A (Brief) Guide to Cease and Desists for Indie Developers

Before we go any further, the lawyers are making me post this part first: The following post is from my experience as a developer and I am in no way trained as a lawyer. Do not construe any of the following as legal advice. If you are in need of legal advice, consult a lawyer.

Ok, now to the post.

I have been developing apps for the iOS App Store since 2008 and as a result, I have many battle scars to show for my efforts. Unfortunately, the worst of these scars tend to come from lawyers. One particular blunt instrument that lawyers like to use is something called a Cease and Desist. These are very scary messages that are usually delivered via email but can often come in snail mail.

Over the years, I have received at least 10 different Cease and Desists (including one from the infamous Doodlegate debacle) and have learned quite a bit along the way. Some of what I have learned has been from actual lawyers, and some from the good old school of hard knocks. My intent here is to share a little of what I have learned because at the end of the day, this stuff sucks and we’d much rather be dealing with bugs than lawyers.

To start with, here is an example of one that I received last year:

I am legal counsel at [REDACTED] and represent the authorized of the rights infringed by the apps described.

[REDACTED] is the registered owner of both the [REDACTED] (and its French equivalent, [REDACTED]) and [REDACTED] Design trade-marks in Canada.  As such, it has the exclusive right to their use. 

When the trade-mark [REDACTED] is used as a search term in the Canadian iTunes store, not only does our App appear, but the Apps of a number of other individuals/companies. 

We would ask that individuals be prevented from using the [REDACTED] trade-mark as a “key word”, as this constitutes trade-mark infringement and could be the reason why other Apps are appearing when the trade-mark [REDACTED] is used a search term.  

[REDACTED] can not tolerate, these individuals/companies benefitting from the tremendous goodwill associated with these marks.

Most Cease and Desists follow a form similar to this. The entity that has protection for their intellectual property sends a sternly written message informing you that you need to fix/remove/change something. However frightening this might sound, a Cease and Desist is not the same as a lawsuit. You are not being sued. You are simply being informed that you need to make a change in accordance with someone else’s real or perceived protection of their intellectual property. So, what should you do? Here are a few things that I have learned along the way:

1. Don’t panic. Despite the fact that these messages intentionally sound scary, you don’t need to be afraid. In the example above, phrases like “infringement” and “can not tolerate” make it sound like these folks mean business and are prepared to bring down the hammer of justice. But if you look more closely, you will see that usually these messages are form letters. Notice that nothing mentions the name of my company or even my name. In fact, there is really nothing of substance in the email. (We’ll come back to that in a bit.)

2. Be polite and professional in your communication, but do not apologize or acknowledge fault. Just because you receive a C&D, it is still the responsibility of the claimant to show that you are at fault. Yes, you ultimately may be required to make a change but there are several things that need to be established first. Being polite and professional will go a long way in these types of issues. Additionally, do not immediately remove your app for sale or whatever it is they are requesting that you do. Doing so at this point would be acting with incomplete information, which leads to the third point.

3. Ask for additional information. There are a variety of reasons to do this. The first is to signal that you have received their request and are acting in good faith. This is also to flag the fact that their claim is incomplete. As I pointed out, the above C&D is almost completely devoid of meaningful information. Here was my response to the C&D above:

Hello Ms. [REDACTED],

Would you please send either a scanned copy of proof of your trademark or send via postal service a hardcopy that clearly shows when the trademark was issued and under what jurisdiction it applies and we will be happy to comply.

Sincerely,

Jonathan Hays

An excellent action is to ask for actual documentation of the patent, trademark or copyright. A few times, I have asked for documentation only to find that what they sent had absolutely no application to my app or that they were claiming to own something that they did not. If they cannot provide proof then they have no claim. Additionally, if you received the C&D through Apple Legal, make sure to cc them on all of your discourse with the lawyer. This helps to both keep the lawyers honest but also will help keep you in good standing with Apple. (It also provides a fairly neutral third party with a paper trail).

4. Once you receive the documentation, the next step is to actually read it. This can be fairly dry reading, but I assure you that it is worth it and that it is no less obtuse than technical documentation on the latest APIs. For example, many patents have multiple claims in them. A great thing to do is to ask for clarification regarding which claims they are actually citing against you. This is especially important if the C&D you received was a form letter because it means that your company was collected in some large data sweep without anyone actually taking the time to look at your App. As with any bulk data collection, there can be errors. At this point, you may or may not want to consult a lawyer on your side, however it is certainly fine to make the people that sent you a C&D actually do their jobs by asking for more information. Here is how I responded once I received the documentation:

Hello Ms. [REDACTED],

Thank you for your reply.  Apple has asked us to make sure to include them in all exchanges and you did not include them on this so I am re-adding them.  That being said, I have a few questions that you have not yet addressed:

  1. I am trying to make sure that I fully understand which of the services you are describing is in conflict to make sure that we are in full compliance.  To be clear, I am asking [REDACTED] to explain which of the wares and services that [REDACTED] falls within. The services that are listed include SMS, printed publications, business directories, and Internet websites.  [REDACTED] is none of those so I am seeking clarification of your claims. Also, as you acknowledged in your email below, at least one of the documents that was sent over do not apply so obviously there is some confusion for [REDACTED].  I am simply seeking verification that a mistake has not been made by [REDACTED].
  2. I need to understand your claim that [REDACTED] is infringing within the application description because that is not accurate as nowhere in the application description does the word [REDACTED] or [REDACTED] occur.
  3. I asked previously if you are claiming IP protection only for sale within Canada.  I have yet to receive a response.

Thank you,

-Jonathan Hays

5. Verify jurisdiction. Make sure that you understand where in the world they have permission to enforce their claim. The App Store is a global marketplace and unless they have protection for their claim in every country that you sell, you are only compelled to comply in the corresponding markets.

Good morning Jonathan, 

Yes, we are solely claiming IP protection for sale within Canada. In Canada, [REDACTED] has a registered trade-mark for [REDACTED], and the [REDACTED] & Design.  Under Canadian legislation this affords [REDACTED] with the sole and exclusive right to make use of the trade-marks in Canada and prevents any third party from making use of it in any context without [REDACTED]’s explicit permission even if the wares and services description is different.
 
In making use of [REDACTED]’s trade-marks in the description and logos of your app, you are creating an association between our respective entities that will confuse consumers and lead them to believe we are somehow related.  Unfortunately, this is contrary to Canadian Trade-mark legislation.  As such, we would ask that you cease making use of the trade-marks in the description and logos of your apps, or cease distribution of the apps in the Canadian iTunes store.
 
Best regards
So in this particular case, the IP owner only had protection for their claims in Canada and therefore only sales in the Canadian App Store were in question. Ultimately, I resolved the issue by simply removing it for sale in Canada and the app continues to garner downloads in all of the other App Stores. If I had not asked their lawyer to clarify the claimed jurisdiction, I might have lost out on continued revenue in the other countries for absolutely no reason.
As developers we generally avoid conflict. All things being equal, we prefer to make things. However, when we make things that we sell commercially, we often have to deal with lawyers and Cease and Desist requests. Always remember that these are requests, not legally binding demands. If/when you receive a C&D, do your due diligence. Be calm. Take measured steps. If all else fails, keep in mind that every time you send a request back to the lawyer on the other side of the C&D you are incurring billable hours to whomever is requesting the Cease and Desist. It’s only seems fair that if you’re going to lose time and money, that they be willing to do the work to back it up.

6 thoughts on “A (Brief) Guide to Cease and Desists for Indie Developers

  1. Curious…
    I’m not a lawyer either, but my understanding is than an email message does not constitute legal service. Why not just ignore the emails until they bother to send an actual registered postal letter? Sure, you responding indicated acceptance but if you just ignore the emailed C&D is seems to have no legal status.

    1. An email message is sufficient notification for a Cease and Desist. I have only ever received one physical Cease and Desist.
      Another wrinkle is that if you are an iOS developer, the original message comes from them notifying you of a potential legal issue. If you don’t eventually respond, Apple will take your app down for you.

  2. This is interesting and happened to one of my apps a few years back. The situation at the time was specific to keywords and not the description of the application. I’m wondering if keywords or search terms are actually protected like this since they are not visible as part of a title or description. I wish I would have had this advice at the time.

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