Cease and Desist, Dilly Dilly!
I’ve written previously about cease and desist letters (also known as letters before action) regarding Taylor Swift and Netflix: as evidenced in these two instances, the standard legal documents can be ridiculous, cheeky, or even rather funny. But Budweiser recently took things to a whole new level when it used a medieval town crier to deliver a cease and desist handwritten scroll to Modist, a Minnesota brewery.
American beer company Budweiser launched Game of Thrones-like commercials set in the middle ages, with lords and ladies in authentic(ish) costumes repeating the nonsensical phrase “Dilly Dilly!” In one commercial, banquet invitees approach the king and queen to offer gifts. One man presents a six-pack of Bud Light to the king, who then exclaims, “Sir Jeremy, you are a true friend of the crown. Dilly Dilly!” The members of the royal court then all raise their Bud Lights in response, shouting “Dilly Dilly!” in approval. When the next guest presents a spiced honey mead wine instead of a Bud Light, the king tosses him into the pit of misery.
Inspired by Budweiser’s cryptic but popular catchphrase, Minneapolis microbrewer Modist Brewing Company produced a “Dilly Dilly Mosaic Double IPA.” But as “Dilly Dilly” is trademarked and Modist were using the phrase without consent, Bud Light took action to protect its intellectual property… by sending a guy in a medieval town crier’s costume to Modist’s offices, where he read the cease and desist letter off of a handwritten scroll (video).
The decree from Budweiser stated: “Let it be known that we believe that any beer that is shared between friends is a fine beer indeed and we are truly flattered by your loyal tribute. However, ‘Dilly Dilly’ is the motto of our realm, so we humbly ask that you keep this to a limited edition, one-time only run. This is by order of the King. Disobedience will result with additional scrolls,” the missive cautioned. “Then, a formal warning. And finally, a private tour of the pit of misery.”
According to the Chicago Tribune, this creative spin on the cease and desist letter was well received by Modist. “There’s so many brewery names and beer names out there, and we try to resolve it short of suing each other. Budweiser did it in a funny way and protected their mark. I thought it was a really cool way of handling it.”
Of course, a typical cease and desist letter is unlikely to be humorous, let alone read from a scroll by an actor. But for any rights owner considering an intellectual property infringement or passing off case, the practical considerations are likely to be the same.
Firstly, the potential claimant must ascertain and demonstrate that they have valid rights to the intellectual property in question. In respect of trade marks, if the mark is potentially too generic or descriptive, the claimant may be required to prove that the rights were validly registered in the first place, which is likely to be expensive. Any rights owner is encouraged to keep records of relevant advertising, positive press, and consumer reputation regarding the goods or services covered by the trade mark.
Secondly, a claimant must gather evidence of the infringer’s activity. When bringing a claim before the Intellectual Property Enterprise Court in the United Kingdom, the claimant will need to plead the evidence in the particulars of claim. Evidence could include trap purchases of counterfeit goods, or emails from a consumer who is confused between the goods offered by the claimant and the infringer.
Once satisfied that the infringer is indeed using protected intellectual property without consent, the claimant must then consider their desired outcome. This will influence the strategic approach of the action, to include the tone of correspondence and fees management.
Under English law, as part of the civil procedure rules a claimant has the duty to approach potential defendants and set out the dispute clearly. It is best practice to attempt to settle the matter without litigation if possible, for example by entering into a trade mark co-existence agreement.
For Budweiser, they could have easily chosen to seek damages or costly litigation against Modist. Instead, the PR generated by the scroll was both a deterrent to other infringers, as well as a promotion of Bud Light as a funny, relaxed, and approachable brand.