Cease and Desists: A Race You Always Want to Run, but Don’t Always Want to Win
Art collective MSCHF, well-known for their pranks on brands and the very idea of branding, was at it again this week. They are most famous for their “Satan Shoes” stunt in March 2021, when they collaborated with Lil Nas X to create a modified pair of Nike Air Max 97 sneakers replete with satanic imagery, ultimately resulting in a lawsuit by Nike, in which MSCHF quickly capitulated. This week, they launched the “Cease & Desist Grand Prix,” in which they offered for sale racing jerseys each printed with the famous logo of one of eight different large companies (Walmart, Walt Disney, Starbucks, Coca-Cola, Tesla, Microsoft, Subway, and Amazon). MSCHF was, as always, very public about their deliberate infringement, deliberately provoking a response from each brand-owner, and by promising hats to purchasers of the first infringing shirt to receive a cease-and-desist letter from counsel for the brand, allowed buyers to bet on which company would respond first.
Within a day, counsel for Subway had sent a Cease and Desist letter (humorously referenced by Subway on its own Twitter). Whoever bought the Subway-branded shirts will be receiving hats, MSCHF got to poke fun at lawyers and brand-owners, and Subway possibly got some social media engagement in the process.
The Cease and Desists Race
This stunt is an excellent lesson for brand-owners and their counsel. While it is absolutely critical to stop infringements, and even “lighthearted” uses of a trademark should be addressed, we should always remember that, just as trademarks and brands are the public face of a company, how a company goes about protecting them is a vital facet of public relations. MSCHF, in mocking brand-owners’ ongoing attempts to prevent free-riding infringers (or worse, inferior products that could seriously damage a brand’s reputation), was speaking to a common public perception of brand-enforcement techniques as heavy-handed or overly aggressive. Subway deftly handled both the infringement and that criticism by adopting the same lighthearted tone as MSCHF.
No one response fits every infringement. Sometimes a form letter is appropriate, sometimes more aggressive steps are called for, and sometimes a less-formal note is the best course of action. It’s not just the size of the infringement, but the nature of the infringer and how your actions will look to your customers and the public at large. Nobody likes a bully, after all.
When deciding how best to protect your brand or address an infringing use, you need lawyers who not only know the law, but will take the time to understand your business and the public relations importance of your enforcement.