Symbus Intellectual Property (IP) Law and Management

IP LITIGATION

Contact attorney Marina Lang for more information.

mlang@symbus.com

Tel.805.351.3682 Fax.805.659.1916

1000 Town Center Drive, Suite 300, Oxnard, California 93036

 

Cease and Desist!  The first step in dealing with an infringer is to send what is called a “cease and desist” letter.  Although not legally required prior to initiating litigation,  a cease and desist letter will frequently be the most cost-effective way to resolve a dispute.  Essentially  this is a warning letter that explains the rights of the intellectual property holder, details the relevant facts and law, tells the recipient that he must stop his infringing activities, and often asks for an accounting of any profits earned.  If the infringement is likely to be innocent rather than willful, the letter should give a reasonable length of time for the recipient to stop the activities. 

 

It’s important that a cease and desist letter is written carefully and after all of the relevant facts are known, since these days it could end up on somebody’s blog, or it might end up in federal court right away  if the recipient chooses to seek a “declaratory judgment” that the actions do not, in fact, infringe.  The optimal result is that the letter results in further discussion between the parties.  The alleged infringer may dispute the infringement, raise a legitimate defense, or they may be willing to license the intellectual property, leading to a successful outcome for both parties.  Symbus attorneys always strive to end disputes on a basis favorable to the client before it is necessary to go to court.

 

Going to Court.  If the parties fail to settle their differences, it then becomes necessary to prepare a complaint in a civil action.  A copy of this complaint can be sent to the infringer as further warning, or it can be filed with the court but not served, with a final letter to the infringer in an effort to bring resolution without litigation.  The complaint is typically filed in federal court versus state court.  However, the complaint can contain not only federal claims, such as trademark, patent, or copyright infringement, but also  claims based on violations of relevant state law, such as unfair competition, false advertising or breach of contract.

 

Determining the “venue” for federal jurisdiction can get complicated.  Typically, jurisdiction will fall in the county where the defendant resides or where the infringement took place.  But what if the infringement took place on the Internet and the physical location of the defendant can’t be determined?   Courts have continued to struggle with Internet cases.  Plaintiff’s lawyers will usually argue for jurisdiction in the county of the plaintiff  based on the defendant’s “purposeful availment of the benefits and protections” offered by that state.  Generally, the more “commercial” versus “passive” a website is, the better the chances are for establishing jurisdiction in Plaintiff’s location. 

 

Federal  “subject matter” jurisdiction gives attorneys greater ease to practice throughout the United States.  The federal courts utilize an electronic filing system, permitting federal courts to accept filings and provide access to filed documents over the Internet.  Depending on the federal court’s local rules, often an attorney need only be in “good standing” in their home state to be admitted to a state’s federal court.  Also the lawyer can be admitted pro hac vice, which allows her to be admitted to that federal court for a particular case. Thus, attorneys are often able to prosecute or defend litigation matters nationwide.

 

Whether solved with a cease and desist letter, an out of court agreement, mediation, or litigation, Symbus understands that the most important goal is to obtain a beneficial and cost-effective end to a dispute in the shortest time possible. Our clients appreciate the efforts that Symbus makes to avoid unnecessary expenses.