Cease-and-Desist Letters: Necessary or Discretionary?
What is a cease-and-desist letter? Do I have to send a cease-and-desist before filing suit?
A cease-and-desist letter is a commonly used pre-litigation tool for protecting intellectual property rights. The purpose of a cease-and-desist letter is to assert your rights to your intellectual property and to put another party on notice that they are infringing on those rights. Typically, a cease-and-desist letter will request (or demand) that the recipient stop the infringing activity or face legal action. A cease-and-desist letter is not, on its own, a legally enforceable document; however, it may serve as evidence of notice and continued infringement should a lawsuit eventually be filed.
A cease-and-desist is, generally, not required prior to taking other legal action: whether a cease-and-desist is required or optional varies by jurisdiction. Sending a cease-and-desist before taking other action is advisable in most situations for a number of reasons: (1) it puts an infringer on notice of their infringing activity and the consequences of continued infringement, making further infringement an intentional act by the infringer; (2) it provides an opportunity to resolve any dispute amicably, and may even provide an opportunity for licensing your intellectual property to the infringer; (3) it demonstrates to courts that you attempted to resolve the matter with judicial efficiency in mind, i.e., without making unnecessary use of the court’s time and resources; and (4) it may avoid the costly, time-consuming process of litigation.
Cease-and-desists need not be combative in tone. Netflix made headlines in 2017 for a cease-and-desist it sent to the Chicago proprietors of a Stranger Things pop-up bar, which referenced themes from the show in politely (but clearly) requesting they cease infringing on the Stranger Things trademark. [1] The goal of a cease-and-desist is, after all, to protect your intellectual property by getting an infringer to stop the infringing activity: not every circumstance calls for heavy-handedness. Starting with a polite but direct request does not preclude you from taking a more contentious tone—or from filing suit—should the infringing activity continue.
Whatever the tone of your letter may be, a cease-and-desist should be sent promptly upon learning of infringing activity, as it is important to demonstrate that you are actively protecting your rights.
Do you believe another person or business is infringing upon your intellectual property rights? Contact us here to discuss sending a cease-and-desist letter and other ways to protect your rights.
[1] The Atlantic, Not a Regular Cease-and-Desist, A Cool Cease-and-Desist (Sept. 21, 2017).