Here’s a listing of the elements of a cease-and-desist (C&D) letter. It’s derived from a page that was once on the Chilling Effects website but the listing appears to be gone. See Maya Alexandri, What to Expect When You’re Expecting to Be Sued for Trademark Infringement, CHILLING EFFECTS.
In any case, the page from Chilling Effects was geared towards trademark C&Ds. I’ve adapted that listing towards IP C&Ds in general, whether based on trademark, copyright, or other areas of IP law. I’ve added my own comments and made some adjustments to the listing, such as adding # 5. Expanding upon the Chilling Effects “gorilla” metaphor below, I call the senders of IP C&Ds “IP Gorillas.”
In reading the info below, keep in mind that oftentimes C&Ds are appropriate. The world is filled with IP infringement that cannot be excused through fair use. But oftentimes, IP rights owners overstep the bounds of their rights and make demands that are at best questionable and are at worst frivolous. See, e.g., Jennifer M. Urban & Laura Quilter, Efficient Process or ‘Chilling Effects’? Takedown Notices Under Section 512 of the Digital Millennium Copyright Act, 22 Santa Clara Comp. & High Tech. L.J. 621 (2006), available on SSRN.
Even though the tone of the listing below reminds us that in the real world, C&Ds from IP gorillas are sometimes frivolous and sometimes nasty, you must keep your own draft C&Ds for my class respectful and in a professional tone. You should do so in the real world as well. Any letter you write may end up on the internet, or worse, before a federal judge. So if you have a legitimate demand, that’s fine, but don’t be an IP gorilla.
Here are the elements of a typical C&D, generally applicable to all C&Ds regardless of whether they are meritorious or not. Note that a C&D is not the necessarily the same thing as a “takedown notice.” A C&D is sent to a wrongdoer demanding that the wrongdoer comply with any demands. A takedown notice is a special form of demand sent to an online service provider pursuant to Section 512 of the Copyright Act. Takedown notices have special statutory requirements (some of which are detailed in this article) and are covered in a different part of our course.
Elements of a C&D:
(1) Gorilla chest thumping.
Comments: Why do gorillas thump their chest in the wild? To show their power! Similarly, when an IP gorilla sends a C&D, it does the same thing, boasting of the powerful IP rights the claimant purports to own. They might be copyrights, trademarks, others, or a combination. The C&D often also includes a recitation of the value and fame of the rights along with relevant registrations.
(2) Recitation of facts.
Comments: What do IP gorillas say when they want to put interlopers in their place? We’ve been watching you! We know what you’ve been doing! IP gorillas do the same thing. Pretty scary, huh?
(3) Citation to cases and statutes.
Comments: What else do IP gorillas say? The law is against you and you’re going to lose! Recite relevant law here. The depth of the legal discussion will vary depending on the claims and the recipient.
(4) A laundry list of potential remedies.
Comments: How do IP gorillas get you to comply? If you don’t comply, you are going to lose, and it is going to hurt. Badly. List the remedies that the law may allow. Depending on the law and facts, this might include monetary relief (such as the claimant’s losses/the infringer’s profits), statutory damages, attorneys’ fees, an accounting, and/or injunctive relief. The demand might also include a deadline for the recipient to act, as well as the potential consequences of non-compliance, such as a possible lawsuit.
Comments: Sounds like IP gorillas can be bullies. You ever have a bully demand your lunch money? IP gorillas can be like that, too. A typical C&D lists the demands. The base demand is “stop what you’re doing.” Other demands may include transfer of domain names and other property, destruction of items, and money.
(6) Reservation of rights.
Comments: Sounds like IP gorillas can be bullies. Sometimes a bully will say “I’m going to get you after school!” That’s a vague threat of more misery to come. That’s kind of what a reservation of rights clause does. It essentially says that “we reserve any rights that might exist whether we list them here or not,” which may include the right to beat up the infringer after school.
Added March 11, 2015