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cease and desist letters

 
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bode
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PostPosted: Wed May 18, 2011 9:26 pm    Post subject: cease and desist letters Reply with quote

Hi, I'm a photographer and graphic designer and produce a product featuring about 200 of my original designs. The products are prominent on all the google search engines along with amazon and ebay.

I have discovered two sellers making almost identical copies of my designs on their similar product. I have gathered a large amount of evidence including screen grabs of the amount of items they have sold and the amount they were intending to sell and both were willing to supply them wholesale.

I've spoken to a solicitor who agreed that there was infringement and passing off. I cannot afford his fees at the moment but would be prepared to use him if it came to court. I'm not wealthy, but need to protect my only source of income.

I was planning to invoice the sellers for the amount of items they have listed multiplied by my profit which I feel that I've lost. Their products are of poor quality and it's important that I stop them selling.

Does anyone have a good strongly worded cease and desist letter that I could send off to them demanding payment within 28 days or else further damages would be sought through legal action including a Trading Standards threat?

Thanks.
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AndyJ
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PostPosted: Thu May 19, 2011 9:25 am    Post subject: Reply with quote

You seem to be taking all the right steps, but be careful about the text of your cease and desist letter. First of all it needs to be specific to your circunstances. The other party may well consult a solicitor when they receive your letter, and if it is seen as defective or badly worded, they may be advised not to treat your claims seriously. Secondly you need to avoid any grounds for an allegation of harrassment. That is to say making threats which could cause alarm and distress. A single 'threat' cannot be harrassment, but if the other party denies liability or knowledge of the activity complained of, repeating the earlier threat to take legal action 'or else..' could amount to harrassment unless it is carefully worded. Thus if the other party denies infringement, your further courses of action may be limited, and you may be forced to either take them to court or shut up. Trading standards should be able to advise but are unlikely to take action if they think this remains a civil matter.
As you are no doubt aware, a solicitor is likely to charge several hundred pounds to draft a cease and desist letter for you. If that is too expensive, you could try here: Own-It for advice. There are several other pro bono law centres who may be able to assist.
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bode
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PostPosted: Thu May 19, 2011 1:45 pm    Post subject: Reply with quote

Hi and thanks for the reply. Since posting I've found a couple of templates online, one was a little amateur and the other is the actual settlement demand by our friends at Getty.

Although Getty's business is about licences, I can reword this to seek damages for lost revenue as a result of the infringement. With regards to threats, Getty have a single line stating that, if you do not respond within the time frame, we will assume you do not intend to and will take action accordingly. Then rounding off with needing to enforce their licences rigorously.

Not sure how far to go then with this initial letter? Should I mention, that failure to settle this payment within x timeframe, will result in instructing solicitors to commence legal action to recover lost revenue, that collection of payment will be passed to a collection agency and Trading Standards will be informed to investigate the matter of passing off? Or is that for a pre-legal notification after x timeframe?
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AndyJ
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PostPosted: Thu May 19, 2011 3:16 pm    Post subject: Reply with quote

Just a further word of caution. Getty is a US based organisation and so their cease and desist letters* are written in terms of US law. That may make some of their terminology inappropriate for the UK. If you would like to view the process from the other side, take a look at this site: Chilling Effects Clearinghouse

Are you intending to invoice them for your notional loss of profits to date, and then expecting them to cease and desist infringing your copyright (and design right, by the sound of it) in the future? Or are you open to the idea of licensing them to continue to use your IP legally from here on? Obviously, depending on your decision, will depend the wording/attitude of the letter. If their business operation is more successful than yours, the idea of licensing might be more appealling as it will provide a source of income into the future.

If you decide to just go for the one-off payment to cover the past infringement, then I think that sending an invoice, with your terms and conditions on the reverse side which will include a statement detailing your settlement terms (eg 30 days) should suffice. You can draw attention to that particular term in your letter. If you don't have any standard terms and conditions, look at these which you can download for free from the Association of Photographers website: AOP Standard Terms and Conditions - England and Wales. This then establishes a trading relationship, and if they fail to pay, leaves you to option of taking the defaulted debt to a small claims court which is substantially cheaper than fighting in the High Court over copyright and/or designright infringement.

* Beware that you haven't found one of the scam cease and desist letters which are operated using Getty's name. More details here: http://www.dynamicsmedia.co.uk/blog/post/2009/04/Getty-Corbis-Images-Scam.aspx
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bode
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PostPosted: Thu May 19, 2011 10:09 pm    Post subject: Reply with quote

I was intending a one off payment to settle the infringement. I doubt they would take up the offer of a licence, nor would I grant one, but would encourage the sellers to buy my product at wholesale cost for resale. But as they are maker a cheaper and lower quality version of my product using my designs, they probably wouldn't take me up on the offer. The two people in question make a a living from copyright and trademark infringement..your typical ebayer!

This is the Getty letter, but I've yet to find a UK cease and desist letter I can use.
google: extortionletterinfo /gettyimages-extortionletter-web.pdf
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AndyJ
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PostPosted: Fri May 20, 2011 7:24 am    Post subject: Reply with quote

As I suspected, the Getty letter would need so much re-drafting to make it applicable in the UK that you might as well start from scratch. From all the information I have found so far, I suspect that although Getty have a UK office, they seem to use the US template even to UK recipients, (which they are entitled to do, being a US company) in order that any legal action can be taken through the US courts, thus placing UK based defendants at a geographical and financial disadvantage.
If the other 'company' are doing this kind of infringement on a large scale and they are are also doing it to other copyright owners, there's an increased chance that Trading Standards will take action under criminal law. The disadvantage with this is that you would not normally get damages if they are found guilty. However a guilty verdict on criminal charges would make suing them in the civil courts to recover damages much simpler.
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bode
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PostPosted: Fri May 20, 2011 10:07 pm    Post subject: Reply with quote

I've got a decent letter together, stating infringement. Given them a deadline to pay invoice which consists of my lost profit per items multiplied by the items they have available.

I mentioned that I've sought legal advice who confirmed infringement and passing off and will take appropriate action if the demands are not met etc.

I've got a standard designers' terms and condition as you mentioned and will draw up an invoice and wait and see.....they will probably ignore it...the number of infringers has now risen to three!

Once the 14 days have passed and I've presumably heard nothing, do I need to send pre-legal notification?
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AndyJ
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PostPosted: Sat May 21, 2011 7:33 pm    Post subject: Reply with quote

First of all, I am slightlty concerned that your solicitor thought there was passing off involved here. Passing off has very little to do with copyright and basically means that someone else is trying to trade on your good repuation as a supplier of goods. It is generally allied to trade mark infringement and requires somewhat different evidence to make a solid case for passing off, which is a tort. You have to show that a reasonably knowledgeable customer for your goods would be confused into thinking that the other company's products originated from you. Amongst other things it requires you to show that your products are fairly widely known and respected in their particular market ie there is brand awareness and goodwill attaching to your products.

As for the next stage, assuming that your letter and invoice are ignored, it depends on the course you wish to follow. If you are going down the small claims route then I believe you need evidence that you have taken reasonable steps to recover the money you are owed, before issuing a claim from the court. This would have to be along the lines of two or three invoices the last of which can be a final demand, but you are not bound to formally tell them you are taking court action after that. The arrival of the Particulars of Claim form will effectively perform this function. They can of course agree to settle at any stage prior to the actual hearing. (more details here or from your local Citizens Advice Bureau).
If you intend to bring an action for infringement of copyright, from which you might expect to receive damages if you win, then these proceedings need to be issued in the High Court, and for this I suggest you will definitely need a solicitor, and in all probability in the fullness of time, a barrister. In theory you could begin copyright proceedings now without any need to pre-warn the other party.
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bode
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PostPosted: Sun May 22, 2011 12:48 pm    Post subject: Reply with quote

With regards to passing off, my product is prominent on Amazon, ebay, google product search and organic results. I supply them wholesale to a prominent accessory shop and are featured on blogs and review sites. They are sold in retail packaging and have barcodes assigned to them. The idea is quite unique so copying was always going to a potential problem for me.

The main person in question has seen the designs and made identical copies for his own accessory in direct competition. Had the designs been on another product such as a handbag etc, then the problem wouldn't have been as serious. But making cheaper versions of the same product using my designs is the issue here. My business is at risk as he continues to copy my best selling designs..where does he stop?

Taking your advice, I will send a number of reminders and then chase that up with a collection agency. If that fails, small claims court.

I understand that I have every right to issue an invoice for damages of lost revenue? That amount could be 30 or 30,000 for a licence in this industry, but I am not in the business of licences, just wholesale and retail sales. So I've invoiced them for the amount of items they have advertised multiplied by my profit.

If I've every right to invoice them, invoices, collections agencies and small claims seems like the less problematic couse of action. The people in question know fine rightly that they've made copies, but believe that they can get away with that on ebay because they've been doing it for years.

I don't expect to get the full amount I've invoiced, but as as long as it puts the wind up them, convinces them to stop and I get some form of compensation for lost sales.
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AndyJ
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PostPosted: Sun May 22, 2011 1:59 pm    Post subject: Reply with quote

Thanks for the clarification on the passing-off aspect. Were you to go to court, I would not advise that as your main complaint. Also since you have now given more details about your products, it is clear that in addition to the copyright - mainly in the photographic images - aspect, there could also be infringement of your design right. Copyright is in essence about artistic works (books, paintings, music, photography etc) whereas designright is more concerned with three-dimensional manufactured items. As a future protection you might wish to consider registering your designs with the IPO.
On the matter of invoices, this is not a full proof alternative to taking action over infringement. That is because invoices are normally issued where there is a pre-existing business relationship: in other words they form part of a process which is contractual. Technically you have no such relationship in place with this other outfit. They have taken your intellectual property. Thus if they refute your claim (on the basis that there is no liability on them to pay) then a small claims court will probably find there is no basis for your claim as there is no de facto contract in place. A small claims court cannot hear a claim for copyright infringement so will not be able to adjudicate on the merits of your claim of infringement.
Given the level of their operation, both against you and other producers, I believe that Trading Standards are your best bet as far as getting them stopped, although as I said in an earlier post, this is unlikely to bring you any financial recompense if they are prosecuted for criminal infringement. Also if you have not already done so, you can use eBay's IP infringement notice procedure to stop them advertising their products on eBay. Indeed if they have a website you can contact their hosting service with an infringement notice which might result in their site being closed down. Take a look at this thread for an idea of how effective this can be: http://www.copyrightaid.co.uk/forum/topic842.htm
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bode
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PostPosted: Sun May 22, 2011 2:21 pm    Post subject: Reply with quote

Thanks, I suppose it's in their interest to pay the invoice to avoid unwanted scrutiny by Trading Standards and a legal case involving copyright infringement for financial gain.

There's no accidental infringement here. Not sure if I mentioned this earlier, but the infringers have a massive catalogue of trademark infringing items for sale. I'm sure they are under the assumption that Disney for example, won't bother wasting their money coming after 'me' when loads of others are doing this. They forget the little guy is hit harder and will take it personally when his livelihood is at risk.

I heard of a case where a woman was using the Dr Who logo on a ceramic item. She got a letter from their solicitors demanding a serious amount of money, it frightened the life out of her and settled by paying a partial amount of the invoice. My infringers are probably a little more street wise though.

Most of the ebayers I have contacted in the past, quickly remove the items; this time I'm looking for compensation.
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bode
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PostPosted: Sun May 22, 2011 2:28 pm    Post subject: Reply with quote

I've contacted ebay, but have had excuses from them about not receiving faxes. I got a reply eventually asking me to email the veRo tem directlly with Notices of Claimed Infringement, but they still haven't accepted me into the veRo program. I'm getting annoyed by this due to the amount of copy artists on ebay and not getting the protection from eBay. They are gaining commercially from the designs and I should really send a cease and desist letter to their head office in Surrey.
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bode
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PostPosted: Sun May 29, 2011 11:59 am    Post subject: Reply with quote

The amount of infringers has now risen to three people.

I've sent these people copyright infringement notices along with an invoice for profit lost x the amount of items they were intending to sell...I probably shouldn't have sent an invoice for intent, but on past sales?

Infringer 1...removed items, sent a letter claiming ignorance and that the two designs must have been a coincidence. Unlikely.

Infringer 2...removed items, asked if email communication was ok, but haven't heard anyhting.

Infringer 3....went to solicitor who stated that I have no case.
I sent a 4 page informal letter to the solicitor with evidence that his client is involved in copyright and trademark infringement on a large scale, backed up with lots of evidence for him to view. He will see that his client is up to no good. Along with information which proves my design was created and had a prior selling history. I'm claiming that her graphic design is substantially similar.

Infringer 3 is under the impression that she can take images from the internet and sell them. That the designs belong to her.

So a speculative invoice and letter hasn't frightened her off and I'm left thinking that I'm not going to get anywhere with anyone unless I hire an expensive solicitor and start high court battles. Not sure what to do next.
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