We sometimes write about overzealous cease-and-desist notices alleging intellectual property infringement.
Some of these are the classic ‘David v Goliath’ stories characterised by a poor, defenceless upstart being bullied into submission by a scary multinational.
Others are more nuanced than that.
But a recent case, in which the recipient’s lawyer stole the show, is a completely different beast altogether.
Short and sweet
This time the party on the receiving end of the infringement claim responded in style – a two-word response in fact – and gave the author of the letter some food for thought.
The Los Angeles Police Foundation (LAPF), via a lawyer for its representative IMG Worldwide, wrote to a company called Cola Corporation (not related to Coca-Cola) asking it to stop selling T-shirts bearing the slogan ‘Fuck the LAPD’ (LA Police Department).
The letter alleged various IP infringements of the foundation’s copyright and trademarks.
The original cease-and-desist letter was reportedly written with ‘DMCA Takedown notice’ in the subject. For those who don’t know, DMCA stands for Digital Millennium Copyright Act.
Cola Corp, via its lawyer Mike Dunford, sent an official response that simply read: ‘LOL, no’.
Of course, the ‘LOL, no’ response attracted plenty of attention on social media, and rightly so.
It was a clever response by Dunford, who succeeded in not only highlighting the lack of merit often found in these types of claims but also generated some good publicity for his client.
You could say it was unprofessional of a lawyer to treat a cease-and-desist notice with such withering disregard. You’d probably be right.
However, Dunford did send a (longer) follow-up response asking why his client shouldn’t seek attorneys’ fees from IMG for having to spend time responding to the takedown.
Presumably, this letter took a little longer to craft than the original response.
Useful pointers
The letter is well worth a read for its forensic dismantling of the original assertion.
Dunford wrote: “As you know, and I know, and every competent IP lawyer knows, the ‘C’ in DMCA stands for ‘copyright.’ Unsurprisingly, a valid DMCA takedown therefore requires a valid, good-faith claim of copyright infringement.”
However, he added, the LAPD does not – and cannot – own copyright for the acronym ‘LAPD’.
“Nobody does, and nobody can. It is black letter law that individual words and short phrases are not subject to copyright protection. We both know that. Students in Intro to IP classes know that.”
He added: “I simply cannot believe IMG hires attorneys so terrible at their job that IMG was unaware that its client did not have a copyright claim when it sent a DMCA takedown based, in part, on allegations of copyright infringement.”
Even if there was a valid claim for copyright infringement, the logo on the shirts, which is similar to the LA Lakers basketball team’s logo, could qualify as a parody under fair use.
As far as I know, the Lakers have not complained.
Though the wording is brutal (and there are plenty more quotable snippets), I think this is what is needed in some situations.
All too often, a simple cut-and-paste job alleging IP infringements is sent out to all and sundry. Most recipients probably bend to the assertor’s whim.
The response in this instance shows that this doesn’t always have to be the case.
Of course, we don’t know if IMG and the LAPF will respond and make another infringement case. But I wouldn’t be surprised if they now retreat.
Dunford, on the other hand, has scored a double win for his client. He has increased its (and his own) profile and shown others that cease-and-desist letters aren’t always something to worry about.
We may not necessarily see many more two-word responses to such letters, but Dunford’s detailed response will give some parties the confidence to stop and think whether a claim has merit.
