Holiday Blues: What to do if you get a cease and desist letter

It's the holiday season and everyone is excited about the upcoming turkey and presents. Holiday cards are going to be in the mail soon. But you may just get something else in the mail that could ruin the whole season: a cease and desist letter.

First off, don't freak out. It's just a letter. It might be a letter full of threats, vitriol, and the potential for a very large headache, but it is still just a letter. Your business should continue to operate as it normally would for the foreseeable future.

Step one: read the letter. What are they asserting you've done? If you can't tell, have someone else in your organization go through it. If THEY can't tell then it's not a well-drafted letter. But if you are able to determine what is being asserted then you can move on to step two.

Step two: Which area of intellectual property is at issue? Patents are different from trademarks are different from copyrights are different from trade secrets. And they each have their own quirks and pitfalls. What area is at issue may determine what sort of attorney you approach. It is ill-advised to approach a non-patent attorney when patents are at issue, for example. Many attorneys claim to practice intellectual property; few actually spend the majority of their time on it.

Step three: after determining what type of attorney to approach, your attorney will likely give you a few options for a response. This is ultimately a business decision.

Option one: do nothing and hope they go away. This is the most cost-effective option because at most you might have to pay your attorney's consultation fee. This is also a risky option because the party sending the letter may take your silence as an invitation to file a lawsuit in a venue you may not want to be in.

Option two: respond to the letter. You or (more preferably) your attorney can draft a response defending against the allegations or simply request more information. It is important to address the issue of a pre-suit settlement if that is something you are interested in discussing. The other side may go away at this point, a letter-writing campaign may start, or they may file a lawsuit.

Option three: file a declaratory judgment lawsuit of your own. Your attorney of choice hopefully has litigation experience and knows how to do this. By virtue of sending the letter, the opposing party has opened themselves up to litigation (assuming the letter was specific enough about what they are accusing you of doing wrong). The Declaratory Judgment Act specifically allows you to file a lawsuit against the party that sent the letter wherever jurisdiction can be found against the other party (which is a whole can of worms on its own and will be a separate blog post). This is obviously the most expensive option but has the possibility of ending the fight the quickest.

Most parties simply don't have the resources for protracted litigation. Intellectual property litigation is some of the most expensive litigation possible because of the highly technical nature of the claims. Specialists are needed from the attorney side and experts are likely needed from the witness side. Neither are cheap if you want quality.

Final step: regardless of what option from step three you choose, DO NOT DELETE OR THROW AWAY ANYTHING. Once you are aware of the possibility of litigation, you have an obligation to keep any and all documents relating to that litigation. Business records of all types could be subject to discovery so any systems you have in place to delete emails or throw away old files have to be paused. To disregard this duty risks claims of spoliation (another thorny topic worthy of its own post). Keeping it simple, destroying documents risks losing the case outright. So don't do it.

Enjoy your turkey and spend time with your family now that you have a basic understanding of what to do if you get a cease and desist letter. The same information applies if you get a letter at other times of the year too. Happy holidays!

Disclaimer: I'm an attorney but I'm not your attorney. This is not meant as legal advice and you should consult with the attorney of your choice. This post is meant for informational purposes only. The views expressed are the opinion of the author writing in his individual capacity.