Respond to Infringement Claim
Steps To Take When You Receive A Cease And Desist Letter
- Call your attorney and discuss it.
- Do not attempt to resolve it yourself. That could lead to statements by you to the other attorney and lead him to think you had more sales than you actually had, and he will ask for more and more information, all of which may hurt you in ways you may not anticipate.
- Hire an attorney, making sure he/she has experience in jewelry and copyright, patent or trademark litigation. Provide him/her with all the sales and other information, including invoices, sales and inventory, to establish that you had few sales and did not infringe – it is important to show sales accurately. Not doing so could cause you huge problems and be very expensive if an investigation reveals a large discrepancy in the sales you report.
- Notify your insurance broker and insurance carrier right away.
- Conduct research or have research conducted to show that the piece of jewelry is old – many lawyers with expertise in this field have libraries of these books. Some even have a knowledgeable person on staff who researches jewelry for this purpose.
- Have your attorney answer the cease and desist letter, pointing out how small the sales are and how you were an innocent infringer. Further, your attorney should point out that you did not know of the copyright or patent, and provide the disclosures that show that the jewelry design at issue is very old – that it predates Plaintiff’s creation of the piece, if possible.
- Review your lawyer’s response to the cease and desist letter to ensure that the number of pieces you sold was accurately stated and that the best showing of the old, similar jewelry pieces is included.
- Try to have your lawyer settle the infringement before litigation is brought by providing sales and old, similar jewelry.
- For jewelry copyrights, show why you do not infringe by showing your jewelry piece is different, or by showing the piece is common, or the piece dates back before the piece at issue, or that your piece was sold before the Plaintiff filed its copyright or patent. Show why the designer of your piece created it independently and did not copy the piece at issue.
- Have your lawyer obtain the complete copyright registration file from the Copyright Office, including the pictures deposited in the Copyright Office. These pictures, or “deposits,” are not available online.
- For jewelry patents, show why you do not infringe by showing your piece is different or by showing the piece is common or the piece dates back at least 1 year before the filing date of Plaintiff’s patent, and make sure your lawyer obtains the complete patent file from the U.S. Patent Office.
- For a claim of trademark infringement, show why you did not infringe, that you sold your piece under the trademark before Plaintiff began using it or that the trademark is generic (such as “trillion” for triangular-cut diamonds).
- Try to be honest and complete about sales – to show they were very small.