There are essentially three main tools available enforce your rights in cases of copyright infringement: Sending a Cease and Desist Letter, sending a DMCA takedown notice and, of course, filing a copyright infringement lawsuit. Let’s take a look at the benefits and caveats of each one in this three-part series.
Cease and Desist Letters for Copyright Infringement Claims
Often the first step copyright lawyers take is to send a Cease and Desist Letter to the infringer. A Cease and Desist Letter not only has the potential effect of stopping the infringement, but a properly-worded cease and desist letter also puts the infringer on notice of your rights and claims (why this is important below).
The Cease and Desist Letter should contain the following content:
- A copy of your copyright registration;
- Comparison images of the original and infringing works;
- Mention of relevant copyright laws and relevant copyright damages sections, particularly if you have a timely filed registration; and
- A statement that the infringer is violating your rights;
Your Cease and Desist Letter should contain the following demands:
- The infringer should cease the creation, manufacture, promotion, sale and distribution of the infringing item or items;
- The infringer should recall the infringing product(s) from retailers and distributors, if applicable;
- The infringer should provide the manufacturing source or the name and contact information of the manufacturer for the infringing item (if applicable) so you can pursue and cease production at the source; and
- The infringer should provide an accounting of the infringer’s sales profits and inventory;
- The infringer should pay you a reasonable settlement fee.
You want to demand that the infringer accomplish this within seven to ten business days from receipt of your letter, or give them an otherwise firm deadline.
Why is sending a Cease and Desist Letter often the first action a copyright attorney takes in the case of copyright infringement? Because a properly-worded Cease and Desist Letter puts the copyright infringer on notice of your rights. This means if the Cease and Desist Letter is ignored and infringement continues, you may be entitled to sue for willful infringement damages. Statutory damages themselves under the Copyright Act range from $700 to $30,000 for non-willful infringement, but may be up to $150,000 for willful infringement. So it definitely pays to establish willful infringement.
TIP: Most Copyright litigation lawyers are willing to send a cease and desist letter on your behalf for free if you have a valid registered copyright and are willing to sue if the need arises (because we make your infringer pay our attorney’s fees).
A Cease & Desist Letter may also resolve issues of infringement quickly and without the need for litigation. So it can be a cost-effective way of resolving infringement cases, getting product off shelves and images off websites, and eventually getting you some money for your troubles.
Potential Problems with Sending a Cease and Desist Notice
Newton’s third law states that “for every action, there is an equal and opposite reaction.” When you send a cease and desist letter, be prepared for both the positives and the negatives that may follow. Some examples of negative reactions may include:
Declaratory Judgment Actions – A declaratory judgment is a legal determination from a court that resolves disputes and determines the legal rights of the parties. In a copyright action, it is typically used to determine if the copyright registration is valid, or to determine whether or not infringement occurred. If you send a cease and desist letter to someone, and the recipient believes they are not infringing your work, or that you are not the copyright holder or do not otherwise have a valid copyright, they may file an action in Federal Court seeking a declaratory judgment as to the rights of the parties. The main disadvantage here is that it gives the letter recipient the choice of venue, since they would be filing a lawsuit first.
Choice of Venue – The venue is the location of the courthouse where your case is heard. So, for example, if you are a photographer in New York, and you post one of your (properly registered) photos on line, then a year later you walk into Old Navy and see your photo printed on some T-shirts for sale without your permission, you’d probably be upset. If you filed a lawsuit, you could file it where you live in New York. But if you choose to first send a cease and desist letter to Old Navy, since they are headquartered in California, they may file an action seeking a declaratory judgment in California. Now you may have to fly to California (and pay your lawyers to fly to California) for court appearances and depositions.
Now let’s take a look at another copyright enforcement tool, the DMCA Take-Down Notice.