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|At the bottom of this page are Cease and Desist letters we have received concerning a variety of "crimes" we are alleged to have committed. Some are reformatted but content has not been altered. We take every Cease & Desist demand we receive very seriously.|
Last Updated October 28, 2011
|Cease and Desist Letters|
Lawyers love cease and desist letters. It gives them an opportunity to lie on paper without fear of finding their fannies in a sling. You see,
a cease and desist letter, which is nothing more than a legally protected threat, not only is easy money for a lawyer since they have it as a template and their client
pays the bill as though it was written from scratch, but they can say just about anything they want without fear of it being used against them. A cease and desist
letter cannot be the sole basis of a lawsuit. The courts have said that when someone threatens you with a cease and desist letter that you must have more than
just that threat in order to go to court to protect yourself. So, a cease and desist letter is a license to lie. And that is what attorneys are paid to do: Lie.
And they do it often.
In our opinion most cease and desist letters are nothing more than early attempts at extortion. They make over blown claims of infringement, exaggerated claims of liability, and outrageous claims of damages and monetary compensation. Granted, many cease and desist letters are generated in real cases of infringement. But even many of those over state the facts and potential outcomes.
We're going to go over the terms in the bogus cease and desist letters and explain them and why they do not apply. Bear in mind, we are not lawyers nor have we attended law school, but we have seen every episode of Boston Legal, so our opinions here should not be construed as legal advice but more along the lines of what we have learned over the last years fighting these companies while representing ourselves many times in federal circuit court, state circuit court and the Colorado Court of Appeals. We have lost very few of these encounters.
|In today's global economy, cease and desist letters have become the 24/7 internet equivalent of roaches except that cease and desist letters sometimes are written with legitimate concerns in mind. Sometimes. We have seen far too many cease and desist letters that are form letters sent out by cyber cops who get paid by the victim as opposed to getting paid because there is a real problem. To make more money, some of these cyber cops intice potential victims into "infringing activities" or they distort what is happening to make it appear there is infringement when there is no infringement. Cease and desist letters are becoming the legal profession's version of the organized crime tactic for demanding money for an alleged infringement, sometimes better known as "we gonna breaka you leg if you no pay", which we lovingly call trademark extortion.|
|These cyber cops and law firms often hide behind the requirement in trademark law that a trademark owner police and defend its trademark from unauthorized use by others. Using the all too vague trademark definition of the "likelihood of confusion", these unscrupulous hacks pad their resumes and their purses by sending over-reaching cease and desist letters to every allegedly infringing grandmother, aunt, work at home mom ("WAHM"), student and internet seller they can locate or fabricate. But the key word in the Lanham Act is "unauthorized". Many cease and desist letters ignore "fair use" because "fair use" in an inconvenient truth they want to ignore.|
|There are plenty of legitimate cease and desist letters being mailed to real infringers every day. There are a lot of infringers on the internet. The overwhelming majority of counterfeits are being imported either directly or indirectly from Asia and many of these counterfeits are very good imitations. However, an alarming number of American companies have voluntarily opted to move their manufacturing facilities to overseas locations in Asia and at the same time supplying these facilities with manufacturing secrets, code numbers and other information used by the counterfeiters who are, in many, many cases, the same people who are manufacturing the genuine products. These companies have created their own problems and want to toss the baby out in the bath water.|
There are a variety of companies and law firms that interfere with the legitimate operation of small home-based businesses and internet sellers. These
companies use legal jargon and various maneuvers to illegally shut down mom and pop businesses that have not violated any laws. These
small businesses are easy targets because they lack the expertise and resources to effectively fight back. This allows cyber cops and
bottom-feeding corporate lawyers to bill their clients by showing them how many
"bad guys" they have stopped. The term "bad guys" being relative since the client has no way of confirming the allegations beyond the stack
of signed agreements being placed on the desk along with the hefty bill for services.
In an email to us, one of these cyber cops denied our assertion that their cease and desist activities were designed to " 'rack up' billable hours" but we discounted her claims since in the same emails she was denying she worked for the Cyber Cop while the web site listed her as an owner. If the activity is not profitable, then why are there so many companies getting into the business? And law firms? The mark-up is fantastic. Did you know that the $6.00 bag of popcorn at the movie theatre costs the movie theatre 5 cents? That soda has a 400% markup. Imagine the markup for trademark extortion claims and copyright extortion claims.
On our trademark extortion page and our copyright extortion page we list some of the companies that we consider to be involved in these activities. We do not list them all because we have not come into contact with all of them, yet. We have received a variety of cease and desist letters over the years (see bottom of this page). Only one, from M&M/Mars, resulted in us being sued and that case was quickly settled in our favor after we filed our defenses and counter claims. No one else has taken us into court. Dang.
Also you need to understand the foundation of the real problem facing the modern-era internet seller: a lack of understanding of how the legal system really works coupled with virtually no understanding or education in trademark law and copyright law. Increasingly less-expensive and increasingly more powerful personal computers have turned the internet into an inexpensive, world-wide 24/7 "store front" for almost anyone. And almost none of these small internet sellers have any idea of what trademark law and copyright law is really about. They are sitting ducks just waiting to be picked off by cyber cops and corporate lawyers.
|Enforcing trademark rights and copyright rights is generally a cost of doing business. Especially when the infringements are not criminal but rather civil and by non-willful infringers. What is willful infringement? Whether the alleged infringer, acting in good faith and upon due inquiry, had sound reason to believe that he/she had the right to act in the manner that was found to be infringing. Courts determine whether this test has been satisfied by examining the "totality of the circumstances." But, what is "due inquiry"? If you have a reasonable belief the item you purchased (or you were given), was legitimate, then there is no reason to inquire. So, any admitted suspicion can be used against you whether valid or not? You must remember that most infringement cases are civil, not criminal, so the burden of proof on the rights owner is 51%, not "beyond a reasonable doubt" or "moral certainty" as required in criminal cases.|
|Island Software and Computer Service, Inc. v. Microsoft Corp., 2005 U.S. App. LEXIS 12766 (2d Cir. June 28, 2005). The court of appeals reiterated that there are three ways to establish willfulness: actual awareness of the infringing activity, reckless disregard for the ...owner's rights, or willful blindness to them.|
|Plug the word counterfeit or replica into the Google search engine and you will be rewarded with 15 million hits for the former and 58 million for the latter. Many of these are for web sites that specialize in knockoffs. Shut down one of these and you have accomplished something. However, shutting down these web sites does not provide the cyber cops and corporate lawyers with extortion money, whereas the grannies, aunts, WAHMs, students and some internet sellers do pay the extortion demands. That is why they are the targets of these false claims.|
Bogus C&D Letters
Generally, bogus, or form cease and desist letters, come in a similar format to this.
They begin with sweeping claims of ownership through use and registration with the appropriate government entity, be it federal and/or state. This is usually accompanied with claims of large amounts of monies spent promoting the product and how the product has acquired secondary meaning in the minds of the public. Not true necessarily, but then, lawyers are paid to lie to you.
Some Company, Inc., ("Company") is the owner of many valuable designs, trade dress, designs, and copyrights for the word Company, the Company logo, many other distinctive designs and words. Company has invested vast resources to establish their intellectual property portfolio and the goodwill associated therein. These marks and the Company brand name they represent are famous throughout the world. Because of Company's popularity, extensive demand exists for Company-related products. Consequently, the intellectual property of Company may not be used without its express written permission. Cyber Cop ("Cyber Cop") has been engaged by Company to help protect its valuable intellectual property.
|This is what we call the "Chest Beating Opening". The alleged infringer is smothered by the assertions and left in awe to read the upcoming claims of infringement, or what we call the "Unsubstantiated Allegations" section. Here, the representative of the rights owner claims the alleged infringer has committed every heinous crime except human sacrifices on a pagan alter.|
Cyber Cop has learned that you are involved in the distribution of merchandise violating the intellectual property rights of Company (the "Merchandise"). The Merchandise bears marks or designs that are either identical to, or clear imitations or derivations of Company's trademarks, trade dress and/or copyrighted material.
|That certainly scares us. Does it scare you as well? It should. However, notice the lack of specifics. In what actual manner was the infringement done? In what time frame did this infringement occur? The above paragraph, taken from a real cease and desist letter, says nothing of this sort. It is deliberately vague. And, a really legitimate C&D would be accompanied with proof, such as a picture of the infringing item(s) purchased by the firm sending the letter. So, you ask, what is next? The "Overblown Potential Damages" claims. Why do we say that they are they "overblown"?|
Your activities with respect to Company place you in jeopardy of violating these various laws and the rights of Company. Any further sale of the Merchandise by you will be considered willful infringement. Willful infringements are subject to enhanced penalties, including but not limited to, treble damages. Furthermore, you may be subject to temporary or permanent court injunctions, impounding of all infringing materials without notice, liability for actual or statutory damages, and payment of attorney's fees.
To begin with, while it is generally accepted that if an alleged infringer immediately ceases the infringing activity the alleged infringing activity will not be
considered "willful" by a court, continuing to engage in the activity does not constitute willful infringement if the alleged infringers believe that
they are in the right. "Willful" infringement has to be proven by the rights owner, not just asserted. Small sellers are rarely found to be willful infringers.
Trebel damages are very rarely awarded in trademark cases and attorney fees are also rarely awarded in trademark cases. In copyright cases the court has descretion as far as statutory damages are concerned. The large monetary claims are designed to frighten the recipient. Remember, lawyers are paid to lie to you.
Typically, they begin with a "Cease and Desist" letter in which they make their case. These letters are intended to intimidate the receiver into compliance. Your average lawyer will look at the letter and tell you to comply. Why? Because the cost of fighting them can run to $30,000 and up and there is no guarantee that you will recover legal expenses. Small home-based businesses cannot afford this sort of financial outlay, so, they cave.
In some cases, the company claims that the fabric item is a "derivative" and therefore violates the copyright held by the company. Numerous federal court decisions refute this as well as the federal court standard for determining if something is in fact a derivative.
Another approach is for the company to claim the use of the material in this manner is "unauthorized" and therefore a violation of the trademark. This falls short because the Lanham Act uses the word "authorized" in conjunction with counterfeit trademarks and/or products. They are attempting to use the term out of context. Remember, lawyers are paid to lie to you.
Most cases will revolve around either the derivative issue, copyright violations, or the "unauthorized use" issue, trademark violations. The other terms that are thrown in are done so to make the case look far more complicated and more serious. Dilution, unfair competition, likelihood of confusion, infringing merchandise, are often used. However for these to be relevant, there first has to be a copyright violation or trademark infringement.
You can protect yourself. Make sure you include the wording "hand-crafted" or something similar in your description. Refer to the items as being made from XYZ fabric. We suggest including a disclaimer, "This item is not a licensed XYZ product. It is however, made from licensed XYZ fabric. Tabberone is not affiliated with XYZ in any manner." Their lawyers will argue that this disclaimer is not adequate and does not protect you. However, remember that should the conflict go into court, it is not their lawyers who will determine what is adequate. The courts use the "reasonable person" rule. How would a reasonable person interpret this disclaimer? Would a reasonable person be confused?
Additionally, you are permitted under trademark law fair use of a company's trademark when selling an item made by them, or in the cases here, items made from their fabric. This means you have a right to a reasonable use of pictures of the item even if those pictures include copyrighted images. However, you cannot use images or pictures not directly related to what you are offering. Example: you cannot use an image of Mickey Mouse to sell a pillow that has Tinker Bell on it. But you can use pictures of the actual pillow.
Chilling Effects has some good FAQ's and advice about cease & desist letters.
Don't Post This Cease And Desist Letter Or Else.shtml , by Greg Beck, October 5, 2007.
Just because you have received a cease & desist letter and you do not want to stop your alleged infringemnt, your failure to stop is not always and indication of willfull infringement.
|Purina Dog Chow, whose motto should be Your Pet, Our Passion®: Our Asshole Layers, is a textbook study in the type of cease and desist letters we mentioned here.|
Cease & Desist Letters and Emails
Lawyers seem to love Cease & Desist Letters but they don't seem to put much research into the facts behind them. It seems their primary concern is the billable hour they get for the piece of fiction.
We have received Cease & Desist letters alleging defamation about postings on our website from lawyers representing Grand West Financial, Rocky Mountain Construction, Summit Crest Homes, Re-Bath, De Novo Legal, and Sykel Fabrics, to name a few. We include all of the cease and desist letters here because they are so similar. We also have a Colorado Court of Appeals decision directly concerning our website and how it falls under the First Amendment as protected speech. It seems that Barbara Robbins (now Barbara Asbury) did not like us saying her nickname was "peanut butter legs" and so she sued us for defamation. In the Kangaroo Court proceeding presided over by Judge Kenneth Plotz, Barbara cried on the witness stand and her lawyer, M James Zendejas, suborned perjury from his client. Judge Kenneth Plotz anounced his retirement two weeks after the decision by the Court of Appeals reversing his injunction.
Click here for the page listing all of the cease and desist threaths
received by Tabberone.