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China cease and desistHardly a week goes by without a company contacting one of our international IP lawyers wanting to retain us to “stop the counterfeits” of their products online and offline. Far too often these people believe one of our IP lawyers can within 24 hours send out a “template” cease and desist letter and within another 24 hours of that, the counterfeit sales will magically cease.Were it only that easy.

For us to send out a cease and desist letter to a company that is allegedly counterfeiting (note the switch to alleged here), we first must determine the legal grounds we have for threatening to sue. Is the alleged counterfeiter actually infringing any registered trademark, copyright or patent? Is any trade secret being illegally employed? Unfortunately, about half the time, there is no legal grounds for claiming IP infringement or counterfeiting.

Do cease and desist letters work internationally? Sometimes they do, and really well. We have sent cease and desist letters that achieved great results within days. We’ve also sent cease and desist letters that were completely ignored. A cease and desist letter regarding IP infringement usually works well when we have strong legal grounds for sending it and the company to which we are sending it is a legitimate registered company. These letters are far less effective when the legal grounds is weak or non-existent or when the “company” to which we are sending it is little more than a pop-up operation set up merely to effectuate global counterfeiting.

Why send a cease and desist letter? What can such a letter accomplish? One reason is to get the recipient to cease the infringing. Another is to stake out your rights so as to avoid any potential waiver of those rights. Sometimes we send these letters not so much to stop infringing, but to get the recipient to pay a licensing fee to be able to use our client’s IP. If the letter does not work and we need to pursue litigation, the letter itself — and the recipient’s subsequent ignoring of it — can help prove intentional copying and thereby increase damages at trial or in settlement.

Something few seem to consider or even realize is that sending out cease and desist letters is not without its own, sometimes substantial risks. Many years ago, a company sent a cease and desist letter to a client of my law firm that caused our client to investigate the products of the company that sent it. Our client determined that not only was it not violating the IP of the company from which it received the letter, but the company that sent the letter was violating our client’s patent rights. To make a long story short, the company that sent the letter ended up millions of dollars poorer from having acted so precipitously. It is also not uncommon for the recipient of a cease and desist letter to flip around and sue the sender to seek a court ruling of non-infringement.

Sending cease and desist letters alerts the recipient of your IP concerns and it may cause them to destroy evidence that would aid you in pursuing an IP claim or in collecting large damages. Sometimes the better tactic is to gather up infringement evidence before sending out the cease and desist letter. It is also possible your cease and desist letter will give the recipient a claim against you for defamation, libel or tortious interference in their business.

Sometimes the best tactic is not to send any cease and desist letter at all.

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Photo of Dan Harris Dan Harris

Dan is a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

He primarily represents companies doing business in emerging market countries, having spent years building and maintaining a global, professional network. 

Dan is a founder of Harris Bricken, an international law firm with lawyers in Los Angeles, Portland, San Francisco, Seattle, China and Spain.

He primarily represents companies doing business in emerging market countries, having spent years building and maintaining a global, professional network.  His work has been as varied as securing the release of two improperly held helicopters in Papua New Guinea, setting up a legal framework to move slag from Canada to Poland’s interior, overseeing hundreds of litigation and arbitration matters in Korea, helping someone avoid terrorism charges in Japan, and seizing fish product in China to collect on a debt.

He was named as one of only three Washington State Amazing Lawyers in International Law, is AV rated by Martindale-Hubbell Law Directory (its highest rating), is rated 10.0 by AVVO.com (also its highest rating), and is a recognized SuperLawyer.

Dan is a frequent writer and public speaker on doing business in Asia and constantly travels between the United States and Asia. He most commonly speaks on China law issues and is the lead writer of the award winning China Law Blog. Forbes Magazine, Fortune Magazine, the Wall Street Journal, Investors Business Daily, Business Week, The National Law Journal, The Washington Post, The ABA Journal, The Economist, Newsweek, NPR, The New York Times and Inside Counsel have all interviewed Dan regarding various aspects of his international law practice.

Dan is licensed in Washington, Illinois, and Alaska.

In tandem with the international law team at his firm, Dan focuses on setting up/registering companies overseas (via WFOEs, Rep Offices or Joint Ventures), drafting international contracts (NDAs, OEM Agreements, licensing, distribution, etc.), protecting IP (trademarks, trade secrets, copyrights and patents), and overseeing M&A transactions.