AB Inbev sought to slow the microbrewery’s roll.

The company wrote their C&D letter on a scroll, dispatched a costumed town crier to the microbrewery to read the request that Modist stop using the recently trademarked phrase, and offered two Super Bowl tickets as consideration. In the end, Modist raffled the tickets for charity, noting they had only planned to offer a limited quantity of the beer.

Protect Your Bottom Line with Creativity

As important as it is for corporations to protect their intellectual property, it is as important to present a good face to the public even when dealing with serious legal issues. A good IP lawyer will not only look after the legal issues a business faces, but will also look out for the company’s bottom line using unique methods to solve problems in a cost-effective way. As Lars Ulrich found out the hard way, legal moves to protect one’s interests may have unforeseen PR dimensions. His band is still a legend, but for some fans, their place in the Hall of Fame has an asterisk next to it.

Michael is an attorney specializing in entertainment law and a professionally-trained actor. He is a partner in the law firm of DeBlis Law.