IP Infringement: What Steps Can You Take If You're Affected?

IP infringement occurs when someone uses your intellectual property without your permission or beyond the scope of the permission you granted. Common examples of IP infringement include copying a product’s patented features or using a trademarked logo in a way that is likely to confuse consumers about the source or affiliation of goods or services. If you suspect someone is infringing your IP, your options range from sending a cease-and-desist letter to filing an infringement lawsuit to petitioning a court for emergency relief. The good news is that many IP disputes can be resolved outside the courtroom. Before choosing a strategy, however, you must understand both the legal claim and the commercial objective behind pursuing it.

Intellectual property can be among a business’s most valuable assets. When a competitor, former employee, business partner, vendor, or other party begins using a company’s brand, creative work, proprietary information, technology, or other protected material, the resulting dispute can affect far more than the asset itself. It may threaten customer relationships, competitive position, revenue, or control over information central to the business.

Key Takeaways

• IP infringement occurs when someone uses, sells, or imports your protected intellectual property without your permission, or beyond the scope of any permission you gave.
• The right enforcement strategy depends on the type of IP involved. Trademarks, copyrights, patents, and trade secrets each have different rules for registration, venue, and remedies.
• A well-drafted cease-and-desist letter resolves many disputes without litigation, especially when the infringement is unintentional.
• Patent and copyright claims belong in federal court, and owners of U.S. works generally must register their copyright before filing suit. Trademark and trade secret claims may proceed in state or federal court.
• When harm is immediate and hard to reverse, such as threatened disclosure of trade secrets, temporary or preliminary injunctive relief may be needed to preserve the status quo while the case proceeds.

What Is IP Infringement?

IP infringement occurs when someone uses protected intellectual property in a way that violates the owner’s rights, such as by using, selling, or importing your IP without your permission. IP can include product designs, company logos, confidential client lists, song lyrics, and more. When these rights are violated, the owner may take legal action to prevent future infringement and recoup financial losses.

The law treats each form of IP differently, and the right enforcement strategy depends on the type of protection involved. What works for a trademark dispute may not be appropriate for a patent, copyright, or trade secret claim, so the legal approach must be tailored accordingly.

Using a Cease and Desist Letter to Resolve IP Infringement Disputes

If you discover that someone is using your IP without authorization, you must act promptly to protect your rights. A common first step in responding to a suspected intellectual property violation is to put the other party on notice.

By sending a cease-and-desist letter to the alleged infringer, you let them know you’re aware of their actions and prepared to defend your IP rights. An effective cease and desist letter should:

• Accurately describe the facts: Your letter should provide a factual account of what happened, including, in some cases, registration numbers, dates of infringement, dates of first use, evidence of the infringement, and sometimes even the nature of the harm you have suffered (e.g., lost profits, expenses, and other monetary damages).
• Clearly explain your position and provide legal support: To elicit a favorable response from the recipient, your letter should be firm, but respectful. As the saying goes, you catch more flies with honey. Support any allegations with facts and legal arguments, including any statutes, regulations, or contract terms that may have been violated.
• Specify how you would like to resolve the dispute: Your letter should set forth how the other party can settle the dispute. Depending on the situation, this may require the recipient to pay a certain amount of money, perform a specified act (such as ceasing the infringing activity), or both.
• Give the recipient a deadline to respond: Your letter should set a firm date by which the other party must respond to your demands. This helps ensure you are not left wondering whether the other party is willing to negotiate or whether you should proceed with a lawsuit.
• Firmly state the steps you may take if the matter is not resolved: While your letter aims to encourage an out-of-court settlement, the other side must also understand you mean business, including by filing suit. If not, they may be willing to take their chances that you will abandon your claim.

In many cases, especially when the infringement is unintentional, a cease-and-desist letter can resolve the issue. However, if the alleged infringer ignores your letter or disputes the allegations, you may need to pursue an IP infringement suit.

Filing an IP Infringement Lawsuit

Whether and where you can file an IP infringement lawsuit depends on the type of IP involved. For instance, to file a patent infringement lawsuit, you must have a patent issued by the U.S. Patent and Trademark Office (USPTO). Likewise, for U.S. works, copyright registration is generally required before a copyright owner may institute an infringement action in federal court. Federal claims arising under the patent and copyright laws fall within the exclusive jurisdiction of the federal courts. Allegations of trademark infringement and trade secret misappropriation, by contrast, may be pursued in either state or federal court. Determining the appropriate forum requires careful consideration of jurisdictional requirements, the claims involved, and the case’s procedural and practical issues.

The standard for bringing an IP infringement suit also depends on the type of IP involved. Generally, plaintiffs must prove two essential things: that they have legitimate rights in the IP in question; and that the defendant has violated those rights. Available remedies depend on the type of IP and the circumstances of the case and may include injunctions, attorneys’ fees, actual damages, royalties, and enhanced or exemplary damages.

Seeking Emergency Relief in IP Infringement Cases

In some IP disputes, particularly those involving trade secrets or other threatened misuse that could cause immediate and difficult-to-reverse harm, waiting for a final judgment may not provide meaningful protection. In those cases, you may need to evaluate whether temporary or preliminary injunctive relief is available to stop the challenged conduct, prevent further disclosure or use, and preserve the status quo while the dispute is litigated.

Frequently Asked Questions About IP Infringement

Do I need to register my IP before I can sue for infringement?

It depends on the type of IP. A patent infringement suit requires a USPTO-issued patent. For U.S. works, copyright registration is generally required before filing an infringement action in federal court. Trademark rights can be enforced without a federal registration, although registration provides significant advantages in litigation. Trade secrets are not registered; protection depends on the information being valuable because it is secret and on the owner taking reasonable measures to keep it that way.

Can IP infringement be resolved without going to court?

Yes. Many IP disputes are resolved outside the courtroom, often through a cease-and-desist letter followed by negotiation. This is particularly true when the infringement is unintentional. If the other party ignores the letter or disputes the allegations, litigation may become necessary.

What remedies are available for IP infringement?

Available remedies depend on the type of IP and the circumstances of the case. They may include injunctions stopping the infringing conduct, actual damages, royalties, attorneys’ fees, and enhanced or exemplary damages. A plaintiff generally must prove legitimate rights in the IP and that the defendant violated those rights.

When should I consider emergency relief?

Consider emergency relief when waiting for a final judgment would not provide meaningful protection, such as when a former employee or business partner threatens to disclose or use trade secrets. Temporary or preliminary injunctive relief can stop the challenged conduct and preserve the status quo while the dispute is litigated.

Our Experienced IP Attorneys Will Protect Your Rights

Intellectual property infringement can seriously threaten your business, and the right response depends on the type of IP involved and what you need to protect. Michael Mietlicki, Counsel in Scarinci Hollenbeck’s Litigation Department, represents companies, business owners, and individuals in complex commercial litigation and business disputes across New Jersey and New York, including trade secret, IP, and unfair competition matters. Mr. Mietlicki and the other members of the firm’s Intellectual Property Practice are prepared to take on your most complex IP challenges. Scarinci Hollenbeck represents clients in state and federal courts; before administrative bodies like the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB); and in alternative dispute forums around the world. The firm has obtained nationally recognized precedential verdicts and decisions for its clients and has achieved countless favorable settlements. To discuss an IP infringement concern, contact Mr. Mietlicki or a member of the Intellectual Property Practice.