Considerations for Crafting A Cease and Desist Letter
We have written before about using cease and desist letters to prevent others from infringing your intellectual property.
There is no doubt that a well-written letter making a formal request that the other side stop their infringing activity is a handy tool at the disposal of an intellectual property owner. These letters are often used to convey to an infringer that you mean business and are prepared to pursue legal action, while at the same time you are open to working on a commercial settlement.
But contrary to popular belief, these letters are not ‘standard.’ It takes great skill to prepare a good letter. A letter needs to be carefully crafted to achieve the result your business actually wants. In this post, we explore two key considerations for writing such a letter.
1. Social Media & avoiding a PR backlash
It is increasingly important to consider is how your letter will be viewed by the public at large. Keep in mind that social media can (and will) be used by the recipients of your letter. They have the ability to tell the world about it and engage others in discussion about your brand and reputation.
Nothing should make an intellectual property lawyer cringe more than witnessing a letter they have written mocked on the internet. No business wants to come across as a ‘trade mark bully’, yet time and time again, we see letters sent by reputable businesses that come across as just that – bullying.
2. The recipient
At Briffa, we work hard to avoid the risk of any damage when we write cease and desist letters. To do this, we make sure we understand your business and understand the business and motivations of your opponent.
For example, writing to a non-commercial entity such as a fan site demands a soft approach, perhaps pointing out the need for you to control your IP and giving the business time to wind down its infringing activity.
Meanwhile, approaches to commercial entities require a bit more force. Although you still need to consider what is appropriate. Is the infringing use you have discovered likely to be a genuine mistake on the part of the infringer who may be unaware of you and/or ignorant about intellectual property rights?
Conversely, is the infringer a close competitor, an employee who has set up in business competition with you, or a business that has been a constant thorn in your side over many years?
Accessing the situation and the potential impact of your letter is vital. The aim is to bring about a commercial solution, not drive the infringer underground or, even worse, onto social media.
When Cease and desist letters go wrong
One of the most notorious examples of a cease and desist gone wrong is one written by lawyers acting for Brew Dog.
Having secured a registration for “Lone Wolf”, this successful craft brewery – founded by James Watt and Martin Dickie – sent a cease and desist letter to the owner of a bar in Birmingham which opened using the same name. As well as asking for the bar to stop using the name, the letter also demanded costs and damages.
The bar, staggered by the level of aggression towards it, went public. The local and national press picked up on the bar’s social media campaign. Questions were asked about how Brew Dog had lost its way. Far from the image of an anarchic punk brewery doing things their own way, they had, in fact, become rather corporate. When the media storm hit, Brew Dog did its best to repair the damage. However, their efforts were not successful, and the damage done has endured.
Written by Margaret Briffa