Finnish company Nokia is not the telecommunications behemoth it once was. After selling its mobile phone division to Microsoft in 2014, Nokia is now focussed on other areas of business, one of which is a mapping service called HERE.
Even so, Nokia is a giant when compared with four-person London start-up Lowdownapp Ltd, which is the developer of a meeting manager app for iPhone called Lowdown. The app includes a function that tracks location, and enables the user to let people know when they have arrived for a meeting. This function is also provided in a small stand-alone app. The function within Lowdown, and the stand-alone app, were both named ‘HERE’.
No doubt you can see where this is going…
In January, Nokia sent Lowdownapp Ltd a ‘cease and desist’ letter, demanding that it change the name of its HERE app, on the basis that the name would confuse the public into believing that the app was part of Nokia’s own HERE range of products and services. Nokia has registered trade marks incorporating the word HERE, and claims that it has so far invested US$12 million in promoting the HERE brand.
Nokia may now be regretting the approach it took against Lowdownapp, which has resulted in a significant amount of adverse publicity. This is a particularly bad look for a company that wants to be seen as a leader in technology, and online services, and ought therefore to be more familiar than most with the workings of social media and the web.
Where did Nokia go wrong?
Nokia is entirely within its rights to protect its investment in HERE. But the very ‘traditional’ manner in which it has gone about asserting those rights has proven to be something of an own-goal, in terms of its public-relations. According to a statement published by Lowdownapp, the correspondence received from lawyers representing Nokia was 104 pages in length, and gave the start-up a deadline of 10 February 2015 to eliminate all traces of HERE from its apps.
Reaction to Nokia’s actions on social media has been generally critical, and reporting of the story (including by the BBC) has been broadly sympathetic to Lowdownapp. Most observers have been happy to take up the characterisation of Nokia as a ‘corporate bully’ and a ‘Goliath’ to Lowdownapp’s ‘David’.
The format of the letter prepared by Nokia’s lawyers will be familiar to many people who have been on the sending or receiving end of a ‘cease and desist’ demand over the past few decades. It opens by explaining that the firm in question acts for Nokia, followed by a brief overview of the client’s business, and its interest in the HERE brand. It then goes on to outline Nokia’s legal rights, complete with a list of registered trade marks and a discussion of its reputation and goodwill in the HERE brand. The letter then outlines the activities to which Nokia objects, explains the legal avenues available to Nokia, and concludes with a threat of court proceedings if Lowdownapp does not comply with Nokia’s demands by the specified deadline.
The remainder of the 104 pages is taken up with ‘annexes’ including evidence of Nokia’s trade mark registrations, its use of the HERE branding on its web sites, products and services, legal information, and a letter of undertaking to be signed by Lowdownapp.
Letters of demand in the ‘social media age’
This is how letters of demand have traditionally been written, and there may still be circumstances in which this is the best way to communicate the necessary information to an alleged infringer. A letter of this type may be entirely appropriate when, for example, the recipient is a larger company, and will initially be addressed by in-house general counsel.
But brand-owners need to bear in mind that we no longer live in a ‘traditional’ world. The days when it could be assumed that legal correspondence would remain private between the parties are long gone. It requires only a scanner and a few mouse clicks for a recipient to share a letter with the world. In this environment, a conventional, heavy-handed, legalistic approach will not always be the best option.
As Lowdownapp said in its statement, ‘all they needed to do was call us up, tell us about Nokia Here, then ask us to please change the name.’ Of course, it is easy enough for them to say this after the fact, but that is the point. When Nokia decided that the best way to address its concerns about the activities of a tiny start-up company was to have its lawyers prepare and send a 104 page letter of demand, it handed Lowdownapp the upper hand in how the action would be portrayed publicly.
It certainly could not have hurt to try saying ‘please’ before pulling out the big guns.
How Jack Daniels did it better
Faced with a similarly tricky problem back in 2012, distiller Jack Daniels adopted a different approach.
Author (and Jack Daniels aficionado) Patrick Wensink published a book called Broken Piano for President. The cover art was undoubtedly creative but, unsurprisingly (as the side-by-side images below demonstrate), was a cause of concern to Jack Daniels.
‘Captain Jack’, however, adopted a decidedly non-traditional approach. In a one-page letter, sent by an in-house trade marks attorney via email only, the company explained that while it was ‘flattered’ by Wensink’s affection for its brand, it hoped that he would also understand the importance of protecting it against dilution. It appealed to Wensink’s own interest, as an author, in effective protections for intellectual property.
And, on the basis that Wensink was a ‘Louisville neighbour’ and a fan of the brand, Jack Daniels made the very reasonable and non-onerous request that Wensink change the cover when the book was reprinted, stating that his response would be ‘appreciated’ by a specified date, ‘if possible’.
The were no long and tedious paragraphs outlining Jack Daniels’ rights under the law, no demands that Wensink destroy all existing copies of the book at his own expense, and no hard deadlines accompanied by threats of legal action.
To top it all off, Jack Daniels wished Wensink ‘continued success with his writing’.
The letter went viral on social media, and received global coverage. It resulted in huge positive publicity for Jack Daniels, and a significant boost in sales for Wensink’s book, the cover of which now looks like this:
That is what you call a ‘win-win’!
Conclusion – move with the times
Changing times, and changing technologies, call for changing approaches to protecting and asserting intellectual property rights.
There is little point in having exclusive use of a trade mark that is associated with a hated brand. It would be a rare case in which the public would take the side of the big guy caught out beating-up on the little guy. And in the modern world of social media, you have to assume that you will get caught out!
Jack Daniels clearly ‘gets it’. Maybe Nokia does not, but it should. The Finnish company is struggling enough already, without having to contend with being represented in the media as a big, clumsy, lumbering dinosaur!
It is also worth bearing in mind that even a letter of demand can be a reflection of your company’s values. If you are not a ‘corporate bully’, then do not behave like one. Ultimately, you may need to get tough on an unrepentant infringer, but maybe that is not the right way to start out.
And if your legal representatives do not seem to get what you are all about, and only know one way to do things, then maybe it is time to get a second opinion.