Caution – Cease and Desist Letter

As the owner of intellectual property (a patent, copyright or trademark), you have invested significant time, energy and resources into protecting your patent, copyright or trademark.  What do you do if you find someone is violating your patent rights, for example?  Do you file a lawsuit immediately?  Do you contact the police?  Do you contact the other party and call them names, jump up and down and demand they stop?

A Cease and Desist Warning Letter can cause you to be sued if you are not careful.

A Cease and Desist letter is one way to try and resolve a dispute without the cost and time of a lawsuit; However, like a gun which points both ways, it can also cause you to be sued.

Typically, the first step after discovering someone using your intellectual property is to hire an attorney to send notice of your rights to the other party in the form of a Cease and Desist Letter.  However, sending a Cease and Desist letter may cause you to be sued based on the language in the letter.

What is a Cease and Desist Letter?

A cease and desist letter is a letter, email or other document which informs another of a right which is being violated and typically includes a demand that the unauthorized activity stop.  The tone of these letters can be informative, friendly, direct or hostile.  However, regardless of the tone, it is the content which you should pay attention to. 

In some cases, after the Cease and Desist Letter is received, any continued infringing activity can be considered willful and subject the infringer to heightened monetary damages.  This means, if you continue to infringe after receipt of the Cease and Desist Letter, you may have to pay more money and in some cases may be required to paying costs and expenses, including their attorney’s fees. A Cease and Desist Letter is one way to try and stop the infringing activity without filing a lawsuit.

Sample Cease and Desist Letter

A typical Cease and Desist Letter will include language about the intellectual property rights which are being violated such as the Patent, Copyright or Trademark rights.  In addition, the typical Cease and Desist Letter will identify the unlawful activity, such as the use of the copyrighted work, the trademark or patented invention.  A typical Cease and Desist letter will also demand that the infringement stop or cease.  Finally, the typical Cease and Desist letter will often identify what will happen if the infringing activity is not stopped, the Demand. 

In some cases, the Cease and Desist Letter will provide information about resolving the dispute with a proposal of settlement.  Cease and Desist Letters are typically an informal attempt to resolve a dispute related to a patent, copyright or trademark without the formalities and high cost of litigation.  However, Cease and Desist Letters can also create some problems for the party sending them.

Warning about Cease and Desist Letters

Often time a Cease and Desist letter will inform you that a lawsuit may be filed against you if you fail to act in the desired manner.  The letter often indicates that if you fail to cease the specific activity or take specific steps within a specific time frame, you will be sued.  In some cases, this may result in a resolution of the matter with the other party entering into a settlement agreement to avoid litigation.  However, the threat to sue can also subject the party making the threat to a lawsuit, simply based upon the threat to sue.

In a recent court case, the Federal Circuit ( a federal appeals court) indicated that a patent holder who sent a cease and desist letter was subject to a lawsuit by the party who received the letter, at the location where the letter was sent.  Thus, if sending notice in the form of a Cease and Desist Letter, you should seek the advice of an attorney who has experience crafting such notices to help minimize the risk of being sued as a result sending the letter. 

If you are interested in sending a Cease and Desist Letter or if you have received a cease and desist letter, please contact our office at 1-888-472-0020 to speak with one of our attorney’s about your options.