stopcease v.
1. To stop performing an activity or action.
2. To put an end to; discontinue.

desist v.
1. To cease doing something; forbear

Copyright and trademark protection is something that is near and dear to me. I live and breathe in a profession where theft of creativity, concepts, ideas and styles run rampant and free. Few of which ever exist in a tangible form.

Back in February of 2002, my friend Brandon and I were slapped with a cease & desist order for allegedly infringing on a very well-known copyright. I had almost forgotten about the letter until I recently read about something similar.

From what I can tell, there are these guys who run the pop-culture portal (for those web-saavy, gossip-hungry Minnesotans). The guys designed, produced and sold a t-shirt that read “Prairie Ho Companion” playing off of the very popular NPR show, Prairie Home Companion, which was created and performed weekly by Minnesota-native and author Garrison Keillor (as well as a feature film soon to be released – directed by Robert Altman). Well, shortly after the t-shirts went on sale, the guys got themselves a Cease & Desist letter from Mr. Keillor’s attorney. One of the guys from mnspeak called up Keillor’s attorney and tried to reason with them – to no avail. Keillor still wanted to pursue the cease & desist.

When I first read about this, my gut reaction was to side with the little guy. After all, they were just having some fun and not making any real money off the sale of the shirts. Heck, Keillor himself is a quasi-comedian and should be able to take a joke… but as I thought about it more, and put myself in Garrison Keillor’s huge shoes (I hear he’s a pretty tall guy), I could see how the name of something that has brought him such success and been so dear to so many people needs to be protected at all costs. Sure, an apology from mnspeak and immediate retraction of the shirts should end the whole thing if Mr. Keillor cares anything about his public image. You need to take every threat seriously to the continuity of something you not only care about, but care about enough to protect it under US Law. It’s easy to sit back and tell Garrison to learn how to take a joke, but what those people don’t realize is how slippery a slope copyright infringement is. If you let one go and then another one, soon the meaning and impact of what you have copyrighted no longer exists.

So, back to our story…
Brandon got a cease & desist letter from an LA attorney representing the Academy of Motion Picture Arts and Sciences. Never heard of them? Well, ever hear of the Academy Awards? The Oscars? Yeah, those guys. The backstory goes something like this. Our quaint group of friends in Manhattan began getting together annually for an “Oscar Party” where we had a rough spreadsheet in Microsoft Excel into which we would all vote on the major award categories. We would view the Academy Awards on television and whoever did the best would get a fake Oscar statue and have to give an acceptance speech in front of everyone else. Winners get to keep the statue for a year and then present it to the new winner the following year. Yeah, we’re dorks, but the food and wine is always good! Anyhow, this soon evolved into a full-fledged website where we could enter our votes in online before arriving at the party. We registered the domain name Brandon did the back-end database and I designed the website. It was wonderful. We even opened the voting fun to the public. It was a hit. And a truly unique idea for the internet (which most credit goes to Brandon). But, then we got the letter:

We are writing with regard to your registration and use of the domain name OSCARVOTER.COM… In light of the strength of the Academy’s mark and your commercial use… since you have no right to use the domain name… it is likely that a court would find that you have registered OCARVOTER.COM in bad faith… based on the foregoing, the Academy must request your written assurance that you will immediately (1) delete your registration for OSCARVOTER.COM (2) halt construction on any and all web sites incorporating the Academy’s marks or any colorable imitations thereof…

We could have fought this, I believe, and won. You see, we were not using the website commercially. We had absolutely NO income from this site. No money was exchanging hands. There was no COMMERCE taking place. We lost whatever money was put into it. But you know what, even though it seems so silly that an organization as powerful and popular as the Academy would feel threatened by our website, it doesn’t take away from the fact that they had every right to theaten us to stop. The “Oscar” is a powerful symbol in their industry and they don’t want two yahoos out East messing with it.

Though we feel we could have won, the time, energy and money it would have cost us would have been hardly worth it. And the big guys know this too well. So, we removed OSCARVOTER and reinvented it the next year under a new domain name – one that didn’t “incorporate the Academy’s mark or any colorable imitations thereof.” Oh, the kicker is the following year the Academy’s website had a voting system in place for their visitors that had an eerie similarity to the one they made us remove – yet very poorly imitated. The word “counter-sue” did cross our minds once or twice…

Aside: the Prairie Home Companion feature film, due out in 2006, not only stars Garrison Keillor, but has an all-star cast including Woody Harrelson, Tommy Lee Jones, Kevin Kline, Lindsay Lohan, Virginia Madsen, John C. Reilly, Meryl Streep, Lily Tomlin and Robin Williams (among others).