Throwing the First Legal Punch – An Introduction to Cease and Desist Letters
So you are perusing the Internet one day and are astonished to come across another fitness studio, maybe not even in the same part of the country, using your logo on their apparel! Now what?
Breathe. We know that initial feeling of injustice can be utterly gut wrenching especially when something as personal as a logo or slogan that is germane to your business’ marketing efforts is literally ripped off by another person or studio.
From a legal perspective, there are many intellectual property issues that should be discussed with respect to your ownership rights in a particular trademark or logo (including whether you have such rights or how to obtain them). The purpose of this article, however is not to delve into intellectual property law but rather to introduce you to the legal first punch – a Cease and Desist Letter. Roughly a page in length, this letter literally tells the other party to cease or “stop” an action that they are conducting.
Often times Cease and Desist letters are prepared in connection with a dispute involving intellectual property rights (and will be discussed in this context throughout this article) but it is important to keep in mind that this tool can be used to formally demand that another party cease other activities such as harassment, slander, libel or any other inappropriate or illegal conduct. Essentially, the purpose of the letter is to communicate to the other party that the issue may be escalated to litigation but the company is attempting to amicably resolve the issue by reaching out to the other party prior to taking such measures. We start with a quick overview of what should be included in these letters, followed by a few tips to consider to ensure that your Cease and Desist letter is as effective as possible.
Contents of a Cease and Desist Letter
Party Introduction and Basis for Claim: The letter should begin by quickly introducing the party writing the letter (typically an attorney as described in more detail below) and the company that the attorney is representing. Next, the letter should include a few sentences detailing the rights of the company and the basis for such rights. If the letter relates to an intellectual property dispute all applicable registration numbers are helpful to include (although unnecessary as unregistered trademarks can also be the basis for a Cease and Desist letter). Often times the date on which the company began using the trademark or logo will also be included (if it is helpful).
Description of Infringing or Illegal Activity and Request to Stop: The letter should then describe details relating to the infringing party’s activities. The more specific the details relating to the activity are, the better (i.e. times, dates, or other information). You want to send the message that you are aware of the infringing company’s activities and have been monitoring such activity relentlessly. Next, a simple demand to cease such infringing activity should be inserted.
Settlement Payment Request. The letter could include a request for a settlement payment for the damage incurred as a result of the violation. Obviously this analysis is very fact specific and is an area where an attorney can weigh-in when assessing the viability of your claim.
Consequences for Non-Compliance. The letter should include language regarding the next steps that your company will be taking in the event that the infringing party chooses not to comply with the request to cease their illegal activity. The tone of this message can range based on the type of message you want to send. For example, often times for infringements of registered copyrights, the letter will state that by not complying with the letter the company will be entitled to use such failure as evidence of “willful infringement”, which may provide a basis for the company to seek additional monetary damages. You may also want to provide a time period in which you expect the infringing activity to stop (i.e. 10 days). This gives a clear timeline for the infringing party to take down the material on their website, speak to their counsel or make other arrangements within their business to alleviate the issue.
3 Tips for an Effective Cease and Desist Letter
1. Speak with an Attorney about the Basis for your Claim
It is illegal is some jurisdictions to threaten legal suit for claims that have no basis. As such, you should have a conversation with an attorney well versed in area of law in which you believe you have a claim to make sure that your claim actually has merit. Many attorneys will do this as part of a free consultation or will lump this time spent in with their standard cost for preparing the Cease and Desist letter, which is a great segue into Tip #2.
2. The Letter should come from a law firm
This prong relates to Tip #1 above but is so important; it warrants its own category. There are many templates online (which are fine to use by the way if you intend to get a start on the drafting to then turn over to an attorney) but my point is that the actual letterhead of a law firm is very important to the success of a Cease and Desist letter. The infringing company needs to know that you are very serious about protecting your legal rights and you have retained a law firm in the event that the infringement does not stop.
3. Refrain from any communication outside of the Cease and Desist Letter
Lastly, as hard as it may be, you need to refrain from all communication with the infringing party (including posting anything on social media or speaking with others in your local community). This type of outside distraction will just get in the way of the pointedness of the letter and may have the unintended effect of sparking additional fuel to the fire that is not helpful or necessary.
Although I cannot promise that your Cease and Desist letter will be effective in stopping the infringing conduct, following the substantive layout of the letter set forth above and following the tips in this article should give you a viable chance to be successful in throwing the first….. and hopefully the last…… legal punch on this issue.
Chelsey Ziegler, Associate General Counsel at the MacArthur Foundation, contributed this article for the blog.