Cease and desist letters – what are they for and how can they help?
Lawyers love writing letters, in fact, it’s one of the specialties, but there is one particular letter which intellectual property lawyers send off more than any other; a cease and desist letter.
The name somewhat gives away the point of the letter; essentially it’s to politely but firmly invite the recipient to stop whatever it is that they’re doing. Typically they’re sent to “infringers” i.e. individuals or companies who have copied someone’s goods/services.
The first thing to establish is what unlawful acts have actually taken place. Intellectual property is made up of a lot of different intellectual property rights and it’s important be clear on which rights are actually infringed. For example, someone copying a company’s logo may be infringing a trade mark (if it’s registered) and a copyright work. The logo itself could therefore have two different intellectual property rights protecting it, each with different tests for infringement. A cease and desist letter therefore needs to explain which rights are relied on and how they have been infringed.
Once an unlawful act has been established a cease and desist letter then needs to address the remedies. In short, what do you want? Most of the time the main priority is to put an end to the sales/supplies of the infirming items and remove any relevant listings. But this, although undoubtedly important, doesn’t fully address the issue. Instead it’s worth addressing the damage caused. The sales may have been going on for some time and it’s important to ask for disclosure from the infringer as to what they’ve been up to. This disclosure should be provided along with supporting evidence and it’s a good idea to have it set out as part of a witness statement, signed with a statement of truth (of course, it would be naïve to suggest that this guarantees complete honestly but certainly it’s a good place to start).
Once the extent of the damage is known, you can use this to assess the size of your financial compensation, either by way of damages (i.e. impact on, or devaluation of, your reputation) or an account of profits (i.e. a sum equivalent to the profits made by the infringer).
It’s also common to ask the infringer to pay your legal costs and sign a set of “undertakings” preventing them from infringing your rights in the future.
So that’s it, a letter designed to quickly deal with a critical legal issue and ensure that it doesn’t happen again. Although simple enough in principle this is still something which requires careful legal drafting. On that basis, if you come across an infringement which you like to stop, contact one of our letter loving lawyers on [email protected]
Written by Will Miles