The ABC’s of Cease & Desist Letters: When to Send and When to Respond

Whether you are an individual whose copyrighted work is being used without permission or a company whose trademark is being infringed, a “cease and desist” letter is often the first step to enforce and preserve your intellectual property rights. Alternatively, you may have received a cease and desist letter notifying you to stop infringing someone’s IP, and the letter may also contain the threat of legal action. In either scenario, a consultation with Punzalan Law may be in order.

What is a Cease and Desist Letter?

Cease and desist letters are commonly sent to businesses or individuals to demand the discontinuation of a certain action (“cease”) and to refrain from further engaging in the action (“desist”). The cease and desist letter is a standard first step in protecting your rights. Sometimes the cease and desist letter is all you need to get the other party to stop the infringing actions. Other times it is the start of a negotiation process or the foundational groundwork for a civil law suit.

Cease and desist letters typically identify the infringed material, provide proof of ownership of the copyrighted or trademarked material, and outline the instances where the intellectual property has been infringed upon. In the world of intellectual property, a cease and desist letter is an assertion of rights and notice of the intent to assert those rights. If the offending party ignores the letter or continues the infringing actions, then the owner of the rights may decide to take legal action and the cease and desist letter may serve as notice and evidence in future litigation.

In the event of infringement, you will want to gather any documentation or evidence to support your case. If you have an attorney write the cease and desist letter, the attorney will often cite laws and regulations to support your position, such as the laws on copyright, trademark and patent rights.

What is Copyright or Trademark Infringement?

Copyright infringement is the use of works protected by copyright law without permission, violating certain exclusive rights  granted to the copyright holder, such as the right to reproduce, distribute, display or perform the protected work, or to make derivative works. Such infringement can be intentional or unintentional (“innocent” infringement) but even innocent infringement may be actionable. (See Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y. 1976). Copyright law protects any original creation such as literary works, paintings, photographs, drawings, films, music (and its lyrics), choreography, sculptures and many other creative works.

Copyright owners may obtain the following penalties for infringement:

  • Infringer pays the actual dollar amount of damages and profits;
  • Statutory damages of $200 to $150,000 for each work infringed;
  • Infringer pays for all attorneys fees and court costs;
  • The court can issue an injunction to stop the infringing acts;
  • The court can impound the illegal works; or
  • Infringer could serve jail time.

According to the USPTO, trademark infringement is the “unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.” In determining whether consumers are likely to be confused, the courts will typically examine a number of factors, known as the “Polaroid Factors” which include: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; and (7) the infringer’s intent. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

If the infringer continues using the mark despite the cease and desist letter, the owner may want to consider filing a lawsuit. If the owner is able to prove infringement, available remedies for trademark infringement may include the following:

  • A court order (injunction) that the infringer stop using the mark;
  • An order requiring the destruction or forfeiture of infringing articles;
  • Monetary relief, including the infringer’s profits, any damages sustained by the trademark owner, and the costs of the action; and
  • Infringer pays for all attorneys’ fees.

What to Do If You Receive a Cease & Desist Letter

If you receive a demand letter notifying you to stop allegedly infringing behavior, you are not legally required to respond to the letter. In and of itself, a cease and desist letter is NOT legally binding. Additionally, there are times when cease and desist letters have been used to intimidate the recipient or mislead the recipient into paying for a license to use the mark. However, as outlined above, ignoring it may have legal ramifications.

If you get a letter, take the following steps:

  1. Review the letter and determine what type of intellectual property rights are being asserted. Is the letter about copyright, trademark or patent infringement?
  2. Assess whether the claims have merit.
  3. Gather evidence or information about the issue that counter the claims or support your position.
  4. Meet with an attorney to determine your rights, the validity of the legal claim and the appropriate response.

If the claims have merit, there may be defenses against infringement and Punzalan Law can help you identify the defenses and provide you with an assessment of the strengths, weaknesses and risks of the case. Additionally, Punzalan Law can help you register, protect and enforce your copyrights or trademarks.