When a cease & desist letter backfires by Stewart McKelvey and Marc Belliveau, May 12, 2013, Lexology
Often when a work of art or a logo is appropriated by a rogue for an ulterior purpose, the owner of the intellectual property wants to exercise their legal rights as quickly as possible, almost reflexively, to curtail the use and potential harm caused by such use, typically in the form of a cease and desist legal letter warning the unauthorized user that serious consequences will happen unless they stop forthwith. But such a letter can draw more attention to the rogue and cause even more harm to the owner. Such a case recently occurred in New York when an environmental artist used the iconic and very popular “Smokey The Bear” image to protest hydraulic gas fracturing, commonly known as “fracking”. In the appropriated image, Smokey’s hat states “NO FRACKING” and the slogan underneath the bear’s face manipulates the well-known tagline “ONLY YOU can prevent FAUCET FIRES”. The artist’s parody went “viral” on the web (or spread like wildfire to stay with the “meme”) and international sales of t-shirts, tote bags and patches displaying the parody grew quickly. In response, the U.S. government agency with oversight on Smokey The Bear, through its legal counsel, sent the artist a cease and desist letter threatening six months in jail and $150,000 in penalties under the 1952 Smokey Bear Act, among other possible intellectual property claims. The deadline to halt use and marketing of the offending image and slogan came and went, yet sales continued to climb. Then the press got hold of the dispute and turned it into a constitutional free speech and copyright fair use story. In the 1990s, a similar situation took place when Smokey The Bear’s image was used to protest the U.S. government’s forestry practice of auctioning off land to timber companies for commercial exploitation; the then slogan was “Say it ain’t so, Smokey”. That dispute ultimately went to court and it was found that the satirical use of the famous image to criticize forest management was unlikely to cause confusion or dilute the value of the mark. So there was legal precedent to conclude that a cease and decist letter and a traditional litigation approach would likely not be effective to stop the satire in the recent fracking situation.
In Canada, our Copyright Act was amended in 2012 to confirm and enshrine into Canadian law two new categories of “fair dealing” user rights, namely parody and satire. The statutory amendment had the welcome effect of reversing an old (and arguably flawed) Federal Court decision, Michelin v. CAW, which had rejected both fair dealing and freedom of expression defences in relation to claims of copyright and trade-mark infringement. In that case, the defendant union, who was trying to organize local workers of Michelin in Nova Scotia, handed out pamphlets to employees using the Michelin corporate logo in a demeaning manner, somewhat like the Smokey The Bear incident in the U.S. involving the anti-fracking protest. Such satirical and parody expression is now clearly back in the public domain in Canada and, depending on the facts of each case, no intellectual property grounding exists, whether under the Copyright Act or the Trade-marks Act, to give any real teeth to a cease and desist letter. It may be better to consider alternatives to litigation to mitigate the potential harm caused by the parody or satire. While it’s true that cease and decist letters can have a strong deterrent effect on a rogue, if it is only a bluff without a solid legal foundation, the sender loses much credibility and the recipient capitalizes even more on the “culture jamming” purpose of the satire or parody by waving around the ineffective cease and desist letter. [Emphasis added]