Fender follow up comment

As promised in the original article, we now have a further update in what has become an example of intellectual property enforcement strategy running away from a brand owner that we have got to witness in the public forum in real time.

Recent reports suggest that more than 60 cease and desist notices were issued by Fender, extending beyond guitar manufacturers to distributors, retailers and even online marketplaces such as Amazon. At the same time, Bud Cole, Fender’s CEO, has publicly acknowledged that aspects of the company’s approach could have been handled differently and confirmed that its focus has shifted away from boutique builders, which cause the initial public backlash, and towards larger manufacturers and commercial operators.

Cole’s explanation that the cease and desist programme was intended to “begin conversations” is particularly interesting when viewed through the lens of brand enforcement strategy. Using correspondence to open discussions and seek commercial resolutions long before litigation becomes necessary is a wholly acceptable strategy. However, the way those conversations are initiated can have a significant impact on public perception.

A useful UK comparison is Marks & Spencer’s handling of its intellectual property disputes. The high-profile Colin v Cuthbert dispute generated widespread public engagement, with Aldi successfully framing itself as the underdog and victim of brand despite the actual legal issues in the dispute. Subsequent enforcement action by Marks & Spencer took place against the backdrop of that public reaction and served as a reminder that legal strategy and communications strategy are often inseparable. M&S notably took a much friendlier and softer approach when dealing with infringement action by an ice cream vendor.

The apparent recalibration of Fender’s own approach, moving away from boutique builders and focusing on larger manufacturers and commercial operators, may reflect a similar lesson. Whilst cease and desist letters are often intended to start conversations, there is a fine line between opening a dialogue and creating a narrative that others can control.

For businesses, this reinforces a point made in our earlier article. Enforcement is rarely just a question of whether rights exist. It is equally a question of who is being targeted, how those rights are enforced and the wider commercial consequences of that approach. Whilst Fender appears to have secured agreements with several manufacturers, it has also faced significant scrutiny from customers, industry participants and commentators, prompting this public announcement of an adjustment in strategy. This is whilst litigation with larger players such as Thomann continues.

As a reminder the dispute is noteworthy because the underlying copyright position is still largely rooted in an uncontested German judgment. As proceedings against better-resourced opponents who will actively engage in the legal process progress, the litigation itself may ultimately prove more significant than the original decision.

For rights holders, the key lesson remains unchanged. Successful IP enforcement strategy requires not only strong legal rights, but also careful consideration of commercial relationships, reputational impact and long-term business objectives.

If you’d like to discuss your IP enforcement strategy, brand protection programme or the practical considerations that come with large-scale enforcement campaigns, our Intellectual Property team would be happy to help.