Using Cease and Desist Letters to Protect Your Intellectual Property
A cease and desist letter can be an effective tool and the last line of defense for protecting your business' copyright, trademark, patent or other intellectual property (before resorting to more costly legal options). In short, a cease and desist letter is a formal request for another company or individual to stop an action that you deem to be an infringement of your IP.
It's recommended that you consult an attorney before sending any such communication (check out these tips on finding a good small business lawyer) in order to make sure that you
- have grounds to send such a letter and
- are not in turn exposing yourself to counter legal action.
That being said, you can, as a business owner, send your own cease and desist letter, so it's important to know how and when to send one.
When to Send a Cease and Desist Letter
Sending a cease and desist letter can be a great way to combat:
- Copyright Infringement. A copyright is a legally secured bundle of rights that you, the creator, obtain on your creative work. Included in those rights is the right to reproduce said work. If another party attempts to reproduce your work without permission, they may be violating your copyright.
- Trademark Infringement. Trademarks are generally more easily enforceable than copyrights, meaning you have more leverage in such cases and sending a cease and desist letter may be even more effective. Obvious trademark infringement may occur when another party attempts to use a recognizable sign, design or expression that your company has trademarked. Less obviously, though, someone using a confusingly similar sign, design or expression to one you have trademarked may also be committing trademark infringement. Both cases are strong candidates for a cease and desist letter.
Keep in mind, however, that the Fair Use Doctrine covers a range of instances in which another party may use copyrighted or trademarked material. These uses include teaching, research and news reporting, so long as the reproducer legally owns a copy of the work and is portraying it factually. Fair use also comes into play when a mark is not considered “likely to cause confusion” amongst consumers. Read more on Fair Use here.
How to Send a Cease and Desist Letter
If composing your letter from scratch, make sure it contains the following elements:
- An address to a specific person or position
- A thorough and specific recounting of your grievance, including dates, names and other relevant information
- If advisable by your attorney, a reference to the specific IP statute addressing the infringement in question
- A clear and actionable demand (e.g. the removal of a logo from a website), including a timely but workable ultimatum (e.g. "within three days")
- Your intended next steps should the letter's recipient not comply. This can be specific or as vague as the intention to "pursue further legal action"
Finally, keep in mind when crafting the tone that the letter should seem authoritative, but the end goal is not to punish its recipient but to reach an agreeable outcome (generally, them ceasing to use your IP without permission). As such, remember to remain calm and that simply being nice may be the best way to achieve the desired outcome, like in the case of this now-famous cease and desist letter from Jack Daniel’s.