Is a cease and desist letter enforceable? Common issues and best practices

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The path to stopping infringement of your Intellectual Property (IP) rights begins with two key questions: "Should I send a cease and desist letter?" and "Is a cease and desist letter enforceable?"

The IP laws in most jurisdictions make it incumbent upon any plaintiff who alleges patent infringement or a similar IP rights violation to provide judges and other presiding officers with extensive evidence supporting their claim. A patent or trademark owner cannot simply initiate proceedings for infringement and expect to come out victorious without meeting the evidentiary standard for infringement outlined by the laws of the relevant jurisdiction. For example, where intentional infringement is a requirement either to succeed in an infringement claim or to be able to claim (additional) damages, hard proof of intention is necessary. One way of obtaining that evidence is to show that the infringer was sent a letter notifying them of the plaintiff's rights and that the infringement continued despite that guilty knowledge.

You may know that your IP rights have been infringed, but to stop patent or trademark infringement in its tracks and boost your chances of earning appropriate compensatory restitution, it is vital to approach the matter in a methodical, step-by-step manner which includes, in most instances, sending a carefully prepared, precise cease and desist letter.

What is the purpose of a cease and desist letter?

In the context of IP infringement, a cease and desist letter is a notification usually sent from an IP attorney to an alleged infringer, setting out the IP owner's rights and explaining which particular actions of the recipient constitute infringing conduct. The letter calls on the alleged infringer to stop the infringing conduct and delineates steps (or "demands") with which the alleged infringer must comply to avoid formal court action. To this extent, these letters constitute formal notifications to the person or business receiving them.

For legal reasons, sending a cease and desist letter is often the first step to address infringement allegations. Firstly, the letters notify the recipient of the owner's rights, the fact that they are being infringed, and the consequences of not adhering to the terms of the letter. Furthermore, sending such a letter sets out the basic cause of action in writing and is likely to form part of the court record if the matter remains unresolved. Perhaps most importantly, the letter could be effective in stopping the alleged infringement if the recipient agrees to the letter's demands or if the dispute can be settled through some other arrangement.

In many jurisdictions, it is compulsory to engage the defendant in pre-litigious steps, and failing to do so may have repercussions such as the plaintiff not being able to recover costs. In other jurisdictions, a plaintiff would not have a cause of action without showing that an attempt was made to resolve the dispute via mediation before approaching the courts. Lastly, as mentioned above, the letter serves as evidence to prove infringement, or, if a particular statute requires intentional infringement evidence, it demonstrates that the infringer knew the plaintiff's rights should their offending conduct continue after receipt of the cease and desist letter.

When is a cease and desist letter the right approach in an IP dispute?

Due to the aforementioned burden of proof associated with patent, trademark or copyright infringement, it is generally best to use a cease and desist letter as a test of sorts.

You want to see how the recipient reacts: If they put a stop to their infringing activity, then you are home and dry. Perhaps it was merely a misunderstanding, or they did not know they were infringing. If the receiver of your cease and desist letter claims it was a mix-up, they may well be telling the truth. If they stop the infringement after receiving the letter, their honesty is a moot point, but they may merit further monitoring.

Or it could be the other way around — the recipient might be able to argue fair use of your IP reasonably. If your lawyer were to review their explanation and agree, your initial cease and desist letter has prevented you from going down a long, costly route of unnecessary litigation. That said, fair use is usually relevant only in a limited number of claims: i.e., only in those jurisdictions where copyright laws permit such a counter-argument.

Sending a cease and desist letter could also be ideal where the breach is not statutory, but relates to contractual matters such as a trade secret that is not in the public domain and is protected by a non-disclosure agreement (NDA).

Last but not least, it may be legally necessary for you to send a cease and desist letter in certain jurisdictions if you plan to sue for damages. Sending such a letter is a befitting good-faith gesture that, if ignored by the infringer, serves as evidence of bad faith on their part. This can affect the extent of damages awarded and help determine whether the infringer must pay the full costs of the lawsuit.

What legal weight does a cease and desist notice have?

Strictly speaking, a cease and desist letter is not legally binding because the recipient can choose to ignore it. However, it is a valid legal document that establishes a precedent of a plaintiff's grievance. Usually, the letter sets a time limit for the recipient to comply with the request to desist from the offending action — or deliver an appropriate response if they believe the letter was sent in error.

By contrast, compliance with a court order — following an application in a jurisdictionally valid court of law for an injunction signed by a judge — is entirely mandatory. A person ignoring or blatantly defying such an order not only exposes himself to definite lawsuit liability, but may also be considered in contempt of court.

What if the cease and desist letter you send is ignored or violated?

Suppose the response period established in the cease and desist letter passes without a response or positive action from the allegedly infringing party to stop the infringement. In that case, it is time to take more serious legal action. Consult with an experienced IP lawyer and determine the best possible steps to proceed.

Make no mistake: All of these proceedings are complex, and for the best chance of success, you want an IP law firm with a global presence and comprehensive expertise like Dennemeyer & Associates on your side. We are well-equipped to stand up for your IP rights in any jurisdiction.