How to Respond to Cease & Desist Letters...and How Not To

So there you are, a contented business owner on a Friday afternoon, looking forward to relaxing over the weekend. And then you see an official-looking certified letter in the mail with the return address of a law firm. You stiffen-up while opening the envelope. The letter reads something like this: 

Dear Mr./Ms. [your name here]: 

I represent XYZ corporation. My client is the owner of registered [trademark/copyright no. 123456]. XYZ learned recently that your company is using its [trademark/copyright] on your website and in connection with the promotion of your business to [blah, blah, blah….blah, blah] and is harming XYZ’s reputation and goodwill. Furthermore [blah, blah, blah]…. 

You have violated section no. [123(a)] of the [Copyright Act, Trademark Act, other law, etc.] when you used our client’s [blah, blah, blah, blah]… 

You are therefore directed to cease your conduct [and take other actions] or XYZ will be forced to escalate this matter and take additional action, including possibly filing suit against you. Please respond by January 15th at 5:00 p.m. and confirm that you have complied with the terms herein. If you do not respond by then, my client will assume that you are not interested in resolving this matter and will be forced to pursue it further…. 

This is a simplified example of a “cease & desist” (C&D) letter. They can sometimes be quite lengthy and contain detailed legal analyses. As a technology lawyer and litigator, I’ve both written C&D letters and responded to them. Given my areas of practice, I often see them in intellectual property disputes, but they can be used in many types of cases, like breach of contract (e.g., non-compete violations, breach of confidentiality, etc.), defamation, harassment, employment matters, and other areas.  

You can also get them from various government agencies, like a state attorney general’s office or the Federal Trade Commission (for example) requesting that you stop engaging in certain practices and comply with whatever law is at issue. But here I’m referring only to a C&D letter sent by a non-governmental private party who is alleging that you violated its legal rights. I’m also not referring to one that gets served concurrently with an actual lawsuit, which doesn’t happen often, but requires other tactics (that’s a discussion for another day). 

Breathe In, Breathe Out (Now Again)… 

Getting these letters can be stressful and disruptive. But take a step back and a deep breath first and remember that it’s just a letter. It isn’t a court order. It’s not a notice that a suit has been filed against you—although it can be a precursor to one. There’s nothing to enforce….yet. It’s only a formal non-binding request. You’re not obligated to do anything or to stop doing something. For now, and until a judge explicitly orders otherwise, it’s just a lawyer’s opinion that you might be doing something wrong. Maybe. Just because it’s written on a law firm’s letterhead and sent by certified mail doesn’t automatically make it credible.  

I’ve read many over the years.  And the other party’s claims don’t always hold up when scrutinized closely. Sometimes the other attorney doesn’t have all the facts or has inaccurate facts. As a result, their legal analysis (if they provide one) is incomplete or flawed. Sometimes the other attorney isn’t as familiar with a particular area of the law and is unaware of some important legal nuances that can significantly impact their client’s rights. Not all C&D letters are created equal.   

I recall one poorly drafted letter from an attorney who clearly didn’t practice trademark law; his position was seriously flawed given how weak his client’s mark was. Nevertheless, he demanded that my client stop using the mark and change his company name. After explaining some trademark basics in my response, I answered with a resounding “no”—my client wasn’t going to stop without a court order and was prepared to litigate. The other attorney never replied and disappeared soon after, so the matter died. While that doesn’t always happen, it’s nice when the other party just goes away. It still created some aggravation for the client, but at least it was short-lived. 

However, the letter recipient could also be doing something wrong. I’ve seen many instances where the attorney has my client dead to rights. Sometimes it’s an unintentional infringement and use of another party’s logo or photo. Other times, clients knew exactly that what they were doing was wrong but decided to play the odds and hope they wouldn’t get caught (which is never a great strategy in the online era). No matter what the scenario, remember that a letter is still a letter—nothing has been decided yet. You do need to take it seriously though.  

The Ostrich Approach 

It’s a dated 80s reference, but remember that classic line by Glenn Close in Fatal Attraction? It’s central to the movie: “I’m not gonna be ignored, Dan!” Think of litigators like that—all of the commitment but with none of the psycho (hopefully). We hate to be ignored. Sticking your head in the sand and ignoring the letter is always a bad idea; it will generally make things worse. 

Years ago, I received a phone call from a panicked client who got a knock at his door. The federal marshal was standing there with a court-approved seizure order. He entered my client’s home and took his computer, business records, and boxes of merchandise. It turns out that he and his wife were on eBay selling counterfeit bracelets of a renowned jeweler known for aggressively protecting its brand. The jeweler hired a top notch and very expensive Boston firm to sue for copyright and trademark infringement, false advertising, unfair/deceptive business practices, and several other claims. 

I reviewed the ample documents that were filed, i.e., the complaint, motions, memoranda, affidavits, seizure order, etc. It must have cost the jeweler at least $20,000 in legal fees to draft everything (if not more), and to get the seizure order approved by the judge—not to mention hiring the private investigators too. Most companies though, even those with a lot of money and big litigation budgets, don’t usually run to court right away. They first try to deal with these matters more efficiently. So I asked my client: “Did you happen to get what’s called a ‘cease & desist letter’ telling you to stop selling the bracelets?” Their response: “Oh yeah—we just ignored it.” Oy. 

And there you have it. That’s what can happen when you ignore a C&D letter. I’m not saying the feds will come to your home and start seizing stuff, which isn’t very common, but being sued is often the next logical step when you do nothing and don’t intelligently and carefully engage with the other side. And if you’re then sued and ignore that too, your situation will get far worse. So, keep your head out of the sand and be proactive before it becomes a much bigger and more costly problem to address. 

About that C&D Deadline… 

You have the letter. What next? Let’s first discuss what NOT to do. Do not pick up the phone and call—or even worse—e-mail the attorney and start engaging in a back-and-forth about what you’re being accused of doing. Now is not the time to either admit or deny liability. And don’t start hurling expletives and comparing the attorney to certain favored or disfavored body parts. Because neither of you may have all the facts. And some of the facts in the letter could be wrong too. 

More importantly, as a non-lawyer you probably don’t know what the law is—a 15-minute YouTube tutorial or a ChatGPT synopsis doesn’t count. If you engage directly with the other attorney prior to retaining counsel, you might make all sorts of potentially harmful statements that could become evidence later and hurt you if the parties litigate. Your lawyer’s job is not only to advise you on the law, but to also serve as an intermediary between you and the other party precisely so you don’t say or do things that you’ll regret and could bite you later.  

Even if you don’t communicate with the other attorney, does that mean you should just stop your conduct and (for example) take down the infringing content from your website? Maybe. That’s why you need to speak with your lawyer. But that decision only comes after you’ve retained counsel, who has then investigated and evaluated the merits of the other side’s claim. And to re-emphasize, it’s your lawyer’s job to engage with the other party, not yours. 

If you don’t have an attorney yet and the clock is ticking while you look for one, the only thing you should say to the other attorney is this: “I received your letter. I’m in the process of retaining counsel, who will reach out to you after I do so. In the interim, can I please get a [1-week, 2-week, 1-month etc.] extension before you take any further action?” Simple and to the point. And you haven’t admitted or denied doing anything. Don’t pick up the phone either; just use e-mail. That way you’ll have a written record of requesting the extension and it reduces any risk that you’ll “get into it” with the other lawyer.

It’s uncommon when the other side won’t grant at least a short extension. It’s a customary professional courtesy, which the lawyer shouldn’t think twice about. Attorneys realize that C&D letters can be disruptive and that an adverse party needs some time to evaluate its options with counsel. If the other attorney doesn’t grant an extension and threatens to run into court and file suit—which happens occasionally under limited circumstances (unless they just like being difficult)—judges tend to grant the extension anyway if your lawyer then requests it. And they may do so while noting their disapproval to the unreasonable party of having the court’s time wasted on what should be a non-issue. So don’t engage with the other side; just ask for more time if necessary.  

“Don’t Mess with the Bull, Young Man. You’ll Get the Horns.” 

We’re now moving from Fatal Attraction to The Breakfast Club, a far more upbeat 80s classic. There’s a lot of wisdom in that line from Principal Vernon. If the other party has enormous resources, those horns can come out quickly if you don’t comply. Even if you have valid defenses and a solid counterargument, these tend to only matter once suit is filed and your lawyer is in front of the judge arguing your position, which can take a while to happen.  

Thus, getting a letter from a company like Disney or Viacom or Monster Energy usually means a protracted and expensive legal fight. Or not. Your lawyer may advise you that it’s simply not worth it. It will depend upon many factors including what it is you’re being accused of doing, how long you’ve been doing it, how easy or hard it is to stop and change direction, what the other party is demanding from you, whether the law is in your favor, and—what is sometimes the main issue—the resources you have at your disposal to fight.  

I represented a client who received a C&D letter from a very large Massachusetts healthcare provider. They demanded that she change the name of her practice, claiming that it caused confusion with the provider’s services. My client had a strong argument in her favor since the name was a common term that was used ubiquitously in the state. Nevertheless, she didn’t have the money to fight a billion-dollar company, so she changed the name—which was easier said than done and quite a hassle.  But the time and money it took to do it was still far less than what it would have cost her to litigate for several years.  

Is it unfair? You bet. It was unfortunate that my client got caught in the provider’s crosshairs while others with similar names and services didn’t. Did she acquiesce to a “trademark bully”? Possibly. But is it prudent and economically sensible so she could continue growing her business and not be burdened with an expensive lawsuit that she could still lose? Absolutely. Sometimes absorbing a blow or two is necessary to simplify your life, but it depends on the circumstances. I’ve represented some matadors who fight the bulls because settling would require too many sacrifices and create new problems. Your attorney will help you evaluate those issues. 

Strike First, Strike Hard, No Mercy! 

That’s my last 80s reference—I’m a Karate Kid fan too. Cobra Kai philosophy aside though, there are several ways to respond to a C&D letter. But you and your attorney will determine what’s best in your situation. Sometimes capitulation is warranted and you have to raise the white flag and stop whatever it is you’re being accused of doing. Sometimes it’s not warranted but you have to stop anyway because you can’t afford to litigate. Other times you may have meritorious arguments in your favor.  

And sometimes—if the stakes are high enough and depending upon what the letter says or threatens—you could strike first. You can file suit for what’s called a “Declaratory Judgment” and ask for a declaration that you’re not violating the other party’s rights. This is a common tactic in intellectual property litigation. It’s not always possible or appropriate to do though; there are advantages and disadvantages to this approach.   

While I don’t push clients in that direction, there are times when it’s a viable option. But the next steps need to be evaluated carefully with your counsel, because it is—and can turn into—full-blown litigation, which gets expensive very quickly. But striking first is another tool in your lawyer’s arsenal. At a bare minimum, it signals to the other party that you take the matter seriously and won’t be pushed around quite so easily, which can have value too. It basically forces the other side to “put up or shut up.”  

The Check’s Not in the Mail 

Depending upon the alleged violation, many C&D letters don’t demand money. Oftentimes the other side just wants the conduct to stop, so financial demands are usually not central at this early stage. The party may threaten though that if you don’t cease and it has to sue, then they’ll insist upon financial compensation like damages and/or attorney’s fees, but that’s a common and time-worn negotiation tactic. In addition, most monetary damages at this point can be speculative anyway and would have to be proved at trial; don’t take the other side’s word for it without some convincing evidence. 

There are exceptions though. (Aren’t there always?) For instance, if the C&D letter involves copyright infringement of a registered work, it’s far more likely that the other side will demand monetary damages because of how copyright law is structured. Also, in instances of truly blatant and willful misconduct or an open disregard for the aggrieved party’s rights (like stealing trade secrets, for example)—combined with more readily quantifiable damages—a financial demand may be a condition of settlement. But it’s also something that your attorney can usually negotiate at the early stages, depending upon the situation.  

Haec Res Terribilis Est 

I learned in law school that you can make a legal article sound more esoteric than it really is if you can add some obscure Latin to it. So remember this learned phrase—you’ll be using it throughout the process: Haec res terribilis est. When you receive the C&D letter: Haec res terribilis est. Retaining counsel to deal with it: Haec res terribilis est. And even if you ultimately prevail and don’t have to cease doing anything—but you still have to pay your lawyer (and maybe your therapist): Haec res terribilis est.  

What does it mean? We’ll depart slightly from the formal translation and put it in more colloquial terms: “It really sucks.” It’s a staple phrase for all types of litigation. The whole process from start to finish just.…really sucks. There’s no way to sugarcoat it. It’s disruptive, stressful, and expensive. But as I often tell clients, it’s the cost of doing business today. Threats of litigation and the (hopefully) occasional lawsuit always have been, but the rise of the internet, social media, and the ease by which other parties can now see and monitor what you’re doing publicly make it much easier to find violations and pursue claims.  

Therefore, don’t be surprised if at some point while running your business you receive a C&D letter—they’re not uncommon these days. But it works both ways. You could learn that a party is violating your rights too and then you’ll need to be the assertive one and take some action. In either instance, it’s always best to consult with your attorney and develop a cohesive and thoughtful strategy. And yes, you will be billed for their time and guidance. Haec res terribilis est. But that too is the cost of doing business. Or as the French say: C’est la vie!