Picture this. You are the owner of an up-and-coming marketing agency. You recently wrapped up a design and identity project for one of the city’s fastest growing tech start-ups, DigiBerry. The company makes digital pastries that people can share across social networks as part of messages or shared content (don’t ask me why it’s cool, it just is!). As part of the project, you created a series of icons, fanciful pastry designs, a website, print collateral, and a series of short animated videos that users of DigiBerry’s app can send to acquaintances within their social network. DigiBerry LOVED it. The local design scene LOVED it. In fact, they asked you if they could feature the design in next month’s Marketing Greatness magazine. Flattered, you accept the invitation and submit copies of the logos you created for DigiBerry and images from some of the designs. Feeling like you’re on cloud 9, you decide to feature DigiBerry on your website and in a “featured work” brochure that you are preparing for the annual national marketing conference in New York.
All is going great. Then on the eve of the big story release in Marketing Greatness and your appearance at the conference, you get that dreaded white legal-sized envelope that most business owners have nightmares about: the cease and desist letter from the law firm of Ware Biggar Zhan Yu. Client has hired the firm and is accusing you of trademark infringement, unfair competition, and copyright infringement. They demand that you remove all logos from your website and destroy any materials that include client’s logos, name, or the designs you prepared for them. Having already prepared the materials, what are you to do?
All is going great. Then on the eve of the big story release in Marketing Greatness and your appearance at the conference, you get that dreaded white legal-sized envelope that most business owners have nightmares about: the cease and desist letter from the law firm of Ware Biggar Zhan Yu. Client has hired the firm and is accusing you of trademark infringement, unfair competition, and copyright infringement. They demand that you remove all logos from your website and destroy any materials that include client’s logos, name, or the designs you prepared for them. Having already prepared the materials, what are you to do?
First, contact an attorney. Pronto. Responding to cease and desist letters is more of a science than people might realize. After all, there are things you should avoid saying (so as not to implicate yourself in other claims the client-company may have against you). Also, you may have certain defenses that should be placed in any response letter you send. From the point that you receive the letter from the client-company, any responses you pen will be part of the record and could be used against you later. So if you don’t respond properly (“Alright, you got me: I did it!” is not an appropriate response), you could wind up getting yourself into even more trouble.
Attorneys tend to be expensive and some people hesitate even talking with them (even though many are glad to at least hear your story before they start the time clock). If you can’t afford to retain an attorney to write the response letter for you, there are things you can and should do before just shutting everything down (which may signal to the other side that you accept their charges). Just like Columbo, you have to ask the key questions: what, when, where, why, and how. Look into the person making the claims in their letter and the basis of their rights. In intellectual property, claims of infringement require some showing of ownership of the underlying rights. Fortunately, information about I.P. ownership can usually be found through public information sources like the U.S. Patent and Trademark Office. For example, does DigiBerry even have a trademark registration for the logos and words that it is accusing you of wrongfully using? Lack of a trademark registration doesn’t necessarily mean that DigiBerry has no trademark in the disputed phrase (after all, there are common law trademark rights). Also, DigiBerry may have signed some sort of contract with your agency, giving it the opportunity to use DigiBerry’s trademarks for limited purposes. The same permissions may apply to screenshots or images your agency provided to Marketing Greatness. There may also not be any likelihood of confusion in your use of the client’s logos. For example, if you are just using the client’s logo on a page talking about former clients, you may not be in the wrong.
If, after looking into DigiBerry you think there is something to its claims, you want to carefully make the changes to each marketing piece that uses the images and logos in question. The website change, fortunately, might be fairly easy and inexpensive to orchestrate. A simple email to the webmaster or maybe even a few tweaks performed by the design agency itself will do the trick. The brochures and the news article being physical publications may be harder (or impossible) to roll back. Certainly, retracting both will harm the reputation of your agency among other clients and will be quite expensive. To avoid hits to both your image and wallet, you may try talking things out with DigiBerry if the relationship hasn’t deteriorated terribly. For example, you might consider working out some kind of settlement with DigiBerry that allows you to use its trademarks and the images you created. In return, you could provide DigiBerry with some terrific exposure on your own website and through the Marketing Greatness piece.
In this case, fortunately for the agency, DigiBerry was pretty civil and did not bring suit before notifying the agency of its infringement. Sometimes, disputes between a design agency and a client-company can be so heated that the client simply sues the agency. To be sure, such suits may be brought out of desperation and may find the plaintiff in a weak and vulnerable position themselves (perhaps the trademark that the company is claiming is weak and cannot be supported, or the company hasn’t paid the agency completely for the work performed). However, such a route can create tremendous expenses for the marketing agency that has to fight the claims made by the client-company.
The moral of this story: When in doubt, seek permission to use somebody else’s logos or name, especially if you are using them to promote your products and services. Permission may not be necessary in every case (either because that somebody else does not in fact have any trademark rights or because your use of their logo doesn’t actually harm them economically), but you might avoid receiving a cease and desist letter and dealing with all of the headaches that come along with fighting that.
Attorneys tend to be expensive and some people hesitate even talking with them (even though many are glad to at least hear your story before they start the time clock). If you can’t afford to retain an attorney to write the response letter for you, there are things you can and should do before just shutting everything down (which may signal to the other side that you accept their charges). Just like Columbo, you have to ask the key questions: what, when, where, why, and how. Look into the person making the claims in their letter and the basis of their rights. In intellectual property, claims of infringement require some showing of ownership of the underlying rights. Fortunately, information about I.P. ownership can usually be found through public information sources like the U.S. Patent and Trademark Office. For example, does DigiBerry even have a trademark registration for the logos and words that it is accusing you of wrongfully using? Lack of a trademark registration doesn’t necessarily mean that DigiBerry has no trademark in the disputed phrase (after all, there are common law trademark rights). Also, DigiBerry may have signed some sort of contract with your agency, giving it the opportunity to use DigiBerry’s trademarks for limited purposes. The same permissions may apply to screenshots or images your agency provided to Marketing Greatness. There may also not be any likelihood of confusion in your use of the client’s logos. For example, if you are just using the client’s logo on a page talking about former clients, you may not be in the wrong.
If, after looking into DigiBerry you think there is something to its claims, you want to carefully make the changes to each marketing piece that uses the images and logos in question. The website change, fortunately, might be fairly easy and inexpensive to orchestrate. A simple email to the webmaster or maybe even a few tweaks performed by the design agency itself will do the trick. The brochures and the news article being physical publications may be harder (or impossible) to roll back. Certainly, retracting both will harm the reputation of your agency among other clients and will be quite expensive. To avoid hits to both your image and wallet, you may try talking things out with DigiBerry if the relationship hasn’t deteriorated terribly. For example, you might consider working out some kind of settlement with DigiBerry that allows you to use its trademarks and the images you created. In return, you could provide DigiBerry with some terrific exposure on your own website and through the Marketing Greatness piece.
In this case, fortunately for the agency, DigiBerry was pretty civil and did not bring suit before notifying the agency of its infringement. Sometimes, disputes between a design agency and a client-company can be so heated that the client simply sues the agency. To be sure, such suits may be brought out of desperation and may find the plaintiff in a weak and vulnerable position themselves (perhaps the trademark that the company is claiming is weak and cannot be supported, or the company hasn’t paid the agency completely for the work performed). However, such a route can create tremendous expenses for the marketing agency that has to fight the claims made by the client-company.
The moral of this story: When in doubt, seek permission to use somebody else’s logos or name, especially if you are using them to promote your products and services. Permission may not be necessary in every case (either because that somebody else does not in fact have any trademark rights or because your use of their logo doesn’t actually harm them economically), but you might avoid receiving a cease and desist letter and dealing with all of the headaches that come along with fighting that.
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