Intellectual Property Attorney

Developing an Intellectual Property Enforcement Strategy (Part IV of V) – Avoiding the Perception of Being “Heavy Handed”

As discussed in Article III of this series, one of the central issues facing intellectual property rights holders in the mass media and entertainment industries is how to avoid alienating fans by being perceived as “heavy handed” when enforcing intellectual property rights. Here too, a well-thought out enforcement strategy can be invaluable in helping a rights holder identify when to be aggressive or when to take a “softer” approach.

Many rights holders find it helpful to adopt a “sliding scale” in evaluating how aggressively they respond to unacceptable activity. Such a sliding scale calls for a more aggressive approach the more “culpable” the unacceptable activity appears. Conversely, a sliding scale approach calls for a more nuanced approach in dealing with a fan who may have unknowingly “crossed the line.”

For example, many rights holders are particularly disturbed by adaptations featuring racism, violence or sexually explicit material – potentially calling for a more aggressive enforcement approach. For example, the BBC reported that J. K. Rowling, creator of the HARRY POTTER® franchise, gave her blessing to fans to write their own stories featuring characters from her books. However, the BBC further reported that Ms. Rowling’s literary agency said that such fan-writing could not contain obscene material. Having such pragmatic restrictions both protects the brand and goes a long way towards helping the fans understand and embrace your intellectual property enforcement strategy.

Even something like sending a cease and desist letter can be done using this sliding scale approach. Under such a model, an “aggressive” or a “friendly” cease and desist letter can be sent as circumstances warrant.

An excellent example of this latter approach (albeit from a brand primarily outside the mass media and entertainment industries) comes from a cease and desist letter sent on behalf of the JACK DANIELS® brand in response to a book cover self-evidently modeled after the JACK DANIELS® whiskey bottle label. In this letter, counsel for the JACK DANIELS® brand wrote:

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 … we would be willing to contribute a reasonable amount towards the costs of doing so.

What could have become a public relations nightmare had the company been arguably “overaggressive” was, instead, picked up and positively covered by such media outlets as Business Insider, Forbes and the Huffington Post which variously referred to the letter as “classy” and “the nicest cease-and-desist letter ever.”

This real-world example illustrates how a thoughtful and pragmatic intellectual property enforcement strategy can transform a difficult situation which potentially jeopardizes a brand’s rights into something positive.

Grimes LLC has developed a reputation as a world leader in successfully helping clients build, protect and monetize intellectual property. If your company wants to balance intellectual property protection with fan engagement, call us today for a free consultation.

Click here to return to Article I in this series: “Balancing Fan-Engagement with Intellectual Property Protection.”

Click here to return to return to Article II in this series: “Articulating an Intellectual Property Enforcement Strategy.”

Click here to return to return to Article III in this series: “Exercising Prudence in Intellectual Property Enforcement.”

Click here to explore Article V in this series: “Recapturing and Monetizing Fan-Generated Content.”

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