It’s an unfortunate reality that illegal and grey market activity within e-commerce marketplaces is rampant. As we’ve covered extensively in previous GreyScout blogs, activity such as, product diversion, counterfeiting, intellectual property (IP) theft and even triangulation fraud are all ongoing threats to e-commerce brands.
In January, authorities in the United States seized $2.88-million worth of counterfeit Cartier, Louis Vuitton, and Versace goods. Seizures like this are becoming common occurrences, as consumers are spending billions every year on goods that violate the IP rights of name brands.
When it comes to taking action against IP infringements, e-commerce brands need to consider adding another valuable tool to their brand protection arsenal: the cease and desist letter.
What is a Cease and Desist Letter?
Simply put, a cease and desist letter is a legal document that orders a party to halt certain activities immediately under threat of legal action. They are often used by businesses to protect IP, such as trademarks, copyrights, product designs, and patents.
If you discover that a party is using your IP without permission, sending a cease and desist letter can be an effective way to stop the infringement. For example: if an e-commerce vendor begins selling a t-shirt with a popular artist’s work printed on it without their permission, the vendor is very likely to receive a cease and desist letter from the artist or their legal team. It is one of the first step a brand can take to protect its IP rights.
Building a Case: When to send a cease and desist letter
Before sending out a cease and desist letter, it is important to first ensure that your brand’s IP rights have indeed been violated. If you suspect that your brand’s trademark, design, or other IP has been infringed upon, you should ensure that you have a thorough understanding of the basics of copyright law in the digital space and fair use.
When you have confirmed that your rights have been violated and you’re ready to send a cease and desist letter, it’s important to have all your ducks in a row. That means having evidence to back up your case.
- Keep a copy of the infringing material, including product URLs and screenshots.
- Track the date and time of the infringement, as well as the IP address of the infringing website, if possible. Using the IP address, you can identify the infringing party’s web host, which may help you get in touch with the site’s owner.
- If you have any witnesses who can attest to the infringement (for example, a customer who has reported receiving counterfeit versions of your brand’s products), gather their contact information.
With all this evidence in hand, you’ll be in a much better position to send a strong cease and desist letter.
Taking Action: Talk to a lawyer to draft the cease and desist letter
In essence, a cease and desist letter acts as a warning to an infringing party. It gives the infringer a chance to end the dispute without going to court, saving time and money for both parties. When writing a cease and desist letter, you should include a demand that the recipient stops the behavior immediately – providing a detailed description of the violations committed, pointing to specific legal statutes – along with a warning that legal action will be taken if the demand is not met. Finally, the letter should be dated and signed.
The complaining party must affirm that they have a good faith belief that the use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. The complaining party must also affirm that the information contained in the notification is accurate and that they are authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
What Happens Next
Typically, offending parties are given 30 days’ notice to respond to a cease and desist letter. If the letter is effective, the infringing party will respond with an admission of guilt and will agree to cease their illegal activities. In some cases, they may disagree with the letter’s assertion. The result here might be to negotiate a solution with the infringing party, or, in the worst-case scenario, take the issue to court.
The Bottom Line
Taking a matter of intellectual property infringement to court can be quite a costly endeavor. This is why a cease and desist letter is an important step in the legal process. When written effectively, it can solve the issue for both parties without the need for court proceedings.
Still, in the world of e-commerce, the best defense is a good offense: Be vigilant. By establishing tighter controls over your brand and its IP using the right brand protection tools and strategy, you can snuff out illegal activity impacting your brand at its source.
