Strategic Considerations Prior to Sending IP Cease and Desist Letters: Minimizing the Risk of Defending Declaratory Judgment Actions
by yuval marcus and lauren sabol
While cease and desist letters are useful and cost-effective tools to enforce intellectual property rights, they are not without potential pitfalls. The most overlooked risk is being subjected to a declaratory judgment action in an unfavorable forum. Under the current law, the threshold for triggering declaratory judgment jurisdiction is low. Therefore, prior to sending a cease and desist letter, consideration should be given to the: (1) wording of the letter, (2) ability to combat an anticipatory suit, (3) extent to which personal jurisdiction can be established, and (4) venue, particularly for patent claims in light of the recent Supreme Court decision in TC Heartland. This article, first published by the New York State Bar Association in its Bright Ideas publication, Winter 2017, Volume 26, Number 3, provides an in-depth analysis of these strategic considerations and guidance for the drafting of intellectual property cease and desist letters.
Reprinted with permission from: Bright Ideas, Winter 2017, Vol. 26, No. 3, published by the New York State Bar Association, One Elk Street, Albany, New York 12207
By Peter Busch
Leason Ellis associate Peter Busch gave a great presentation regarding IP notice and takedown procedures today. The presentation provided an in-depth look at best practices for removing infringing content and knock-off/counterfeit products efficiently from internet websites, with a focus on combatting infringers on large e-commerce websites like Amazon, eBay, Alibaba, and social media websites such as Facebook and Twitter. Peter also discussed defending against abusive takedown practices and ways that clients can minimize the reoccurrence of infringing actors.