by John Seay, Atlanta Entertainment Lawyer: The Seay Firm LLC (@TheSeayFirmLLC)
This is Part 2 of a two-part series on cease and desist letters. This Part discusses what to do if you need to send a cease and desist letter. Part 1 discusses what to do if you receive a cease and desist letter. Please note that the below is intended to help you understand the issues at play and compile information for your attorney. Although there are many aspects of your business that you can handle alone, unless you know what you’re doing, responding to and sending cease and desist letters is serious business for which you should consult an attorney. As always, contact us with any questions.
As an artist, there are few feelings worse than another party taking credit for something that you created, or using your work without your permission. But, before you fire off an angry letter threatening million-dollar lawsuits, there are some things you should know about copyright law and its application in infringement matters.
Is My Work Copyrightable?
Copyright protection subsists…in original works of authorship fixed in any tangible medium of expression…from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.
A “copyright” is basically the right to prevent others from using a creative work. That work can be literary, dramatic, musical, or artistic, such as poetry, novels, movies, songs, computer software, and even architecture. But in order for a work to be copyrightable, it must be original. Although the bar for originality is low, the work must be at least minimally creative. The stronger the case for the originality of a given work, the stronger the copyright is said to be, and the opposite is true as well.
Ideas are not protectable by copyright, only the expression of those ideas. If you have an idea for a sitcom and tell your friends about it, then you can’t prevent them from producing a show based on your concept. Copyright protects the expression of sufficiently original ideas only when they are “fixed in any tangible medium of expression.” In other words, your idea – which must be sufficiently original – is only protected when it is written down, recorded, etc., and even then only the expression of the idea is protectable, and not the idea itself. I discuss other ways to potentially protect ideas in another blog post, which you can read here.
Has My Copyright Been Infringed?
Copyright is often referred to as a “bundle of exclusive rights.” That means that your copyright in a work is comprised of numerous separate and exclusive rights, i.e., things you can do – or refrain from doing – with your work. As a copyright holder, you have the right: (1) To reproduce the work; (2) To make derivative works of the work; (3) To distribute copies of the work to the public; (4) To perform the work publicly; and (5) To display the work publicly. If someone does any of those things to your work without your permission, then – unless they have a valid defense (see below) – they have infringed your copyright, and you may enforce your legal rights against them.
Does the Other Party Have Any Defenses?
You may enforce your copyright subject to any defenses that the other party may have. Among those defenses are claims that the work was a work for hire, was properly licensed, including that the work was licensed pursuant to some kind of compulsory or statutory license, or is subject to the statute of limitations. The biggest exception to your exclusive rights is Fair Use. I discussed Fair Use extensively in a previous blog post, but – in a nutshell – note that in certain circumstances, your work or portions of your work, may be used, even for profit, without your permission. However, Fair Use is an extremely messy concept and one for which you’ll want to consult an attorney.
How Much Can I Get?
In a previous blog post, I discussed the benefits of registering your copyrights. Although registration is not required to protect your work, registration is required before filing a lawsuit. Registration before the act of infringement may also entitle you to additional damages and attorney fees. Those additional damages give you more leverage in negotiating settlements. Conversely, if the copyright in your work was not registered before the act of infringement, then you are only entitled to actual damages, i.e., the loss of the licensing fee you would have received had the work been properly licensed, and the portion of the defendant’s profits that are attributable to the infringement. Because online registration is only $35, there is no excuse to not register your copyrights. Note that regardless of your work’s registration status at the time of infringement, you may be entitled to injunctions to prevent other parties from exploiting your work.
Should I Send a Cease and Desist Letter?
The above information will help you to – with the help of an attorney – analyze the strength of your case. If after walking through the above considerations you feel like your work was infringed and you want to take steps to end that infringement, then there are some additional considerations relating to cease and desist letters.
Cease and desist letters are cheaper than litigation and can achieve a speedier result if the defendant is willing to cooperate. You will probably want to have an attorney send a cease and desist letter on your behalf to ensure that the letter contains all of the elements that it should, and that the law is stated accurately. The first thing that the other party will likely do is hand the letter to their attorney, and if the letter is written shoddily or contains incorrect information, then your claims will not be taken seriously.
However, cease and desist letters lack teeth. They can only convince a party by threat of litigation to do something. If the party doesn’t think you’ll pursue the claim, or they dispute it, then you have no choice but to either file a lawsuit or abandon your claim. Cease and desist letters can also instigate unwanted litigation. Whenever there is a genuine controversy between parties as to ownership of a copyright, for example, the party being served the cease and desist letter can simply file a lawsuit asking for something called a “declaratory judgment,” which is basically a determination by the court as to who owns the work or whether a given use of a work constitutes infringement.
It is impossible to know whether a party will file an action for a declaratory judgment. Generally, parties don’t want to spend money in such cases, particularly if there is a chance that they may lose. However, the other party may be banking on your inability to pursue legal action; in other words, that you have enough money to hire a lawyer to send a letter, but not enough to hire that same lawyer to pursue a claim for you. One additional negative aspect of a declaratory judgment is that it can force you to defend a claim in a court on the other side of the country. For example, if you are based in Georgia and send a cease and desist letter to a California corporation, then they may institute a declaratory judgment action in California and force you to defend it out there. If you do not, then the defendant will obtain a default judgment against you.
If after researching the defendant you feel like the potential for a declaratory judgment lawsuit is relatively high, then you may – after discussing with your attorney – have your attorney draft and file a complaint but not serve it, and then send the cease and desist letter. This is referred to as “pocket filing.” The benefit is that if the other party files for a declaratory judgment, then the court will dismiss it because you had already filed a complaint in another jurisdiction. You can always serve the complaint later or, if the other party settles the claim, then dismiss your lawsuit without ever having served it.
Many of the above considerations, including the decision as to whether to “pocket file,” are complicated and this post only scratches the surface of them. Therefore, it is highly recommended that you discuss all of your options with an attorney. Working with an attorney can put your mind at ease and make you look more serious to potential opposing parties. As always feel free to contact me with any questions or concerns.
Nothing in this blog should be relied on as legal advice. The information contained herein does not create an attorney/client relationship. The articles posted are intended for entertainment and general information purposes only. Laws vary by state/province. Anyone seeking legal advice for a specific situation should consult a qualified lawyer or similar qualified professional in the appropriate state.
 17 U.S.C. § 102(a).
 Id. These categories are part of the broader category of “original works of authorship.”
 For example, listing names alphabetically in a phonebook is not copyrightable, but listing the names in some other non-intuitive manner might be copyrightable. Similarly, your idea to write a song about love is not copyrightable, but your composition and lyrics would be.
 17 U.S.C. § 102(b).
 One way you could protect your idea is to enter into a non-disclosure agreement with your friend (or anyone else) beforehand – but that’s the subject of another post.
 In other words, the right to – for example – make a sequel or a remix of the original work.
 17 U.S.C. § 106.
 Note, though, that there is no infringement where the expressions are sufficiently different. In other words, someone may be able to, for example, change your words and melody slightly and effectively write a new and copyrightable song. That is especially the case where your copyright was “thin,” i.e., not very strong.
 A work for hire agreement is entered with independent contractors. More on that in a subsequent blog post.
 For example, so long as the other party remits a royalty to you, you cannot prevent another party from recording a cover version of a song that you have already released. 17 U.S.C. § 115. However, that the use of your work can’t be dramatic, i.e., theatrical, and can’t fundamentally character of the original work.
 I.e., the amount of time in which you have to bring a claim for an act of infringement.
 Or within three months of publication if the infringement happened to occur within that period.
 Statutory damages can range from “a sum of not less than $750 or more than $30,000” to a maximum of $150,000 if the infringement is considered “willful.” 17 U.S.C. § 504(c)(1)-(2). Remember to always include a copyright notice on your work when you publish or release it to increase your chances of being awarded damages for willful infringement. The following should suffice: © [Year of Publication] [Owner’s name].
 So, if the defendant—even if it was a giant corporation—didn’t make any money from the use of your work, then you may only be entitled as a matter of law to the loss of the licensing fee.
 There are other benefits to registration, such as presumption of validity of the copyright. Note too that sometimes the value of non-statutory damages may exceed the value statutory damages. The Copyright Act allows plaintiffs to wait until right before trial to decide which kind of damages they want.
 Copyright is only one of the claims you may have against a defendant. You may also have trademark claims or any variety of state law claims. It is important to consult with an attorney whenever you think you may have a claim against a party so that you won’t risk losing any additional claims that you didn’t know about.
 Sometimes it may help to send a follow-up letter or, better, have an attorney draft an unfiled lawsuit to send to them, which may indicate your seriousness.
 Although note that many lawyers do take some infringement cases on a contingency basis.