DMY: Don't Mess Yourself Dealing with a Cease and Desist (Part 2)Girl Friday Guide
August 21, 2018
The sun’s out. The coffee’s brewing. You’re going about your business. And BAM! You find someone ripping off your product, brand or hard-earned creative work - aka your blood sweat and tears!
In Part 1 of this blog, we looked at what to do and what NOT to do when you’re on the receiving end of ugly mail; a cease and desist letter. On the flip side, before you flip your lid or the bird at a potential infringer, there are some serious and practical considerations when you’re looking to send a cease and desist.
A cease and desist is intended to put a recipient on notice regarding an IP owner’s rights and request they stop the infringing conduct. Simply sending out a letter doesn’t guarantee that the recipient will immediately call it a day, meet your demands or that you have a valid claim to infringement. It’s also worth noting that the matter may escalate and need to be settled through further legal action. But often a cease and desist can be an effective first step in resolving the matter.
Calm your farm
Yes, it’s a bit of a reoccurring theme. But it’s important to keep a level head before jumping into any sort of monkey knife fight with an alleged copycat. Firing up immediately tends to bring with it a desire to fire off formal, and possibly rudely or poorly worded letters to the other side. Also, in this day and age of the keyboard warrior, publicising the matter and naming and shaming people isn’t generally recommended either. It can open a potential legal can of worms. And unless you’re not busy enough – why add a potential PR disaster to your to-do list? Not all publicity is good publicity.
Don’t get me wrong, I love a good rant, but do it behind closed doors. It’s cathartic and it’s what I did when I first became aware of my little imitator. But once you get that immediate emotion out of your system, it’s time to get your game face on. Get informed before you even think about getting shirty.
Do your homework
Dig. Dig like a dog with a bone. As soon as I became aware of the infringing party and activity, I went about digging up as much information about who they were. I was prepared to pony up and defend my brand, so I needed to gather as much intel as possible. I found out about the:
- history of the business;
- business/company name registration details;
- domain name registration details;
- when the website went live;
- any social media accounts such as a Facebook business page, Instagram, Twitter etc;
- any info about clientele that they had worked with or service providers they had engaged; and
- information about the business owner themselves through their personal social media accounts (yeah, I did some serious prospecting. The things I found through my Insta-lurking, reaffirmed my approach and benchmark to social media - would Mum be happy if she saw this?)
Doing my homework helped me gain insight into the business but also the person I’d be dealing with. Did they appear to be someone I could negotiate a sensible solution with? The immediate answer was no. But through to my diligence, I could pinpoint their pressure points quickly and work my strategy accordingly to get the commercial outcome I wanted.
Gather relevant evidence and information such as correspondence, images, contact details - anything that may be helpful to provide a professional heavy hitter to get them schooled up with the background to the issue.
Know your rights
“They’re infringing my patented brand?!” Wait what?
It’s just as important to do homework regarding your own position and business. Know what rights you have or possibly don’t have. Copyright, trade marks, patents are terms that are often used interchangeably or incorrectly. Understanding the nature and scope of your rights will help determine the right strategy to tackle the issue.
- Trade marks – do you have registered rights, or will you need to rely on common law rights?
- Patents – do you have a pending patent application or granted patent rights?
- Designs – do you have registered and certified design rights?
- Copyright – has an important or essential part of your creative work been used without your consent?
Before you lob any serious allegations of infringement at another party, it’s best to be sure of your rights and whether you’re in a position to point fingers and make any such allegations. If it turns out you don’t have the appropriate rights, an allegation of infringement can be considered an unjustified or groundless threat and you could be saying hello to the business end of a countersuit.
I won’t lie to you. On a scale of 1 to 10, I was pushing outrage-ville at 15. I was seriously p*ssed off. Especially when I worked out I was dealing with an emotional wrecking ball of a person on the other side. But I needed to focus on the commercial implications the infringing activity had on my business and how I wanted the matter to be resolved.
Unreasonable demands weren’t the name of the game here. Heck, I even offered to conduct a proper trade mark search, pro bono, to help with a rebrand, so they wouldn’t find themselves in the unfortunate position of having to rebrand again. I received a ridiculous counteroffer. You know the sort of offer you see on Shark Tank and wonder how the hell they came up with the numbers?*
But seriously take some time to consider:
- What’s the impact or potential impact of the infringing conduct on your business?
- Do you want the infringing conduct to stop entirely?
- Is it worthwhile offering up some sort of licensing arrangement?
- Is it reasonable to request a million dollars in unmarked bills as compensation upfront?
These are all commercial questions and not just emotional ones.
*Sidebar: If you’re looking to negotiate, it pays to have leverage. Despite having their hand caught in my IP cookie jar, my little copykitten requested I pay their costs to rebrand. But this is where my homework paid off. They had been in “business” for barely 72 hours, hadn’t registered a business name and launched a barebones website using a free Wix template. So I did some pretty quick maths. Calculator said no. It didn’t amount to the random and significant financial compensation that they had the nerve to ask for. Seriously homework folks = pay dirt.
Get a professional heavy hitter
In my case, doing what I do for a living meant I had the inside track on how to craft the appropriate cease and desist letter. But if you’re thinking of tackling a cease and desist on your own, my humble two cents would be: don’t do it. At least not before getting some professional advice in the first instance.
We will help you understand your rights in respect of the matter, advise you on the strength or weakness of the scenario, conduct some serious research and create the right strategy to tackle the matter in the most commercial way. Part of any a strategy is consideration of the style and tone of the letter. A heavy legalese-laden letter isn’t always necessary or the right approach. Being too casual and friendly can also backfire and you might not be taken seriously. It’s the Goldilocks letter – the one that’s just right for your circumstances that will hopefully get you the desired outcome.
Cease and desist matters require a proactive and strategic approach, rather than a purely reactive and emotional response. This is where engaging a pro is worthwhile. That’s not to say we don’t understand or empathise with you. Hello?! This attorney understands better than anyone!
In matters of IP infringement, every situation will be different and the appropriate strategy will depend on the particular circumstances. If nothing else, my golden rule is always: DMY. Don’t mess yourself.
Photo via Stocksy (This may have been a not-so-happy snap of me at the time having to deal with the less than flattering imitator).