When a person or business has intellectual property infringed by a third party, the damage can be serious. Stolen intellectual property can lead to lost sales, consumer confusion, and ultimately lost profits, to say nothing of the emotional harm of seeing your work taken without permission.
What can you do to stop it? Racing to file a lawsuit against the infringer is rarely the best first step. More likely, you should write what is known as a cease-and-desist letter.
A cease-and-desist letter, also referred to as a demand letter, is simply a formal letter notifying an infringer of its wrongful conduct and demanding that it be stopped. "Stopping" in this context might mean that the infringer refrains from using your company's logo on its products (a trademark violation), take your photograph off its website (a copyright violation), or cease using your protected invention (a patent violation).
Obviously, a well-written letter can save you the time, cost, and stress of litigation. How can you write the most effective possible cease-and-desist letter?
As an initial matter, realize that you do not need an attorney to write a formal letter. You can write it yourself. However, you should be sure that you are hitting the right tone so that your letter comes across as serious and responsible rather than strident.
While the goal of the letter is not necessarily to frighten or intimidate the recipient, it is certainly to make it clear that you have "caught" the wrongful conduct and intend to take legal action unless it is corrected.
How can you convey that level of formality? First, be sure your letter is typed, preferably on corporate letterhead if you have it. (No handwritten letters!) Second, consider using nicer paper than usual, as well as having the letter delivered through FedEx or UPS, so as to demonstrate that the contents are important. And third, use complete sentences and proofread it carefully. Nothing makes a reader dismiss a letter faster than typos or sloppy sentences.
The "meat" of a cease-and-desist letter should involve a recitation of the relevant facts. Usually, these facts are kept fairly brief, no more than a few short paragraphs.
You can probably outline the key facts using dates, such as: "On October 1, 2018, my company obtained a trademark from the U.S. Patent and Trademark Office on the name 'Molly's Whiskers' for a pet store. Yet on December 15, 2018, we discovered that your store in Brooklyn, New York, was using the same name for the same type of business."
Laying out the facts methodically shows that you are organized. You should also incorporate copies of any documents or evidence that might be helpful. In the example above, you might attach a photograph of the infringing store's logo or window signage, as well as a copy of your registered trademark certification.
You are not a lawyer, and you should not pretend to be one. However, as you write your letter, it is important to include information about the legal violation taking place.
You need not include rambling quotations from state and federal statutes. But you should feel confident in stating the type of legal violation at issue. For example: "Your use of my photograph without permission is a violation of the U.S. Copyright Act of 1976." Or "Your company's use of our registered logo on your signage is misleading, and violates federal trademark."
Using short legal phrases like these can send the message to the reader that you understand your intellectual property rights enough to know when they are being violated. But again, there is no need to write a legal treatise. Not only are you likely to make a mistake, but you should save those lines of attack for when (or if) your lawyer ever does need to become involved.
People respond to deadlines. If your letter ends with a vague conclusion, asking the infringer to "please take action as soon as possible" the infringer may very well ignore your letter. Instead, end your letter by giving a firm deadline, along with specific steps for compliance.
Consider this example conclusion: "We therefore demand that you remove the infringing photograph from your website within five (5) days of receipt of this letter. Upon your removal of the photograph, immediately confirm your compliance by sending an email to [your own address], including a screenshot of the site. If our office does not hear from you by the end of business on [date five days in the future], we will immediately ask our attorneys to file litigation against you and pursue all possible remedies at law."
This sort of a conclusion gives some unmistakable instructions. There is no uncertainty about what the infringer must do and by when. Moreover, this letter could then become "Exhibit A" to a future lawsuit or motion. It will demonstrate to the court that you gave the defendant fair warning, and did not jump eagerly into litigation.
It is certainly true that you do not need to consult a lawyer to send a cease-and-desist letter. However, there are many situations when doing so might be prudent.
Even if you do not pay a lawyer to write the letter, it might be worthwhile to sit briefly with an experienced intellectual property lawyer to hear a professional perspective on your best approach. The lawyer might even offer feedback on your initial draft based upon his or her experience, removing language that might cause legal troubles if the dispute proceeds to litigation.
Some lawyers will do this sort of initial consultation without cost, with the hopes of developing a long-term relationship with your business. Others may charge a consultation fee, sometimes several hundred dollars. Regardless, some smart initial legal guidance may save you money down the road.
