I unknowingly sold counterfeit textbooks and the publisher wants me to pay them $500.

[nathan4597]

I flip textbooks so I buy textbooks and immediately sell them to other companies. I purchased 10 copies of a book from a seller on Amazon and immediately sold them to textbooks.com and received payment for the books. About a month later, I got a letter from the publisher's lawyer saying that they were informed by textbooks.com that I was selling counterfeit books. I called the lawyer and informed him of where I purchased the books and explained that I never had the books in my possession for more than 24 hours. He seemed to understand what happened and I was under the impression that he wasn't going to pursue it any further. Today, the lawyer sent me an email with a settlement agreement that includes a paragraph that says I am agreeing to pay $500 in the settlement. I'm not sure if location matters but I am in Florida and the settlement says it is under the law of New York. What should I do?

 

[justalayman]

so, where online did you get these books?

domestic or import?

a book publisher? Distributor? what?

hang on for quincy or flyingron to catch this thread as well.

 

[latigo]

I flip textbooks so I buy textbooks and immediately sell them to other companies. I purchased 10 copies of a book from a seller on Amazon and immediately sold them to textbooks.com and received payment for the books. About a month later, I got a letter from the publisher's lawyer saying that they were informed by textbooks.com that I was selling counterfeit books. I called the lawyer and informed him of where I purchased the books and explained that I never had the books in my possession for more than 24 hours. He seemed to understand what happened and I was under the impression that he wasn't going to pursue it any further. Today, the lawyer sent me an email with a settlement agreement that includes a paragraph that says I am agreeing to pay $500 in the settlement. I'm not sure if location matters but I am in Florida and the settlement says it is under the law of New York. What should I do?

Well the burden is on the buyer to prove that the books were bogus. And, of course, your not knowing that they were would be no defense to a civil suit to void the sale seeking restitution.

Location? There is the problem. Because the buyer is not limited to filing suit in your state of residence. It has the right to sue you in New York by virtue of that state's Long Arm Statute (New York Civil Practice Law Section 302(1).

If you have independent evidence that the books were in fact counterfeited, then you ought to be making reimbursement. In fact you are legally obligated to do so. But do not sign any paper work from New York without having consulted with your attorney. You do not want to be making any acknowledgements that could lead to criminal prosecution.

And how about your seller? What steps have you taken to recover your purchase money?

 

[nathan4597]

I got the books from a relatively small seller on Amazon called HotDealSpot. I don't remember if they came from the US because it was a while ago and I get a lot of books. The seller won't refund me because I cannot return the books to them and Amazon's policy is that books have to be returned if I want a refund.

 

[quincy]

I flip textbooks so I buy textbooks and immediately sell them to other companies. I purchased 10 copies of a book from a seller on Amazon and immediately sold them to textbooks.com and received payment for the books. About a month later, I got a letter from the publisher's lawyer saying that they were informed by textbooks.com that I was selling counterfeit books. I called the lawyer and informed him of where I purchased the books and explained that I never had the books in my possession for more than 24 hours. He seemed to understand what happened and I was under the impression that he wasn't going to pursue it any further. Today, the lawyer sent me an email with a settlement agreement that includes a paragraph that says I am agreeing to pay $500 in the settlement. I'm not sure if location matters but I am in Florida and the settlement says it is under the law of New York. What should I do?

What happens often is that trademark holders will see goods for sale online that they suspect are infringing on their rights and the trademark holders will purchase one of the items to confirm. Unlike many trademark disputes, proving infringement when it involves counterfeit goods can be easy. Counterfeits by their nature cause consumer confusion.

The penalties for counterfeiting goods can be far greater than they are for other forms of infringement. There are both civil and criminal penalties possible, and the legal actions possible are not confined to trademark infringement.

What you will want to do with the settlement agreement you received is have it reviewed by an IP attorney in your area to check for authenticity. If the letter is a legitimate one, and the goods are shown to be counterfeits (and, again, this is fairly easy to show), you can have your attorney work with the trademark holder to see if the $500 amount demanded can be negotiated lower.

You can check out at http://www.uspto.gov Lanham Act 1117 Recovery for violation of rights.

 

[justalayman]

if this is actually the publisher dunning you, your cheapest fastest easiest solution is to pay the money, obtain a release, and move on.


It will cost you many multiples of that $500 just to fight this, win or lose. Even if you win, you lose. It makes no financial sense to bother with it.



be sure you follow latigo's advice:

But do not sign any paper work from New York without having consulted with your attorney. You do not want to be making any acknowledgements that could lead to criminal prosecution.

 

[quincy]

if this is actually the publisher dunning you, your cheapest fastest easiest solution is to pay the money, obtain a release, and move on.


It will cost you many multiples of that $500 just to fight this, win or lose. Even if you win, you lose. It makes no financial sense to bother with it.



be sure you follow latigo's advice:

It is first necessary to determine if the goods are, in fact, counterfeit, so a review by a trademark attorney will be needed before contacting the publisher's attorney.

If the books were manufactured outside the US and imported into the US, more facts will be needed. These could be gray market goods, which can make a difference in remedies available to the trademark holder and/or copyright holder.

 

[justalayman]

quincy;3385670]It is first necessary to determine if the goods are counterfeit.

Ok, then do that.

then pay them, at least if the publisher says anything other than; ewwwww, our bad.


Whether the OP is in the right or not, it will cost more to travel one time to NY to defend this. The attorneys he would be retaining would use that $500 for their dinner tab. I don't care if it is actually a scam to make up the lost profits from the books; it is too little money to spend any money to defend. I would suggest spending a couple bucks to make sure he is safe but that's it.


Then OP needs to thoroughly investigate and inspect his product. Claiming; they weren't in my possession for more than 24 hours works as well with as it does with a dope dealer that gets caught with a ton of dope in his garage, that has been there for less than 24 hours.

at least that's how I see it. Sometimes the legal right doesn't really make a lot of difference.

 

[quincy]

Ok, then do that.

then pay them, at least if the publisher says anything other than; ewwwww, our bad.


Whether the OP is in the right or not, it will cost more to travel one time to NY to defend this. The attorneys he would be retaining would use that $500 for their dinner tab. I don't care if it is actually a scam to make up the lost profits from the books; it is too little money to spend any money to defend. I would suggest spending a couple bucks to make sure he is safe but that's it.


Then OP needs to thoroughly investigate and inspect his product. Claiming; they weren't in my possession for more than 24 hours works as well with as it does with a dope dealer that gets caught with a ton of dope in his garage, that has been there for less than 24 hours.

at least that's how I see it. Sometimes the legal right doesn't really make a lot of difference.

Nathan4597 says he "flips textbooks." For Supap Kirtsaeng, the importing and selling of textbooks provided him with a nice income - about $1.2 million (see Kirtsaeng v. John Wiley & Sons, Inc*).

So whether it would be worth it for nathan to pay the publisher $500 or to defend his sales depends on the books sold. Certainly if the books are deemed counterfeit (and not gray market goods), paying $500 (or negotiating a lower settlement amount) can make financial sense.

*I'll provide a link to the US Supreme Court case when I have a chance and, again, it may not apply to nathan4597's book sales at all.

 

[justalayman]

if it involved $1.2 MM, I would be right with ya Q. I just cannot see it being financially worthwhile in this particular situation,


but I will defer to your professional opinion. Mine is that of justalayman.

 

[quincy]

if it involved $1.2 MM, I would be right with ya Q. I just cannot see it being financially worthwhile in this particular situation,


but I will defer to your professional opinion. Mine is that of justalayman.

Well, I am not sure I offered a professional opinion that varied much from what others said, which is that it would be smart for nathan to have the facts reviewed by an IP professional in his area before settling with the publisher.

If the books sold by nathan were, in fact, counterfeits that infringed on trademark rights, even the $500 seems a cheap price to pay to settle the matter with the publisher. But it is possible (I don't know how probable) that textbook.com did not recognize the textbooks as being legal copies because of the differences often found between the textbooks that are sold overseas and the ones sold in the US.

If the books are legal for nathan to sell in the US from a copyright perspective, and nathan did not violate any trademark rights in his marketing/advertising of the books, he will probably not want to pay the publisher anything (although he will have to pay for an IP attorney in his area to evaluate the matter - so it might be a wash).

Here is a link to the SCOTUSblog coverage of Kirtsaeng v. John Wiley & Sons, Inc: http://www.scotusblog.com/case-files/cases/kirtsaeng-v-john-wiley-sons-inc/