Intellectual property (IP) can present itself in many outfits i.e. specific rights such as rights around:

(1) copyright;

(2) patents; and,

(3) registered trademarks.

Other outfits fall under common law e.g. the tort of passing off.

Protecting your IP whatever the outfit is crucial as is taking speedy and decisive action upon discovering an infringement. This is where cease and desist letters (also known as “letters of claim” or “letters before action”) come in to play.

A cease and desist letter serves as a first step that puts an infringer on notice that their activities have been discovered. It would be good if at this stage, a resolution without recourse to costly and time-consuming legal action could ensue but unfortunately, this is not always going to be possible.

As useful as cease and desist letters can be, they can open up a pandora’s box of complexities and should not be taken lightly.

In the case of some IP rights e.g. patents, registered trademarks and designs, the mere smell of an IP infringement action against a ‘potential’ infringer acts as a remedy to protect businesses and individuals. However, we say ‘potential’ because the ease of which an IP infringement threat can be made can just as easily be misused/ abused and made more for the purposes of intimidation or gaining an unfair commercial advantage when there has in fact been no infringement. These actions are often brought in order to distort competition or stifle innovation.

You must be sure that you own the IP rights you are laying claim to. This can be tricky believe it or not even if it feels obvious to you!

For example, do you know who Banksy is? Recently a lesser known freelance cartoonist artist called Cindy McLeod accused Banksy of stealing some of her ideas relating to 15 of her artworks to create 16 of Banksy’s famous artworks. She reportedly said that that they resemble and pre-date Banksy’s artworks…but why the accusations and no report of legal action?

It is a well-known principle of copyright law that the ideas are not protected by copyright and copyright protects the expression of those ideas when committed to material form. An artist can claim copyright where there has been copying in whole or in part where the part taken is substantial. Merely being inspired by another’s work to create your own is not in itself an infringement of the original work.

That being said, the law does not seek to protect those who are guilty of infringement, nor does it seek to restrict those whose IP rights actually have been infringed.

You must likewise try to be sure that laying down an IP infringement threat is not going to hit you in the face and end up with a claim against you!

The Intellectual Property (Unjustified Threats) Act 2017 sought to strike a balance which allowed IP rights holders to protect their IP, while still preventing abuse of the system. Bird & Bird have an excellent article around this piece of legislation which can be found here.

Let us know if we can help you!

Author: Yvonne Morris



twitter: @CloudLegals


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