If you are a small business owner, band, or artist looking to enforce your IP rights or respond to infringement allegations in a cease and desist letter you have received, you DO NOT want to try and enforce your rights or respond without obtaining legal advice, or even worse, use a “one size fits all” C&D letter from an online legal documents website. That’s why Creative Vision Legal’s Cease & Desist Letter package includes:

Of course, whether you know what legal service you need or not, feel free at any time to browse the firm’s Legal Services overview page to find out useful information about the legal services offered.

OVERVIEW OF CEASE AND DESIST LETTERS

A cease & desist letter (also sometimes called a “demand” or “complaint” letter) is a written communication from a party seeking to enforce rights being claimed against the recipient. Cease and desist letters (“C&D letters” for short) are prevalent in the intellectual property arena, where trademark and copyright owners use them to enforce their rights against, for example, trademark infringement, or copyright infringement of musical compositions, sound recordings, or films and videos. Basically, the sender is asking the recipient of the C&D letter to “cease & desist” from actions that currently and prospectively infringe the sender’s rights (“stop doing it now and don’t do it in the future”). A cease & desist letter may also demand compensation for infringements that took place in the past.

A cease & desist letter may carry an explicit or implicit threat of litigation if the recipient does not comply with the sender’s demands. However, as simple as writing a letter sounds, there are key strategic legal considerations you must take into account before sending a cease & desist letter. Failure to carefully consider the legal ramifications can lead to costly and even fatal errors that can irreversibly affect the sender’s rights.

THE IMPORTANCE OF A WELL-WRITTEN CEASE & DESIST LETTER

If carefully crafted, a cease & desist letter can accomplish two important goals:

• Notice: A well-written C&D letter should provide notice of the sender’s rights and identify the recipient’s actions or behavior that affected or currently affect those rights, and,
• Persuasion: A cease & desist letter may successfully persuade the recipient to stop the offending actions going forward, or to begin talks for compensation or settlement.

However, a poorly written cease & desist letter, or one based on a sample letter from an online legal forms provider that does not take into account the specific circumstances of the dispute, can actually send parties that could have settled amicably hurtling needlessly towards costly litigation.

KEY CONSIDERATIONS FOR CEASE AND DESIST LETTERS

1. IDENTIFY YOUR RIGHTS

First, you must clearly identify the rights you are seeking to enforce, and understand the scope of the rights you are asserting in the C&D letter. For example, if you are the owner of a copyright registration for a sound recording, the cease and desist letter could state information such as the title of the sound recording or the registration number. Dealing with IP that is registered in the sender’s name can be straightforward because the scope of rights owned by the sender of the C&D letter is defined.

However, problems identifying the scope of the sender’s rights can arise with unregistered IP such as common law trademark rights or unregistered songs, or situations where the sender is asserting rights granted under a license. The main problem to avoid in this regard is asserting rights you don’t have. For example, if you assert common law trademark rights (rights obtained through use, not a trademark registration) in your cease and desist letter, the scope of your rights may be geographically limited because your use may only have occurred in your home state. If the recipient of your C&D letter has been using the same or a similar trademark outside the geographic area of your use and you allege trademark infringement, your cease & desist letter may be essentially toothless and is likely to be ignored because you could be asserting rights outside the scope of what you actually own. Likewise, with rights obtained under license, your ability to enforce your rights would be limited in scope to what the license actually granted. Sometimes, licensing agreements may not even give the licensee the right of enforcement, so again, your cease & desist letter could be ineffective.

2. IDENTIFY THE POTENTIAL RECIPIENT(S) OF THE CEASE & DESIST LETTER

Next, you must identify the recipient(s) of the cease & desist letter. First, the identities and contact information of anyone who could be considered a potential infringer must be ascertained. In the simplest scenario, this could involve identifying one individual or business with an easily discoverable physical address like a place of business. But what if the infringer is someone posting an infringing copy of your song on a website or Facebook page? In these instances more “detective work” may be necessary to identify who (and where) you should send the cease and desist letter to.

Another important consideration is whether in addition to direct infringers (persons or companies that actually engaged in infringing behavior) there may be indirect infringers who could also be legitimate recipients of your cease and desist letter. Indirect infringement comes in two forms: contributory infringement or vicarious infringement. Contributory infringement occurs when a party knowingly causes, induces or materially contributes to the direct infringer’s conduct. A party can be liable for vicarious infringement if they were in a position of management or control over the direct infringer and materially benefited from the infringement. These activities can be applicable when either trademark infringement or copyright infringement is involved.

3. IDENTIFY THE ACTIONS OR BEHAVIOR YOU WANT THE RECIPIENT TO CEASE & DESIST FROM, AND WHAT YOU WANT DONE

A cease and desist letter should clearly state for the recipient what they did wrong, when they did it, and what you want them to do in response to your letter. The actions or behavior you identify are intimately tied to and must comport with the scope of rights you are asserting, or else your C&D letter will not be effective. For instance, if you are a licensee of a film with only the right to reproduce and distribute the work but you do not have a license to the other components of a copyright owner’s bundle of rights, you could not write an effective cease and desist letter to someone who created a derivative work from the film you licensed because you did not receive the derivative work right under your license.

Careful thought should also go into what you want the recipient to do in response to your C&D letter. Outrageous demands that are practically impossible to comply with might be regarded as frivolous or irrational by most recipients, thus detracting from the sender’s credibility. A demand to, for example, destroy all infringing copies of a CD within 24 hours, when the recipient has a nationwide distribution network, would arguably be an outrageous demand to put in a cease and desist letter. Demands should be firm, but nevertheless possible for the recipient to comply with, because sending a subsequent cease and desist letter with a demand that is watered down from the first version that had an outrageous demand weakens the sender’s position in resolving the dispute.

4. CHOOSE THE RIGHT TONE FOR YOUR CEASE & DESIST LETTER

Arguably the most important overarching consideration in writing your cease and desist letter is not what goes into it, but the TONE of the letter as a whole. Tone is paramount because of the possibility that a preemptive lawsuit known as a declaratory judgment action might be filed against the sender of a cease and desist letter. If the recipient of the C&D letter has “a real and reasonable apprehension of litigation” then a declaratory judgment action can be filed against the sender. Thus, a cease and desist letter that is worded too strongly with an overtly threatening tone can give the recipient/infringer the basis for a lawsuit against the sender whose rights may have been infringed.

A declaratory judgment lawsuit can be problematic for the sender of the C&D letter for three main reasons. First, the sender of the cease and desist letter may not be ready, either financially or logistically, to defend against a preemptive lawsuit. Once such a lawsuit is filed, it is usually advantageous to file a counterclaim against the recipient of the C&D letter based on the very allegations of infringement contained in the letter. However, if the sender does not have the financial resources, or the facts of the case have not yet been developed, the sender/declaratory judgment lawsuit defendant could be at a severe disadvantage for ultimately asserting their rights. Another consideration related to resources is that a cease and desist letter recipient/plaintiff will most likely file a declaratory judgment action in their “home court”, which if distant from the sender/defendant’s jurisdiction could cause logistical and financial headaches.

Second, C&D letter recipients/plaintiffs usually attack the validity of the sender/defendant’s IP rights when filing declaratory judgment suits, and also offer up evidence that no infringement took place. If the cease and desist letter sender did not have strong IP rights, or did not have enough facts to legally prove infringement in a court at the time the letter was sent, the sender would now be at great risk of not only losing an infringement argument but also losing their own IP rights.

Finally, a declaratory judgment action usually forecloses the possibility that a quick settlement can be reached between the sender and recipient of the cease and desist letter on the terms that the sender was originally seeking. Once filed, a declaratory judgment action can give the C&D letter recipient/plaintiff stronger ground from which to negotiate, especially if the sender/defendant was caught flatfooted by the lawsuit.

Some situations may be inevitably destined for litigation regardless of what is written in a cease and desist letter. However, even in those situations legal counsel is highly advisable when writing and sending a cease and desist letter, and form letters from online legal services websites should be avoided. An over-the-top, “shock and awe” cease & desist letter making outrageous demands and threatening litigation that is sent to the wrong recipient at the wrong time can lead to unwanted or untimely litigation.