DMY: Don’t Mess Yourself Dealing with a Cease and Desist (Part 1)

be nice cease and desist

Good mail is a delivery from Net-A-Porter. Bad mail is a bill. Ugly mail is a cease and desist letter. And ugly mail tends to trigger two reactions: breaking out in cold sweats or losing your sh*t John Wick style.

It’s not unusual for me to see these reactions when I go into bat for clients with cease and desist matters. Funnily enough, I recently found myself in a Black Mirror episode of having to issue a cease and desist letter to defend my own IP rights. I needed to deal with the matter objectively as I would for any client. But I’m not going to lie. It’s effing hard to be objective when you’re pissed off.

Sure it was probably a simple mistake by the other party. Regardless, it presented serious commercial issues for my business. But they say you catch more flies with honey. So I didn’t fire off the standard Armageddon-like letter immediately. I politely outlined my concerns and offered up an invitation to resolve the matter. I even offered to help with trade mark searching so they wouldn’t find themselves in this unfortunate position again. Pretty reasonable no? But my business owner to business owner approach was met with a seriously snarky Mean Girls attitude throughout the entire experience.

So, here’s a general guide of what to do (and what NOT to do) if you receive a cease and desist letter.

What is a cease and desist letter?

In matters of IP infringement, a cease and desist is generally intended to notify the recipient of an IP owner’s rights and request the recipient stop their infringing conduct. The letter will often include an outline of demands, a proposed resolution or even a request for compensation for past infringing activities. However, most disputes can be resolved at this level without the need for further legal action. How you choose to respond and conduct yourself in the matter, can be a deciding factor in how quickly things escalate.

Keep calm and read on

It’s an understandable reaction to want to defend yourself and your business against allegations of wrongdoing. But as my bestie would say: Sleep on it. Resist the impulse to launch an immediate emotional response, or worse taking things public. Naming and shaming or publishing a tirade on social media, makes for really bad PR (#CockyGate anyone?). Importantly, anything you put in writing can come back to bite you at a later stage, especially if the matter escalates and you get “Litt Up” in legal proceedings. Take a moment to simply read and consider the potential issues raised in the letter.

Ignorance is not bliss

Standing still and hoping Monday won’t see you – not a legit way to avoid the start of a new week. Same goes for a cease and desist. Ignoring it doesn’t mean it’ll go away. While you’re under no immediate obligation to respond or comply with a cease and desist, that’s not to say you shouldn’t take it seriously or simply ignore it. Your response or lack thereof could result in legal proceedings being commenced against you. If you feel the need to respond, consider a brief response to the sender to acknowledge receipt of the letter only. Better still, let a professional handle any communications for you.

Don’t DIY

The responses I received from my not-so-friendly pen pal, were clearly a DIY or copy and paste job. From the misunderstanding and incorrect application of trade mark law to the inclusion of some Big Little Lies. For those playing at home, fibbing in writing is a serious no-no. But it was pretty darn entertaining because you know, I don’t do this for a living or anything? So their bluff got called out pretty quickly.

IP infringement matters can be incredibly complex. Trying to save some pennies by handling the cease and desist matter yourself in the first instance, can prove more costly in the long run.

Take note of any requested deadlines for a response and get advice from a qualified and experienced legal professional ASAP. A pro will help:

  • Clarify or identify the correct and applicable legal issues;
  • Advise on the strengths and weaknesses of the matter;
  • Advise an appropriate strategy to address the matter, as well as the associated risks and costs; and
  • Prepare an appropriate and considered response on your behalf.

Pick your battles

Aside from the legal issues that may be raised, consider the commercial implications for your business too. Does the requested action or demands disrupt your business significantly? Is it worth your time and money fighting an uphill battle? Or is it better spent resolving the matter amicably and pragmatically? It may come down to a question of economics and business smarts. Again, this is where a pro can help. Our focus is to help you make an informed commercial decision, rather than a purely emotional one. Defusing and resolving the situation without escalating it further can be a win-win for everyone involved. Chances are the other party doesn’t want to spend up big with legals either and would rather get on with business too. And if you have to cop it on the chin, take a positive and business savvy cue from Zoe Foster Blake – this boss lady is all class.

Dealing with cease and desists effectively calls for a little less John Wick and a little more John Shaft: Don’t let your mouth get your ass in trouble. Keep it commercial, keep it classy and DMY.

If you find yourself the addressee of some not-so-fun mail, please get in touch. We’ll work to find a proactive rather than a reactive solution for you and your business.

In Part 2, we’ll walk through what to do if you’re looking to send a cease and desist letter.

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