Graphic Designer Gets Cease and Desist from Former Client

Body

[private]

December16,2009

VIA REGISTERED EMAIL

[private]

[private]
Re: Cease & Desist Demand reCopyright Infringement and Trade mark Infringement


Dear Ms. [private]: This law firm represents Midwest Tourism Association (“MTA”) in connection with enforcement of its intellectual property rights and related matters. MTA has marketed’ and sold travel information in the Midwest in connection with the mark ”MIDWEST TOURISM ASSOCIATION” (here in after the ”Mark”) since 2003. MTA has used the Mark continuously in connection with extensive and long-term advertising and promotional activities and materials appearing in numerous forms, including without limitation, on brochures and in printed advertisements, in various broadcast advertisements on television and over the radio, in the Yellow Pages, and on the Internet. Through these activities over the past 7years, MTA has built up and established extensive good will and an excellent reputation in the industry, and the Mark has come to be associated distinctly in the mind of customers in the market place with MTA.Moreover, MTA’s exclusive right in the Mark are secured by the following trademark registration: Federal Trademark Registration No. 3585085. A copy of MTA’s trade mark registration certificate is annexed here to as Exhibit A. 

Earlier this year, it came to our attention that you are using the Mark and copies of MTA’s marketing materials (“Copyrighted Materials”) on your website located at [redacted].com to promote and offer your services for sale over the Internet. Your use of the Mark in your website is misleading because you falsely state that you are presently employed by MTA. Your misrepresentation appears to be intentional because your recent email to MTA, dated December IIth, acknowledges your understanding that your services as an independent contractor with MTA have terminated. Since you are offering your services in the same or a similar business as your former role at MTA, consumers could be,and almost certainly have been, mislead in to believing that you are part of; or affiliated with MTA.Your use of the Copyrighted Materials is unauthorized and enhances the confusion caused by your unauthorized use of the Mark. It appears to us that your use of the Mark and the Marketing Materials is a deliberate attempt to confuse consumers and improperly misappropriate and trade up on the good will, trade mark and other intellectual property rights of MTA. Because your website incorrectly lists MTA as your present, and only, employer, we can think of no other legitimate reason why you would misrepresent your association with MTA and choose to use the Mark and Copyrighted Materials. The same misrepresentation has been made on other sources, including www.aigachicago.org and www.linkedin.com. In addition to the Mark,MTA owns the Copyrighted Materials that you display on your website without authorization. These materials( including the logos, photos, textual content) were fixed in the tangible form of MTA’s magazines and webpages. We understand that you emailed, without MTA’s consent, MTA’s proprietary marketing materials to your personal e-mail account before your service as an independent contractor with MTA was terminated. In addition to violation of the Copyright Act, your exceeding authorized use of MTA’s computer systems to make unauthorized copies of the Copyrighted Materials constitutes a violation of the Computer Fraud & Abuse Act.Your misappropriation and unauthorized use of the Copyrighted Materials constitutes conversion and copyright infringement. In addition to your promotional website, we have determined that you have used MTNs Copyright Materials without authorizationon www.meetup.com as well. Furthermore, it appears that you also e-mailed yourself client contact information. MTA’s takes every reasonable effort to maintain the confidentiality of its list of customers and suppliers. Because this information is not generally known to others, such information provides MTA with an economic value. As such, your acquisition of MTA’s contact list by improper means constitutes trade secret misappropriation and a breach of your fiduciary duty to MTA. Please be advised that your copying and use of the Copyrighted Materials and the Mark in connection with your false assertion that you are employed by MTA exposes you to liability for several different legal causes of action. including but not limited to the following:

i) trade mark infringement pursuant to the Lanham Act,15U.S.C.§1I25 (a);
ii) dilution of trademark pursuant to the Lanham Act,15U.S.C.§1125 (c);
iii )violation of the Computer Fraud and Abuse Act,18USC§1030
iv) copyright infringement pursuant to the Copyright Act,17U.S.C.§501;
v) deceptive trade practices pursuant to 815ILCS§510etseq.;
vi) unfair and deceptive business practices pursuant to815ILCS§505etseq.:
vii) violation of the Illinois Trade Secrets Act ,765ILCS§I065;
viii) common law trademark infringement under Illinois law;
ix) common law breach of fiduciary duty under  Illinois law;
x) conversion;
and xi)unjust enrichment.

Among the remedies available to MTA under these various causes of action are statutory damages, injunctive relief, compensatory damages, exemplary or punitive damages, court costs and attorney’s fees.


Accordingly, on behalf of MTA, we demand that you provide the undersigned with written assurances that within 10 days of the date of this letter that you will voluntarily take the following actions: 

(1) forever cease & desist from using MTA’s Copyrighted Materials and the Mark.	

(2) take down all Internet based advertisements using MTA’s Copyrighted Materials and the Mark;

(3)destroy any client contact information misappropriated from MTA and printed materials using MTA’s Copyrighted Materials and the Mark;

(4) accurately state your dates of service with MTA, and your formers status as an independent contractor, on your website(s) and in all future materials; and 

(5) agree to sign a written under taking in a form acceptable to MTA and its counsel, that you will refrain from use of MTA’s Copyrighted Materials and the Mark and making misrepresentations regarding your employment with MTA, MTA’s Copyrighted Materials. or the Mark and certifying that you have destroyed the printed versions of the Marketing Materials and all electronic and printed versions of all client contact information.

While our client would prefer to resolve this matter short of litigation, such are solution depends entirely on your prompt and acceptable response to this letter. Accordingly please respond, in writing, within 10 days of the date of this letter to avoid legal action. In the absence of a timely response, our client will have no choice but to consider pursuit of all available legal remedies to the fullest extent provided by law. 

To prepare for the contingency of litigation, you are directed to retain all documents, including e-mails,related to this matter and to notify any other entities involved with the creation, development, management, and/or use of your website(s) and email accounts, to do the same. 

This letter is written without prejudice to any claim for damages or other relief that our client may have in the event that litigation against you might prove necessary. The foregoing is not a complete statement of the facts or of our client’s position or potential claims or causes of action against you and our client specifically reserves all of its rights and remedies relating to your unauthorized use of its trade mark, copyrighted materials and trade secrets.

We look forward to hearing from you.

GREENBERG TRAURIG, P.A.	

Very Truly Yours,

[private]

Int. Cls.:16 and 35 
Prior U.S.Cls.:2, 5, 22, 23, 29, 37, 38, 50, 100, 101 and 102 United States Patent and Trademark Office, Reg. No.3, 585, 085 Registered Mar.10, 2009
TRADE MARK SERVICE MARK PRINCIPAL REGISTER

MIDWEST TOURISM ASSOCIATION

MIDWEST TOURISM ASSOCIATION, LLC (ILLINOIS LIMITED LIABILITY COMPANY) 
2248 W. BELMONT, SUITE 56 CHICAGO, IL 60618

FOR: MAGAZINES AND TRADE JOURNALS IN THE FIELD OF THE TRAVEL SERVICES, IN CLASS 16 (U.S. CLS. 2, 5, 22, 23, 29, 37, 38 AND 50).

FIRST USE 9-0-2003; IN COMMERCE 9-0-03.

FOR: ADVERTISING SERVICES IN THE TRAVEL INDUSTRY, NAMELY, PROMOTING TOURISM IN THE MIDWESTERN UNITED STATES, IN CLASS 35 (U.S. CLS. 100, 101 AND 102).

FIRST USE 9-0-2003; INCOMMERCE 9-0-2003.

THE MARK CONSISTS OF STANDARD CHAR·ACTERS WITHOUT CLAIM TO ANY PARTICULAR FONT, STYLE, SIZE, OR COLOR.

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ”TOURISM ASSOCIATION”, APART FROM THE MARK AS SHOWN.

SEC.2(F).

SER. NO. 76-677;663, FILED 5-31-2007.

[private], EXAMININIG ATTORNEY