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"There are any number of alternatives to Antarctica such as skiing or being in space."

Since the release of the first book by Penguin, I am occasionally asked for advice regarding the publishing industry. Which is like asking a five-year-old child to explain Gene Ray’s Timecube theory. I generally just wing it and see what happens; regardless of the outcome, it is usually at least interesting and there is far too much wank involved to take it seriously.
The decision not to publish the second book with Penguin was based on timing, not on any dissatisfaction. Working with a large publisher like Penguin has benefits, such as a marketing budget, but the process from initial contract to release of royalties is. so. slow.
When the second book was released a couple of weeks ago, the cover featured a penguin giving the finger. It ambiguously made sense with the title, was cute, and... I had no marketing budget.




From: Donald Snadek
Date: Wednesday 14 March 2012 3.23pm
To: David Thorne
Subject: Trademark Infringement

Dear Mr. Thorne:
Your use of our Penguin mark on the book’s cover and your website is an infringement of our trademark. Our parent company, Pearson plc, and our affiliate, Penguin Books Limited, which is the registered owner of the mark, demand that we strictly enforce our trademark rights. We therefore must insist that you immediately remove all images of the book’s cover from the Internet, and that you also immediately cease selling copies of the book with that cover.
Please confirm in writing that you will take the required steps by no later than Friday, March 16, 2012. This is not an idle threat. If you don’t comply, we will take legal action against you, which will include seeking recovery of our attorneys’ fees.
Donald K. Snadek
From: David Thorne
Date: Thursday 15 March 2012 10.18am
To: Donald Snadek
Subject: Re: Trademark Infringement

Dear Donald,
I have received your email in regards to the infringement of Penguin’s trademark. The image was chosen as it related to the arctic environment implied in the title and not meant to imply any umbrage with Penguin or penguins as a whole.
Am I to understand that despite the fact that I used the same image of a penguin giving the finger (which has at least a thirty degree difference in the angle of the flipper to Penguin’s logo) to promote the first book without any issue, now that I am using it to promote the second book, which is not published by Penguin, it is now suddenly a trademark infringement?
Regards, David.
From: Donald Snadek
Date: Monday 26 March 2012 3.55pm
To: David Thorne
Subject: Trademark infringement and dilution

Dear Mr. Thorne:
Please see the attached letter.
Donald K. Snadek















From: David Thorne
Date: Wednesday 28 March 2012 2.14pm
To: Donald Snadek
Subject: The big letter

Dear Donald,
I have received your letter and, as I could probably list ten thousand things that would be more fun than facing the grey tweedy wrath of Penguin’s lawyers in court, (starting with 1. making long lists), I will capitulate to your demands and change the cover.
Regards, David.
From: Donald Snadek
Date: Wednesday 28 March 2012 4.52pm
To: David Thorne
Subject: Re: The big letter

Dear Mr. Thorne:
Thank you for your message. Penguin appreciates your cooperation in this matter.
To avoid any misunderstanding, however, I want to remind you that our March 23 letter demanded not only a change in your book's cover but also of all materials on which the infringing logo appears. This includes the book's title page and promotional materials, such as the T-shirts and mugs displayed on your web site and offered on online stores. It also includes not only your web site but also any display of or link to the infringing logo on your Facebook, Twitter or other personal social network pages.
Our March 23 letter demanded that these sites be changed by March 30. Please confirm that you understand this.
Donald K. Snadek
From: David Thorne
Date: Thursday 29 March 2012 10.21am
To: Donald Snadek
Subject: Re: Re: The big letter

Dear Donald,
Yes, the version of the letter I received was predominately in English. Even with my reading disability (my bedside lamp is only 25w) and skipping to the pictures after page two due to its length, I was able to understand the gist of “We are angryface and would like you to use a picture of a cat or something instead of a penguin.”
Regards, David.
From: Donald Snadek
Date: Thursday 29 March 2012 12.04pm
To: David Thorne
Subject: Re: Re: Re: The big letter

Yes, a cat instead of a penguin would be acceptable.
From: David Thorne
Date: Thursday 29 March 2012 12.17pm
To: Donald Snadek
Subject: Re: Re: Re: Re: The big letter

What if a penguin is riding the cat? Perhaps in a race.
From: Donald Snadek
Date: Thursday 29 March 2012 3.19pm
To: David Thorne
Subject: Re: Re: Re: Re: Re: The big letter

That would not be acceptable.
From: Donald Snadek
Date: Tuesday 3 April 2012 11.32am
To: David Thorne
Subject: Penguin trademark

Dear Mr. Thorne:
In your March 29 email, you stated that you "understood the gist" of our March 28 email: namely, that your infringing penguin logo was to be changed no later than March 30. As of today, four days beyond the deadline, your book now features a penguin holding flowers, despite your email stating that you would change the penguin to a cat.
We demand, no later than the close of business on April 4, that you comply with our demands. If not, Penguin will seek injunctive relief and damages. You will not receive further warning before Penguin takes legal action.
Donald K. Snadek

From: David Thorne
Date: Tuesday 3 April 2012 12.54pm
To: Donald Snadek
Subject: Re: Penguin trademark

Dear Donald,
As I understood from your letter, your main concerns were that the penguin cover was a. making a rude gesture, b. presented on an orange background, and c. recognisable as the Penguin logo and the association with Penguin that brings.
The redesigned penguin is now a. making a kind gesture, b. presented on a background devoid of any colour, c. with a quick glance, perhaps in a room lit by a 25w light globe, could be more immediately mistaken for the work of a shy British vandal than the Penguin logo in question, and d. not racing a cat.
Surely Penguin does not claim ownership to all penguin related imagery. If so, are you intending to send the same email to Linux, McVitie's, Otmar Guttman, and Amundsen-Scott Station?
Regards, David.
From: Donald Snadek
Date: Wednesday 4 April 2012 11.06am
To: David Thorne
Subject: Re: Re: Penguin trademark

Dear Mr. Thorne:
As stated in our most recent email, your current penguin logo (holding flowers) is not acceptable.
The test of infringement is not whether your logo is identical to Penguin's logo or even whether your logo is likely to be mistaken for Penguin's logo. The test is whether your logo sufficiently resembles Penguin's logo to cause confusion about the relationship of your book to Penguin. Your use of a penguin logo is likely to cause members of the public to believe that Penguin publishes your second as well as your first book, and that Penguin has designed or authorized this variation of its usual Penguin logo. We already have evidence that such confusion has occurred.
Furthermore, trademark law has a "safe distance" rule that someone who has previously infringed (as you have) must stay further away from the plaintiff's trademark than one who has not previously infringed.
For these reasons, we repeat our demand that, by the close of business tomorrow, you permanently change the design of your logo to something that is not a penguin.
Donald K. Snadek
From: David Thorne
Date: Wednesday 4 April 2012 1.47pm
To: Donald Snadek
Subject: Re: Re: Re: Penguin trademark

Dear Donald,
Understood. Can you please check with Penguin if something along the lines of the attached would be acceptable to them.
The sticker flash thing hides the fact that it is a penguin, with the word ‘cat’ included to convince those suspicious that it may be a penguin otherwise. This solves both Penguin’s issue with the book cover and my issue with having to do anything that requires actual effort.
I look forward to hearing from you at your convenience and hope we can put this matter to a close.
Regards, David.

From: Donald Snadek
Date: Thursday 5 April 2012 10.04am
To: David Thorne
Subject: Re: Re: Re: Re: Penguin trademark

Dear Mr. Thorne:
This matter will come to a close only when you comply to our demands. Your proposed "cat" is instantly recognizable as a penguin by anyone who has seen your current or original penguin cover, and by anyone else who knows that black and white “cats” do not have webbed feet.
This is my last correspondence with you before we proceed with legal action.
I strongly suggest you change the image immediately. Your book does not contain any articles about penguins but many about cats. I understand the title suggests a cold environment but there are any number of alternatives to Antarctica such as skiing or being in space.
Donald K. Snadek
Click to view the final cover.


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