Cease-and-Desist Letters: How to Protect Your Brand without Alienating Customers

As Fortune reported,

"Actor Bill Murray is in hot water with the Doobie Brothers for using their 1972 hit "Listen to the Music" in commercials without the band's permission. Normally, such disputes result in a quiet legal settlement - but not this time."

Murray, who is well-known for his role in the golf movie Caddyshack, used the music in ads for his line of “Zero Hucks Given” golf shirts.

"We’d almost be OK with it if the shirts weren’t so damn ugly,” wrote the lawyer for the Doobies.

A “cease-and-desist” letter is often the opening volley in a copyright infringement case. It alerts the alleged infringer to the claimed infringement and demands that the infringement “cease.” Often, such a letter will threaten legal action if the infringer doesn’t “desist.”

However, a cease-and-desist letter isn’t the “magic wand” that some people seem to think it is. It doesn’t force the recipient to do anything, and the infringer may simply ignore it.

In order for a cease-and-desist letter to have “teeth,” it has to be followed up with the filing of a lawsuit for copyright infringement.

If the defendant ignores one or more cease-and-desist letters and continues to infringe, that can be used as evidence that the infringement was “willful,” which can lead to damages being trebled.

Bill Murray (and/or his business and legal team) certainly should have known that it’s not OK to simply use someone’s music in an ad without a license, and the Doobie Brothers were fully justified in sending the cease-and-desist letter.

However, Murray is a widely-loved actor, and threatening legal action could have backfired against the Doobies, leading to bad publicity, accusations of bullying, and even boycotts.

In 1989, as Snopes reported, the Walt Disney Company discovered that three Florida day care centers had large images of trademarked Disney characters like Mickey Mouse painted on their walls. Disney threatened to take the centers to court, but they removed the drawings.

Disney’s competitors, Universal Studios Florida and Hanna-Barbera Productions, offered to let the day care centers use their images (such as Scooby-Do and Yogi Bear) for free, and even held a special ceremony at the redecorated day-care centers as a publicity ploy. So in that case, the cease-and-desist letters backfired.

In contrast, the Doobie Bros. lawyer made his point with some good-natured insults:

"This is the part where I’m supposed to cite the United States Copyright Act, excoriate you for not complying with some subparagraph that I’m too lazy to look up and threaten you with eternal damnation for doing so. But you already learned that with those Garfield movies. And you already know you can’t use music in ads without paying for it."

As a result, the cease-and-desist letter went viral -- but not in a way likely to damage the reputation of the Doobies.

The lawyer for Murray’s shirt company responded in a similar vein, as USAToday reported, offering a selection of the “least offensive” shirts in the line by way of a settlement.