Yesterday afternoon, the internet exploded when a custom gunsmith posted a cease and desist letter he received from Smith & Wesson’s outside counsel to instagram. Here are screencaps of the entire letter (more below the jump):
Needless to say, the response from the internet was fast and savage. S&W’s social media feeds were bombarded with comments from end-users; and there was also a considerable amount of confusion regarding the issue. To help clear that up, here’s a bit of legal analysis from an actual lawyer, Annette Evans:
So we have here Apex, who at their own cost (from what I understand) offered gunsmithing services to keep competitors’ S&W M&P guns running at the S&W title match – IDPA Indoor Nationals – when S&W wouldn’t or couldn’t. Brownells, who really needs no introduction. Some other fine companies making modifications that make people want to buy more M&Ps, and they hire someone from an expensive outside law firm, whose representative list of client industries doesn’t include firearms or manufacturing, to write this flaming pile of [censored], sent out three days before Christmas and imposing a deadline that will be close to impossible to meet (not to mention ruinously expensive) given the holidays? And that’s giving them the benefit of the doubt on the typo for the response deadline.
I take the point that the “Dream M&P” was announced just on Friday (and I’m willing to bet at least a few associates’ weekends were ruined over this), but it’s not like most of these companies don’t have a history of providing a large and popular line of aftermarket accessories and modifications….and in fact, the overreaching demands go far beyond the “Dream M&P” that apparently brought S&W’s hammer down, to products that S&W can’t possibly argue that they weren’t aware of in the past and indeed, they have acknowledged Apex’s work in particular in their own marketing materials (see http://www.smith-wesson.com/…/BallisticIssue001_SW_58…)
AND this C&D is essentially to argue trademark confusion? Against companies that have arguably raised the perception of the brand (unless you want to count the fact that Apex has made any factory trigger S&W put on the M&P a joke) and who S&W has had ample opportunity to partner with? From companies whose general audiences are tinkerers, i.e., people who buy something and put flair on it?
AND if S&W wants to be consistent about this, where are their C&Ds against ATEI? SAI? Saying you have to act to preserve your rights in your marks (a la Kleenex or Thermos’s failure to do so and subsequent genericization) is weak.
First salvo out from outside counsel is ridiculous. This should have been handled by a phone call by senior executives requesting that it be made clear S&W was not a sponsor/supporter and/or a letter from in-house counsel. And long before this, S&W should have been working on partnering with Apex in any case.
See also: Streisand effect.
Annette Evans is an attorney in the Philadelphia area who has been practicing as in-house commercial counsel for over six years, and was previously in private practice doing transactional work. She is currently the lead attorney for a global specialty research services company.
This morning, S&W and Brownells have released a statement on the issue:
James Debney, President and CEO of Smith & Wesson, said, “I would like to clarify that we fully support the Brownells Dream Guns® Project and we appreciate that it showcases the many ways in which our customers – loyal fans of our M&P brand – can choose to customize their M&P firearms. Our decision to contact the companies that worked on the project was intended to protect the trademarks that support the M&P brand. When a product bears the Smith & Wesson and M&P trademarks and is purchased new with our lifetime service policy, we want to be sure that the consumer knows it has passed our demanding quality standards. In our efforts to protect that promise and to preserve the brand that we and our customers cherish, we did not fully understand the intent of the Dream Guns® Project and we overlooked the opportunity to convey our enthusiasm for the creativity and innovation that Brownells and all of the companies involved have demonstrated. We look forward to seeing the firearm on display at the upcoming SHOT Show in January and at the NRA in May.”
“I have spoken with James Debney, President of Smith & Wesson, who called me regarding the M&P® Brownells/Apex Dream Gun™,” said Matt Buckingham, Brownells President. “It was a simple misunderstanding about the intention of the project. He made it clear that Smith & Wesson is excited to have their product featured in this fun and unique way. For our part, we are honored to include it in our Dream Gun lineup. Smith & Wesson is a legendary brand in this industry and we continue to be proud partners with them.”
Before S&W released this statement, rumors had begun to circulate that the C&D letter was sent due to a misunderstanding of the nature of the Dream Gun project, and it appears that was actually the case.
I am glad to see S&W releasing a statement clearing this mess up, as the potential fallout from this would have been considerable. Can you imagine the can of worms it would have opened up if suddenly major manufacturers were threatening every custom gunsmith that worked on their pistols with legal action? Glock vs. Lone Wolf, Colt vs. 1911 smiths, it would be utter chaos.
Again, I’m pleased to see Smith & Wesson stepping out and clearing this mess up.
I think this is the problem we get into when firearms companies are owned by big conglomerates that know nothing about firearm manufacturing. Some lawyers seeking to make a lot of money just screw things up and make life difficult for everyone. Did S&W really think that no one works on their M&P’s let alone all the revolvers made over the years? Give me a break.
Just a correction.
Smith & Wesson isn’t “..owned by big conglomerates..”. Its a stand-alone company.
Smith & Wesson does appear to have a problem with their legal department running roughshod over their customer’s interests. I remember being told a year or so ago that their (in-house) attorneys have prohibited the sale of replacement M&P barrels (oops!! am I going to get a C&D letter for using their mark?) unless they’re installed at the factory (for a fee).
When “risk management” becomes a company’s primary focus you know there’s a problem.
Unfortunately that is what this country has become as a result of “political correctness,” and the litigious nature of our society.
A lawyer’s dream come true!
“I am glad to see S&W releasing a statement clearing this mess up, as the potential fallout from this would have been considerable. Can you imagine the can of worms it would have opened up if suddenly major manufacturers were threatening every custom gunsmith that worked on their pistols with legal action? Glock vs. Lone Wolf, Colt vs. 1911 smiths, it would be utter chaos.”
That’s just an ignorant statement. Colt can go pound sand. They don’t own the 1911 style of firearm nor do they have any protective rights over it, it’s modification, or its cloning.
Bobby, if you’d read the actual cease and desist letter, you’d see that it was sent over trademarks. As in logos. So it would be in the scope of the letter for Colt, as an example, to go after a 1911-smith who worked on Colt guns because they still have the Colt trademark on them. It has actually nothing to do with the pistol itself, but rather the branding.
Caleb, and that makes it even sillier!!
How many Custom 1911’s out there still have the Colt Roll Marks still intact!!
I just Customized two nasty & rusty Series 70 Pistols and the Gunsmith did a great job to keep the Roll Marks intact!!
No, Caleb, the C&D letter was not limited to logos. It cited several allegedly infringing acts beyond the logos, including the customizations themselves, and did so on very thin legal grounds. The claimed legal case citations were not applicable here at all.
There was a misunderstanding but it wasn’t from S&W misunderstanding the project. This has all the signs of a new and incompetent corporate counsel in S&W.
That might soon become “FORMER” Corporate Counsel in S&W!!
Are these the same S&W “demanding quality standards that gave me a pistol that shoots 6” groups off a rest at 12 1/2 yards and leaves me hoping that the Apex barrel can fix the problem?
This is just posted.
Smith and Wesson’s corporate leadership needs to focus more on real problems such as quality control and less on imagined trademark infringement by manufacturers and distributors of aftermarket parts. If I were a SWHC shareholder, I would demand answers on who’s responsible for wasting corporate time and effort on this ridiculous cease and desist order, how much corporate profit was squandered on attorney fees related to the order, and what effect this latest PR debacle will have on SWHC stock prices and investor return,
Sounds like a culture of asleep at the wheel upper management persists at S&W; first the quality control debacle with M&P pistols that amounted to pissing away millions in lost LE sales revenue; now this embarrassing incident targeting Apex and other small businesses that give shooters a reason to still want a S&W firearm.
Maybe someone in S&W corporate management should devote time and resources seeking an answer as to why customers (such as myself) have to spend another 160 bucks on an Apex trigger group for their pricey M&P Pro Series C.O.R.E. pistol that should have left their “Performance Center” with a great trigger in the first place.
Good grief. One has to look at the role of Ballard Spahr for this to some measure. That’s a big, white shoes, law firm. Its easy to imagine the possibility some of the lawyers got a little too misty eyed at the prospect for racking up some billable hours near year end when the bonuses are calculated and went off half cocked. Big law continues to generate big black eyes for their clients. Many businesses have started spreading legal work to smaller boutique firms and solo lawyers who left big law for more client focused practices. In my opinion, it is incumbent on a lawyer to ask the follow up questions and do the minimal internet research that would have revealed how poorly this letter would have gone over. S&W will lose customers over this and that’s unfortunate.
I had planned on getting a new Smith for the holidays. I don’t think this apology is sincere and will probably buy a Ruger now.
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