Even if you don't plan to sue, it's a good idea to get legal advice. The various areas of IP law (patents, trademarks, copyright and trade secrets) are complicated, and your rights and remedies differ under each. Some infringement may also be criminal. An experienced IP attorney can help you evaluate your options and determine your best course of action.
Send Requests to Stop Infringement
In general, your first step after discovering your IP has been stolen or used without permission is to contact the offender. You or your lawyer can send a Cease and Desist Letter requesting the person or company stop using your work. The letter should include, at a minimum:
- Information about the work that has been infringed.
- The type of infringement (patent, copyright, etc.).
- The action you want taken (remove material from a website, stop using a trademark, etc.).
It's also a good idea to include a time limit to respond, so you know when to take further action if necessary.
For copyright infringement on the Internet, you have an additional avenue you can pursue under the Digital Millennium Copyright Act (DMCA). The act allows you to send takedown notices to the infringer's website host and other service providers, such as search engines and ad networks (Google AdSense, for example) serving the site. The content of these letters is similar to a cease and desist letter and should include an identification of the infringing material, where it is located (URL) and the action you expect the service provider to take, such as a search engine removing the site from its index.
Because website owners can tricky to identify, you might have to do a little digging:
- A WHOIS search will provide the name of the domain's registrant, who will often also be the owner. Many domain name registrars, such as GoDaddy and Network Solutions, offer free WHOIS search functions.
- Private registrations will show the name of the company providing the privacy service as registrant. You can send a DMCA notice to this company as well.
- Under DMCA, you may also be able to get a federal court order for a service provider to give you the identity of the alleged infringer.
If you believe someone has received a patent that infringes on yours, you can submit a Request for Reexamination to the United States Patent and Trademark Office (USPTO). A reexamination request is based on the belief that the patent was wrongfully granted because the invention was already described, in this case in your patent. A patent examiner will take another look at the allegedly infringing patent.
In the case of someone using a confusingly similar trademark, you may want to send a Trademark Violation Letter to that person.
Pursue Legal Action
Before you can take legal action in a copyright infringement case, your work must be registered. If it is not, do this as soon as possible, because you can't recover damages for the time the work is unregistered. Similarly, you can't file a patent infringement suit until the USPTO has granted your patent, but you may be able to recover some damages from the time before the patent was issued.
Depending on the type of infringement, you may be able to file a civil case, a criminal complaint or both. Copyright, trademark and patent infringement can all be handled in civil court. Depending on the facts of your case, the damage you have suffered and other factors, you may be able to get:
- An injunction to stop the person from continuing to use your IP, including removing a product from market.
- Payment of your losses.
- All or a share of the infringer's profits from the use of your IP.
- Attorneys' fees.
- Punitive damages.
Most intellectual property infringement cases are handled in federal court, but if your case involves an unregistered trademark or one registered only with your state, you will have to file in state court.
Some cases of IP theft may also be criminal. The Economic Espionage Act of 1996 makes some types of trade secret theft federal crimes. Counterfeiting and piracy are also criminal acts. You can report counterfeiting and piracy to the FBI's Internet Crime Complaint Center if the goods are for sale online. If the goods are being imported from other countries, you can contact the U.S. Customs and Border Patrol and the National Intellectual Property Rights Coordination Center.
The FBI's Financial Institution Fraud Unit handles criminal infringements of non-digital, non-Internet related works. Your intellectual property lawyer can help you determine if the infringement of your work is criminal and where to report it. If you choose to also file a civil suit, your attorney can help you file it and build a strong case.
This article contains general legal information and does not contain legal advice. Rocket Lawyer is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.
