Cease and Desist Letter Intellectual Property


Cease and Desist Letter Intellectual Property

When intellectual property infringement occurs, rights holders may not want to immediately jump into a federal lawsuit. Instead, businesses often try to resolve matters outside of court by sending an intellectual property cease and desist letter.

Benefits of using this sort of letter include:

  • Ending the infringing activity expeditiously,
  • Avoiding time and costs associated with a federal lawsuit,
  • Educating the other party on intellectual property law,
  • Maintaining goodwill among your customer base, fans, followers, or in the broader community, and
  • Obtaining a monetary settlement.

Although intellectual property cease and desist letters are not 100% effective, they usually go a long way toward helping parties resolve disputes.

The three primary types of intellectual property cease and desist letters are for trademarks, copyrights and patents.

Trademark Cease and Desist Letter

Trademarks protect words, phrases, slogans, jingles, and even colors that serve as a source indicator for goods or services. While there are some common law trademark rights, the majority of trademarks receive protection once they are registered with the US Trademark Office under the Lanham Act.

Unlike owners of other types of intellectual property, trademark owners have an affirmative duty to enforce their rights. Failure to do so could result in a naked license, or the loss of a trademark owner’s ability to prevent competitors from using their trademarks.

Trademark infringement occurs when:

  • A second trademark that is confusingly similar to the original trademark is utilized in connection with similar goods or services, or
  • Counterfeit goods, utilizing the same trademark on unauthorized goods, enter the market.

A trademark infringement cease and desist letter should contain a number of elements:

First, it will introduce the person sending the letter – either the trademark rights owner or the rights holder’s agent.

Second, it will provide information regarding the trademark in question, including dates of first use and registration information.

Third, it should provide a detailed analysis of how the second trademark infringes on the protected trademark. The standard courts use to determine trademark infringement is “whether the ordinary consumer of these products would experience a likelihood of confusion as to the source or origin of goods or services.” In performing this analysis, rights holders typically point to DuPont factors that a federal judge would consider when comparing the two trademarks.

Fourth, these letters should contain a list of actions the other party should engage in to avoid further legal action. These may include:

  • A demand that the other party immediately cease from engaging in infringing activity
  • A demand that the other party desist from engaging in future infringing activity,
  • A request for monetary settlement in exchange for releasing the other party from liability for their infringing action,
  • A demand for proof of compliance within a certain period of time.

Finally, a trademark cease and desist letter will conclude by listing what will happen if the other party fails to comply. This typically involves filing a trademark lawsuit in federal court.

Copyright Cease and Desist Letter

Copyrights protect original works of authorship, including websites, books, photographs, songs, movies, computer software, and architecture. Although registering a copyrighted work provides certain benefits, including the ability to obtain statutory damages in a copyright lawsuit, owners of unregistered works may still enforce their intellectual property rights.

There are a number of different actions that constitute copyright infringement, including:

  • Posting a copyrighted photograph, image, video, or song online without permission
  • Selling unauthorized copies of a protected work,
  • Performing a protected musical piece or dance without obtaining permission from the copyright owner, or
  • Downloading copyrighted works without paying for them.

Often, rights holders are able to satisfactorily resolve infringement matters without filing a federal lawsuit by sending a copyright cease and desist letter to the other party.  A copyright cease and desist letter should contain a number of elements.

First, you should introduce yourself and explain whether you own the copyrighted work, or you are an agent of the copyright holder.

Second, you should identify the copyrighted work. You can do this by providing

  • The title of the book, movie, article, song, photograph, or image;
  • The US Copyright Registration Number, if applicable;
  • A copy or photograph of the work, if applicable.

Again, you do not need to register your work with the US Copyright Office or provide a registration number in order to enforce your rights to a copyrighted work by sending a cease and desist letter.

Third, you should provide a detailed explanation of how the other party infringed on your copyrights. This section is highly dependent on the type of copyrighted work and the nature of the infringing action. This section can include photographs or screenshots as evidence of the infringing work.

Your letter should conclude by listing the next steps you intend to take, should the other party fail to comply with your demands. If the other party does not comply in a satisfactory manner, the copyright holder’s next step is usually to file a copyright infringement lawsuit in the local federal court.

Social Media

Often, copyrighted photographs, images, videos, texts, or music is shared on social media platforms without permission of the owner. Although many of these sites, including Facebook and Twitter allow users to send private messages, which can contain a cease and desist letter, the relative anonymity of social media can make it difficult for intellectual property owners to enforce their rights.

Copyright holders who wish to have infringing material removed from social media and other websites have another resource available to them. Under the Digital Millennium Copyright Act (DMCA), webhosts, including social media, sites must assist with enforcement of copyrights. The DMCA provides a “safe harbor” from liability for copyright infringement for Google, Facebook, Twitter, GoDaddy, and other internet service providers (ISPs). However, failure to assist with copyright enforcement can open these providers up to copyright infringement claims.

Most social media sites, including Facebook, Twitter, Pinterest, and Instagram, have online forms for copyright holders to fill out. Copyright holders may also send a hard copy to the agent on record with the US Copyright Office.

Patent Cease and Desist Letter

Patents give their inventor the right to exclude others from making, selling, distributing, or importing an invention. Unlike trademarks or copyrights, patents must be registered with the US Patent Office in order to gain protection.

Patent infringement can occur when:

  • An inventor creates and sells a product that is protected by patent, even without knowledge of the patent
  • A patented product is being sold without permission of the rights holder.

The elements of a patent cease and desist letter are as follows:

First, the patent holder or the holder’s attorney introduces themselves and the patent in question. This will include the patent registration number, along with a mention of the claim or claims being infringed.

Second, the letter will include an explanation of the infringing activity. This may involve explaining, claim by claim, how the other party’s product or business method infringes on the patent holder’s invention. Letter writers often use drawings or photographs to illustrate their points. This section may also include an explanation of where the patent infringement is occurring, such as by providing links to online shops or photographs of the infringing item being sold in stores.

Third, a patent infringement cease and desist letter will typically include a list of demands the infringing party should take in order to comply with the letter. These may include:

  • Cessation of selling, distributing, manufacturing, or importing the product without authority from the patent holder,
  • Destruction of remaining items covered by the patent,
  • Payment of a licensing fee to continue using the invention, or
  • Settlement funds in order to release the infringing party from patent infringement claims.

This section will also typically list a date by which the other party is expected to comply.

Finally, the patent holder will list the next steps it will take if the other party fails to comply. This will typically include filing a federal patent lawsuit.

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