If you scan the Northern District of Indiana copyright and trademark indexes, you will keep seeing captions like Plaintiff v. The Partnerships and Unincorporated Associations Identified on Schedule A. That is not a missing name. That is the case. The real defendants – often dozens or hundreds of Amazon, eBay, Temu, or Shopify storefronts – are listed on a sealed exhibit filed with the complaint. Counsel asks for a temporary restraining order, an asset freeze, and leave to serve by email. Many of those defendants never appear. Defaults follow. The docket looks busy but the local story is thin.
These filings started as a Northern District of Illinois habit and migrated. Hammond now sees a regular diet of them. Some are trademark counterfeiting. Some are copyright. The plaintiff is often a brand or a designer with no Indiana office. The “Indiana” connection is venue and a magistrate who will sign a TRO. That is enough for the statute. It is not enough for the kind of post this blog is for.
This site follows named parties, local businesses, university marks, and the occasional food truck that could not sort out a cease-and-desist. A sealed schedule of overseas sellers does not give you that. There is usually no public complaint worth quoting, no Indiana hook beyond the case number, and no answer coming. When a Schedule A filing names a real local defendant or turns into something other than a default mill, it will earn a post. Until then, you will see those captions in the monthly wrap, if at all, and not as a standalone post.
Stay tuned for the cases with names on both sides of the “v.”
Most Indiana trademark and copyright fights that end up in the Northern or Southern District started with a letter, not a complaint. That letter is usually called a cease-and-desist. It is also one of the most misunderstood pieces of paper in this practice.
A cease-and-desist letter is a demand. It is not a lawsuit, not an injunction, and not a finding that anyone has infringed anything. The recipient does not have to agree with it. The sender does not have to file a case if the letter is ignored. Both of those facts surprise people.
What the letter actually is
In the trademark and copyright matters this blog follows, a C&D is typically a lawyer’s letter that:
identifies the mark or work the sender claims;
describes the use the sender objects to;
asks the recipient to stop that use by a date; and
often asks for written confirmation, an accounting, or destruction of inventory.
Sometimes it attaches a registration certificate. Sometimes it attaches screenshots. Sometimes it is two pages. Sometimes it is twenty. Length is not a substitute for a real claim.
Common-law rights can support a letter just as a federal registration can. An Indiana state trademark registration can support one too. None of those pieces of paper turns the letter into an order.
What it can do
Start a conversation that does not require a filing fee. A lot of disputes end here. The recipient rebrands, takes a listing down, or negotiates a short coexistence deal. No docket number is ever assigned. That is a feature, not a failure.
Put the other side on notice. In copyright cases, notice can matter for willfulness and for statutory damages once a registration is in hand. In trademark cases, notice can matter if the dispute later becomes a willfulness or damages fight. The letter is evidence that someone was told, on a date certain, that a senior user objected.
Create a paper trail. If the matter does go to the Northern or Southern District, the complaint will often recite that counsel sent a letter and “was unable to find a suitable resolution.” That sentence is familiar on this blog because it is familiar in the complaints.
Sometimes freeze a use without a TRO. A marketplace seller, a printer, or a small retailer will often pull a listing when they get a letter they take seriously. Amazon, Shopify, and a local sign shop are not going to litigate your brand for you.
Sometimes stop a USPTO application from sailing through. A well-timed letter can lead to an abandonment, an amendment, or a consent agreement before an opposition is even filed. It can also do the opposite and provoke a declaratory-judgment suit. That is a reason to think before you send.
What it does not do
It does not decide who is right. The USPTO may have already allowed a junior mark. A Secretary of State filing may already be sitting in Indianapolis. Neither office has held a trial. A letter from counsel is not a substitute for one.
It does not give you an injunction. Only a court can order someone to stop. Until then, the recipient can keep using the name, keep selling the print, and keep the website up. Many do.
It does not toll a statute or lock in venue. Sending a letter to a Fort Wayne address does not guarantee the case stays in the Northern District. Silence after a letter does not stop a limitations clock by itself.
It does not require the other side to answer. No rule of civil procedure forces a response to a private letter. Some recipients answer through counsel. Some ignore it. Some send their own letter back. All three happen in Indiana.
It does not replace a copyright registration if you want statutory damages and fees. If the plan is a copyright suit, the registration timing rules still apply. A blistering C&D sent the week after the photo went up does not fix a missing registration.
It is not confidential just because you marked it “CONFIDENTIAL” or “FOR SETTLEMENT ONLY.” Labeling helps in some later arguments. It is not a seal. Assume the letter can show up as an exhibit.
Indiana wrinkles worth knowing
Indiana businesses often hold three different kinds of rights at once: common-law use in a county or two, an Indiana state registration, and a federal application or registration. A letter that treats those as the same thing is sloppy. A state registration is not a nationwide right. A federal registration is not a finding that every local user must fold.
The two Indiana districts see a steady run of cases that recite a C&D and then a filing a few weeks or a few months later – food trucks, chiropractors, lawn-care parts, campus events. The letter was the last attempt at a private fix, not the first exhibit in a war plan. When the letter goes out over a holiday week to an institution that is closed, you can expect the reply to be late and the temperature to rise. That is not a legal doctrine. It is a calendar.
There are also files where the better move is not to send a letter: a pending intent-to-use application you do not want to poke, a counterfeiter you do not want to tip before a seizure motion, or a recipient you expect will race to another courthouse for a declaratory-judgment action. “We sent a C&D” is not a required element of a Lanham Act or Copyright Act complaint.
How to read one if it lands on your desk
Read the whole thing, including the exhibits. Check whether the claimed registration actually covers the goods or services in the letter. Check whether the dates work. Do not take the registration symbol in the letterhead as proof of anything by itself. Then decide, with counsel if the risk is real, whether the use is worth keeping.
A short, accurate reply is often better than a long manifesto. A long manifesto is often better than a social-media thread. Neither is required.
How to write one if you are the sender
Be specific about the mark or the work. Be specific about the use. Do not claim a registration you do not have. Do not use the ® symbol on an unregistered mark – this blog has already covered that mistake. Give a date that a human can meet. Say what you want: stop, rebrand, account, assign a domain, sign a consent. “Demand that you cease and desist all infringement” is not a punch list.
If you are not prepared to file in the Northern or Southern District when the date passes, think hard about sending the letter at all. Recipients can tell the difference between a letter that will be followed and a letter that will not.
Stay tuned for the usual Indiana IP litigation docket notes. This one was just about the letter that so often comes first.
The Supreme Court of the United States gets back to work this week and will be hearing oral arguments on a copyright case, Golan v. Holder. [FULL SCHEDULE] Here’s the skinny on what you’ll want to know about the case going into Wednesday morning’s arguments:
Section 514 of the Uruguay Round Agreements Act of 1994 (Section 514) did something unique in the history of American intellectual property law: It “restored” copyright protection in thousands of works that the Copyright Act had placed in the Public Domain, where they remained for years as the common property of all Americans. The Petitioners in this case are orchestra conductors, educators, performers, film archivists and motion picture distributors, who relied for years on the free availability of these works in the Public Domain, which they performed, adapted, restored and distributed without restriction. The enactment of Section 514 therefore had a dramatic effect on Petitioners’ free speech and expression rights, as well as their economic interests. Section 514 eliminated Petitioners’ right to perform, share and build upon works they had once been able to use freely.
The questions presented are:
Does the Progress Clause of the United States Constitution prohibit Congress from taking works out of the Public Domain?
Does Section 514 violate the First Amendment of the United States Constitution?
Stay tuned to the Indiana IP&T blog for a transcript and summary of the oral arguments. Go here for links to the Merit Briefs and a long list of Amicus Briefs.
The last time Peyton Manning was leading the Indianapolis Colts on a championship run (it’s been awhile), the NFL clamped down on the ability to watch the big game in churches. The NFL sent letters to churches informing them that airing the game would be a violation of the NFL’s copyright and trademark rights. However, two years ago the NFL appeared to call a reverse and allowed viewing in churches under certain conditions.
So what’s the NFL’s policy this year? Since there’s been no indication to the contrary, it seems the NFL is sticking to the policy that churches can air the Super Bowl without violating copyright laws. So start planning those parties!
Current US law extends copyright protections for 70 years from the date of the author’s death. But prior to the 1976 Copyright Act (which became effective in 1978), the maximum copyright term was 56 years (an initial term of 28 years, renewable for another 28 years). Under those laws, works published in 1954 would be passing into the public domain on January 1, 2011.
This includes:
The first two volumes of J.R.R. Tolkien’s Lord of Rings trilogy: The Fellowship of the Ring and The Two Towers
Aldous Huxley’s The Doors of Perception
Dr. Seuss’ Horton Hears a Who!
Richard Matheson’s I Am Legend
Fredric Wertham’s Seduction of the Innocent, subtitled “The influence of comic books on today’s youth”
Tennessee Williams’ Cat on a Hot Tin Roof
C.S. Lewis’ The Horse and His Boy, the fifth volume of The Chronicles of Narnia
First issue of Sports Illustrated
Director Alfred Hitchcock’s Rear Window, starring James Stewart, Grace Kelly, Raymond Burr, and Thelma Ritter
White Christmas, starring Bing Crosby, Rosemary Clooney, and Vera Allen, featuring songs by Irving Berlin
I Got a Woman, (Ray Charles and Renald Richard)
While authors of famous and commercially successful works have incentive to renew the copyright for a second term of 28 years, statistics show that 85% of authors did not renew their copyrights (for books, the number is even higher – 93% did not renew). This means that if the pre-1978 law were still in effect, about 85% of the works created in 1982 would enter the public domain on January 1, 2011. How amazing would that be?
“Imagine what that would mean to our archives, our libraries, our schools and our culture. Instead, these works will remain under copyright for decades to come, perhaps even into the next century. And for most of them – orphan works – that means they will be both commercially unavailable and culturally off limits, without any benefit going to a copyright holder.”
Click here for the full discussion and additional works.
GOLAN V. HOLDER
