What to Do If You Receive a Cease and Desist Letter: Legal Steps

[00:00:00]hey this is attorney elizabeth potts weinstein and today we're going to be talking about what to do if you get a ceased and assist letter so what is a c synthesis letter typically what this is is someone sends you a letter but it could be an email it could be a pdf attached to an email that states they want you to cease and desist from engaging in some behavior typically the most times it's going to be from infringing their trademark or infringing their copyright i'm going to post a video up there that talks about what the copyright wants to train my but that's most of the time it's going to be something about intellectual property sometimes you also get a season assist letter because they say that you're defaming them or you're violating a non-disclosure agreement or something else like that most times it's going to be about intellectual property and typically for your average person your average business owner to be about trademarks and copyrights and what the letter will have in it or the email we'll have in it is they'll state who they are what they own the trademark of the copyright or whatever it is what they think that you're doing that's infringing it the photo you posted the article you wrote the way that you have their logo whatever it is and their demand their demand could be stop doing it that's what they are typically that's the most likely thing they're demanding they may also be demanding money they may be demanding that you give them the domain that you bought so they could have other specific behaviors that they want they typically will also have a date that they want you to reply to them or they demand that you stop doing it or they're gonna take you know legal action or something like that against you so what do you do step number one is have a cup of tea go for a run go punch a punching bag go water your plans like whatever would be appropriate for you so you can chill out it may be that you have to change things about your business or about your life in response to this but if you're having a freak out about it this is not the time to make the decision on what you need to do you're going to need to do some research you may need to talk to an attorney or some other business advisor to come up with a strategy and how to handle it so this is not the time to do something like random off the cuff this is the time to process what's going on and gather information so the first step is for you to do whatever it is that you need to do to chill out so you can move on to step two step two though is also not exactly something that you're going to do it's what you're not going to do do not complain about this on social media don't go on make a tick tock video about it don't make a youtube video about it don't post something on your instagram stories even stories that disappear in 24 hours don't put on twitter whatever do not publicly talk about this yet you may eventually decide to go public on this but that needs to be a specific strategy that you've made a conscious choice about not this random upset thing if you get a lot of your support from online you know community it is very tempting to go to that online community to complain about this but the thing is is that you don't want whatever you say online to be used against you later so the best thing to do in the beginning is to not talk about this on social media not talk about online whatever public venue that you have until you've made a choice about how you're going to handle this now step three is you're not going to ignore this this is another thing that that people can do is they get this letter or email and they just choose to ignore it completely because they don't handle it and they're overwhelmed do not ignore this we're going to have the next steps where you're of the things that you're going to formally do if you need more time like if they if they sent you this letter today and today's tuesday when i'm recording this and the deadline is thursday or friday or something okay there's no way for you to be able to handle this by that date you need you may need to talk to a lawyer you know you have to do some research etc so it is incredibly reasonable for you to just send an email to whoever sent you the letter and say i received your letter i need time to speak to my attorney so and we'll respond when we can the idea is that you want to acknowledge that you received this letter so they don't keep doing things and suing you and all this kind of stuff and that the reason you're going to delay is that you're going to be consulting with an attorney you may end up not consulting the attorney but you need the chance to and nobody can go hire a attorney if they don't have one already and have it an answer within like one or two or three days that's just not realistic and other lawyers know that and so you don't necessarily have to say the date that you're going to get back to them you could but but the idea is you're you're going to speak to an attorney you're going to speak to your advisors whatever you want to say and you'll get back to them after you do that you may end up deciding not to get back to them once you have realized that maybe your strategy however you want them to know that you are processing this so they're not going to think that you're just ignoring it and then they file a lawsuit on friday when they don't hear from you step number four is to do your own research on this issue okay now i'm not saying this is probably where you want to stop but it makes sense to just start with your own little research project on this letter they sent you so when they send you this letter it's going to state what they think their intellectual property is let's say they say they have a trademark okay do they actually have a trademark sometimes people send letters and they don't have a trademark they haven't registered a trademark or they register trademark in canada but not in the united states and you're in the united states and all your sales in the united states so who cares about this canadian trademark what is their trademark on like is it actually what they say it is what goods and services does it cover what class is it in you want to get the details of that that's you can go on the trademark office's website and look up any trademark and search for it and find that trademark similar with copyright you want to figure out did they do they have copyrighted rights on this work that they're claiming and do they have they register the copyright you still have copyright rights on any work that you've created that is a creative work that's memorialized in a tangible format even if you don't register it with the copyright office however you can't sue someone to register with the copyright office so that may be a thing that you want to look into is did they actually register it for both of these with the trademarks and copyrights do they actually register it you're not just looking at do you actually own what they say they own even though that's obviously important you want to look at how important are ip writes to them how much do their act do they have together do they if you look them up on the trademark database do they own like 20 different trademarks on this same thing in all these different areas they're kind of hardcore about trademarks versus they applied for just one what you can kind of tell on there what kind of budget do they have you know how big are they and this goes into the next thing you want to research is you want to research who sent you that letter from the perspective of who owns the the trademark copyright or whatever it is small company big company individual owner who send it to you did the person who sent it to you was it is it the owner of the company or did they hire an outside lawyer look up call the website of that law firm is it a tiny little law firm that has one two three four attorneys or is this a law firm that has like a thousand attorneys all over the world that's going to give you an inkling of the kind of budget the other side has how serious are they about this you may also just want to google that business you may want to google their trademark are they going around suing all kinds of people are people talking about this on social media you also want to look at the letter itself so sometimes cease and desist letters are just an email from the owner and they don't have any legal stuff in there it's just you know hey on this trademark and you're infringing it sometimes they're actually very nice um that's gonna be very different than if they hire some big giant law firm and they send you a 15 page long letter that has all kinds of legalese that's going to show you the kind of budget they have that's going to show you kind of person you're dealing with because there are times where you may get a cease and desist letter and you're totally doing it you're you're the wrong and you need to stop doing it but most of the rest of the time this is just the beginning of a negotiation and you want to size up the other side you want to size up how much money they have how big of a company they are you want to size up the kind of dis person the decision maker is are they the kind of person who is very litigious very competitive are they the kind of person who's a collaborative person where you can definitely negotiate something that's a minimal to both sides that's the kind of things that i do when i'm researching this for clients is trying to figure out who are we actually dealing with so we can know how to approach the negotiation in that situation and now we get to step five which is talking to your business advisors your attorney going and hiring attorney and getting some advice you're to be getting both hopefully you can get both legal advice so do they actually have a good argument do they have a slam dunk argument and you are the one that needs to back down do they have zero argument and you can just ignore this completely because what they think they have a trademark on is clearly genericized and i have had that happen before we're almost like okay sue us because we will 100 win the idea is you want to know what the legal argument is but you also want to look at from a business perspective talking to your business advisors and thinking about it on your own what kind of a budget do you have how long have you been using this thing if you just started your business yesterday and you don't have any clients or customers yet you just put up your website yes you've invested a bunch of money in developing website and branding and things but you don't have a lot of good will built up yet you could pivot and change to a new name versus you've been in business for five years you have a huge amount of goodwill built up there's traffic going to your website that you may have the budget and it may make sense strategically to fight this versus the someone who just started their business yesterday does it make sense for you to fight this in the industry that you're in looking around at the rest of your industry what how will this impact your reputation how will it impact their reputation so it's always important with any legal decision to look at both from a legal perspective and a business perspective i also want to make sure you look at it from a personal perspective too how up are you for this fight what else is going on in your life sometimes when faced with legal issues the lawyer will be like yeah you know you have a great argument this is a slam dunk thing you could totally win but you know what you are battling cancer right now you're going through a divorce you have some other health issues or personal issues or something where you do not have the time and energy for this you need to resolve this in the most you know efficient and low stress way possible that's different than if you you have the capacity to handle this and you need to be real about this from a personal perspective so you can make a good legal and business decision now step number six is going to be taking the action so what kind of actions could you possibly take number one is you could just ignore it i wouldn't ignore it as the first step i would ignore that once i've analyzed everything but sometimes it makes sense to just ignore it if the other side has a zero argument okay what they're arguing the thing that they say they have a trademark on for example is clearly generic size there there's other people who are much bigger than you and have much bigger budget than you who are also using it i don't know if they're trying to go after all of them but there's no possible way they're going to be able to win it may make sense just be like yeah i'm not even going to reply to this sometimes you actually tell them we're not going to do what you say and sometimes you just don't say anything at all second is you reply yourself directly this can work really well if you're going to be opening up negotiations directly with the other business owner so the business owner sent you the email about it and you're going to be opening up negotiations directly with the other business owner and you go back and forth in kind of a more casual way you do want to make sure to understand that anything you say to the other side could be against you in a court of law and all that but that can be a great way to work out a resolution that is advantageous to both sides also sometimes maybe you infringe someone's copyright for example and you didn't even realize it i've had a client one time where they hired outside contractors to create blog posts and that outside contractor created the blog post and put in photos and they were plagiarizing stuff and stealing photos off the internet the business owner got a cease and desist letter and when they investigated they realized it there it was copyright infringement you know they were in the wrong and they were able to go to that individual other business owner and say you know we're totally taking this down we had hired a contractor obviously we weren't supervising that contractor enough we now have learned all that so then we won't do it again we're very sorry if you're negotiating with just the other owner and they're very cordial that may be something that you can definitely do sometimes though they're not cordial and they actually want the damages from it how you calculate damages in a trademark versus a copyright i mean that that's a bit beyond the scope of this particular video but in many cases if someone actually has registered the copyright within three months of when they created the thing that's creative work then they can get something called statutory damages which are they don't have to prove the damages it's just like calculated and it could be hundreds of thousands of dollars which really sucks if it's just some picture on your blog right so that's something to be aware but you can still usually negotiate that financial um settlement the next option is to have an attorney reply for you so an attorney would write a letter usually you the attorney's gonna be writing a letter sometimes it may be still a fairly informal letter and sometimes it may be a 10-page long thing that has all kinds of legalese it really descends on the other side is was the other side another attorney where and kind of an old school attorney where you need to do some things that are very uh complicated or is the other side just the business owner um or an attorney that you may know and you know that they're very reasonable you can reply in a different way the idea is you're hiring an attorney to do it this works well if the other side is a law firm the others had hired a lawyer this works well if you cannot handle this dealing with this and you need a lawyer to handle it for you and this also works well it is one of the best decisions if you're trying to make a sophisticated legal argument so maybe you're trying to allege fair use you know you're you're doing something that isn't a slam dunk argument but it you think you could win it's on something much more nuanced so complicated you may need an attorney to handle that negotiation for you another option is to actually file a lawsuit or do some kind of legal action before you even reply or in conjunction with your billing so you can file your own lawsuit against them to like declare that you didn't infringe it's kind of this weird backwards lawsuit you can also go to the trademark office or the copyright office to have their intellectual property declared invalid um or canceled it depends on what it is and what the process is and what the circumstances are but you can do for affirmative things and this may make sense if you have the budget and if this is really important to your business if this is vital right so if it's a picture on your blog probably not but if it's your trademark and you've been using this for many many years and you have a huge amount of goodwill and these other people think they're that you're averaging their trademark it may make sense to fight it obviously you'd only do this with the with a an attorney giving you advice and they'll be the one handling that for you the next option is taking it public pr you may do this in conjunction with the other things but typically pr is a strategy only when you're the little guy and they're the big guy so they're being a bully um they're being ridiculous they're coming after you because they have the money to file a gazillion lawsuits and pay a gazillion lawyers and you're the little guy and that makes a good story i mean you have if you're good at udp as pr method to and you're only doing that as leverage over them leverage over them to get them to settle and go away and sometimes you're doing it kind of as an overall strategy for uh everyone in your industry that they're coming after or the laws to be changed you know that kind of thing but if you're doing a pr response you have to have a good story you have a good story about how they're the bad guy and you're the good guy and they're this big giant bully and they're coming after you trying to drive you out of business and how terrible that would be for ordinary people that they couldn't get help from you anymore i mean there there needs to be a story that it's not just about you it's about how they're doing bad things to the whole world in this way you may want to talk to someone who does pr stuff to handle this not always um sometimes i've seen ones with cease and desist letters where what they've done is they actually have an attorney representing them and they post the cis letter they got and they post their reply from their lawyer both of those things publicly online and that made sense in their industry it really depends upon the politics of your industry and the dynamic between you and the other side the last thing you may want to do is give it up give in if you just started your business and while you have invested some time and money it's not that much if you don't have the time or energy to fight this or the money it may make sense to not fight this the thing is though you want that one agreement from them theoretically a signed agreement but at least some kind of writing even if it's just emails stating that if you do these xy things they this this is dispute is over and they're not going to sue you you want something that says that you don't want to just give it up and you want them to actually effortlessly say that not just talking on the phone you want at least an email or a document perfect in a perfect world they would sign something sometimes it can be difficult to get someone to do that but if you want this to be ended you want that in writing and that may make sense from a legal perspective that may make sense from a business perspective that may make sense from a personal perspective now the last step once you've taken action and hopefully gotten this resolved is to learn from what just happened what are you going to change about your business about your behavior in the future about your intellectual property strategy all that to make it less likely that this will happen again and you can never make it impos you know so it will never happen again guaranteed but does it make sense for you to have your own trademarks or register your own copyrights does it make sense you have different policies like like i was telling you about my client who hired independent contractors who just ran amok and do they need to regulate what those they're doing review their work better have in the agreement with the independent contractor hopefully you have a written agreement with all your contractors where that contractor stays actually warrants that their work isn't infringing and indemnifies them against future lawsuits i have another video about identification so you can check that out there the idea though is what can you do in the future to either make it less likely for this to happen to make it so someone else is responsible like the independent contractor or to have your own affirmative intellectual properties that you can use as part of your defense again this is attorney elizabeth potts weinstein if you found this video helpful give it a thumbs up subscribe for more videos like this you can join as a member if you want to support the channel so i can make more videos like this for you and of course feel free to leave a comment asking questions about what i talked about in this video and i will try to point you in the right direction thanks a lot for watching bye