Help, I’ve just received a cease and desist letter!
As intellectual property lawyers we spend much of our time either sending or responding to “cease and desist” letters. These letters are the first step in intellectual property (IP) claims and they are essentially designed to set out the rights of the aggrieved party along with the various “remedies” which they are seeking to obtain.
Typically the scenario is as follows, Party A owns some IP, such as a trade mark, a design, a patent or a copyright work. Party A places a high value on its IP and has spent a lot of time creating it. Party B then comes along and appears to be infringing the IP. In order to put a stop to this infringement, and as a pre-cursor to court proceedings, Party A issues its cease and desist letter.
The letter should set out the exact rights that Party A claims to own along with sufficient evidence of those rights. Registered intellectual property rights like trade marks and patents are easy to prove with certificates that can be checked on public registries. However unregistered rights like copyright or unregistered designs require a bit more work, and Party A should explain who authored the work, who the current owner is (if different from the author) and why the IP rights subsist.
The letter should also set out the remedies that Party A is seeking. Typically these would be to stop infringing activities (obviously the main aim), to destroy any remaining stock or infringing materials, to provide written undertakings preventing any future infringement, to pay financial damages and to pay legal costs.
How to respond to a cease and desist letter
Assuming the cease and desist letter covers the above then there is a case to answer and a response should be sent. Normally a defence to an IP infringement claim would involve two parts, although only one is needed in order to be successful:
- Questioning the validity of the IP – if the rights are not valid, they cannot be infringed; and
- Questioning the allegation of infringement – each IP right has its own test for infringement. For example, copyright infringement requires the whole or a substantial part of an original work to be copied. However, it is not unlawful to be inspired by a copyright work or concept and to create something else which is independent of it.
So, if you are unlucky enough to receive a cease and desist letter, don’t panic. Letters like this are sent every day and just because one party thinks that their rights have been infringed, it doesn’t necessarily mean that they’re correct.
There may well be scope to defend the claim and you should seek expert legal advice before responding. Fortunately, if you’re reading this then you’re in the right place and our expert solicitors are on hand to fight your corner, all you need to do is get in touch.
What are the steps to defending a claim?
In order to assess the issue properly the first step is to work out exactly what the allegations are. More specifically which intellectual property rights are in issue and how are they claimed to have been infringed.
When it comes to defending IP actions it’s vital to view the claimant’s intellectual property rights with a critical eye. For example, in respect of a registered trade mark, if the mark has been registered for more than 5 years and it’s not in use, it could potentially be cancelled. Or in respect of a registered design, if the design isn’t novel, it can also be attacked. When it comes to unregistered rights like copyright, it’s important to ensure that the person/entity who instructed the letter actually owns the rights in the first place. Frequently the author of a particular work is not the party claiming infringement and sometimes parties fail to put in place correct legal assignments to actually transfer the rights.
Should it transpire that the rights in question are valid, then the next issue to assess is the infringement itself. Intellectual property rights each have their own tests for infringement and it’s vital that the correct test is properly applied. For example, the infringement of unregistered designs requires an act of copying whereas the infringement of a registered design doesn’t. Also, trade marks can be used to prevent confusingly similar marks in similar classes of goods (this is quite a broad right), whereas copyright can only stop the reproduction of the whole or a substantial part of a work (and therefore it’s a narrow right).
Once this has been dealt with we would then consider any specific defences, such as prior use for patent infringement or fair dealing for copyright infringement.
And of course, there are wider considerations beyond just the law. For example, what is the commercial reality of the infringement, have large numbers of goods been sold or is this a small product line? How much stock is left, who is currently selling it and what are the potential PR impacts of a dispute? Also, what is the claimant actually asking for? Damages, costs or just a removal of certain goods from sale?
Last but not least, we need to consider timing. Letters such as this frequently have short response deadlines and it’s important to ensure that your legal advisors have enough time to take your instructions and prepare a robust response. So, act quickly if you receive this kind of letter because failing to reply could lead to court proceedings and potentially an adverse judgment.
So there you go, a whistle-stop tour through the main considerations of a cease and desist letter. However, the take-home point is that legal advice is needed. Investing in the right advice from the outset can often shorten the length of any dispute and greatly reduce your exposure. Our aim is to always find the most cost-effective solution for you, without sacrificing what you’ve built or damaging your business.
This can be a fine line to tread but our team are on hand to help you through this process, so if you’ve received a cease and desist letter then please get in touch to arrange a free consultation.
As an added bonus, here are a couple of questions we’ve received in response to this post:
Can you write your own cease and desist letter?
Whilst anyone can write a cease and desist letter if they wish, given the legal complexity and importance of presenting your case well, it’s important to engage the services of a solicitor. At the very least, you should first seek legal advice to understand if your rights have been infringed and you have grounds for complaint.
How much does a cease and desist letter cost?
The cost of a cease and desist letter will vary between law firms, but the cost is typically between £500 to £1,000. Some firms charge per hour whilst others, like ourselves, offer fixed fee quotes.
Written by Will Miles, Solicitor