Attorney threat letter--What do I do?

[AdamJendertask]

What is the name of your state (only U.S. law)? Texas

I opened an online store a few years ago through Cafepress. I supplied the designs and graphics and CP took the order, processed the payment, produced the product, and dropshipped the item. If a design was flagged by CP for possible infringement, I removed it. The store's niche was sorority paraphernalia. I received a letter last month stating that I was illegally using marks of a certain sorority. I immediately removed all items and closed the store. Yesterday, I received a similar letter stating that I have until 5/21 to provide a notarized document with sales information and enter into an agreement with the sorority. It also stated that a monetary amount owed to the organization would be determined at a later date. After reviewing my records, over the last 5 years of the automated online business, I profited $1,500 from these products. I do not have enough money to pay the organization a large amount of money, nor do I want a lengthy legal case. There are so many other stores with similar or the same products on CP alone, not to mention other sites and stores, I did not realize the seriousness of my actions. When I was notified by CP of questionable similarities with other graphics, I removed the design immediately. I was never notified by CP or the sorority prior to last month that there was an issue. I am afraid that if I follow through with the actions in the letter, the other sorority that my products featured will follow suit. On the other hand, if I do not comply, legal action will be taken. Do they have the right to access my sales records and/or personal information from CP without my consent? Do I comply completely with the letter? Any assistance would be greatly appreciated. Thank you.What is the name of your state (only U.S. law)?

 

[divgradcurl]

Just a couple of points -- the fact that you removed the materials promptly doesn't change the fact that you allegedly profited from the unauthorized use of the marks for a while, so that's not a defense. The fact that "others are doing it" and "I didn't know" are also not defenses to infringement (although they can mitigate damages in some limited cases).

You basically have to figure out how bad you want this to be resolved, and how much risk you are willing to take on. Two points -- they cannot force you to give them any information, only a court can do that, and they are not entitled to anything until a court says they are.

You could ignore them, not give them any information -- basically daring them to sue you. Whether they would or not, who knows -- but if they do, you have to take it seriously, which probably means hiring a lawyer. They can't force anyone to give up information without filing a lawsuit, but that doesn't mean that CP wouldn't voluntarily give up the info -- I doubt that they would, but they could, so they might be able to get at least some information anyway.

If you do decide to give them the information, whatever number they come up with is negotiable. They cannot force you to pay anything without a court order -- so if you work with them, maybe you can work out a settlement that both sides can live with.

 

[xylene]

Its a trap.

divgradcurl give good advice but I do want to raise some issues that speak to not giving any info unless ordered as part of a lawsuit.

If you do decide to give them the information, whatever number they come up with is negotiable.

BUT, once you have given them that information it will become a floor and not a ceiling for the amount of damages the can sue for.


Also, and most importantly by stating the value of your infrignement, you will scuttle any defense of non-infringement in court.

Once you have admitted in writing to them how much you have infringed in a dollar amount, well you have just admitted you infringed.

Don't send anything until you have taken the first step to ask them how much they beliefed they have been damaged.

If they tell you they want 20 grand, well they are not going to accept 1,500

If they say less than what you made or an amount like 2,000 for a release of claim - consider it.

Otherwise refuse and wait to be sued - if it happens.

BUT do not ignore a lawsuit. That is a recipe for a default judgment and disaster.

 

[swalsh411]

Have you actually established that what you sold was truly an infringement? Last time I checked, the copyright on Greek letters expired several millennium ago.

 

[xylene]

The latin alphabet is not copyrighted

Have you actually established that what you sold was truly an infringement? Last time I checked, the copyright on Greek letters expired several millennium ago.

Ah but there unique order is copyrightable and able to be trademarked

Just as three letter combinations like:

IBM

NBC

CBS


etc..

 

[divgradcurl]

BUT, once you have given them that information it will become a floor and not a ceiling for the amount of damages the can sue for.

This is incorrect. They can always sue for any amount. What they can prove is another thing altogether. If they do sue, they are going to get all of the information anyway, so it's not like they will be materially better or worse off if you give them the information now.

Also, and most importantly by stating the value of your infrignement, you will scuttle any defense of non-infringement in court.

Also, again absolutely false. This isn't a criminal case. Pre-filing settlement discussions happen all of the time. It is unusual not to engage in pre-filing negotiations.

Once you have admitted in writing to them how much you have infringed in a dollar amount, well you have just admitted you infringed.

Why would the OP admit anything? They are asking for sales figures, that's all. And if the "agreement" they are willing to enter into is a release, then that will do just what it says -- release the OP from liability.

 

[divgradcurl]

Have you actually established that what you sold was truly an infringement? Last time I checked, the copyright on Greek letters expired several millennium ago.

Only a court determines whether infringement exists or not. But if the OP used another entity's trademarks without authorization, the OP may not want to head to court to learn the obvious...

Ah but there unique order is copyrightable and able to be trademarked

Just as three letter combinations like:

IBM

NBC

CBS


etc..

These can be trademarked, but are not covered by copyright.

 

[FlyingRon]

I can guarantee you that most of the major national sororities and fraternities DO have " numerous trademarks relating to various derivatives of its name, its Greek letters, its crest, and other symbols" (to quote Delta Sigma Theta) and vigorously (as you've found) defend them.

 

[swalsh411]

I'd love to see a single example of where a sorority or fraternity was successful in a trademark claim for their 3 ancient Greet letters.

 

[divgradcurl]

I'd love to see a single example of where a sorority or fraternity was successful in a trademark claim for their 3 ancient Greet letters.

Why would you believe that a set of Greek letters, used to identify a group, would be any less protectible than any other trademark? The fact that the letters are "ancient" is irrelevant for the purposes of trademark -- it's the consistent use of the letters to identify a group that is relevant.

If you are interested, look up McCarthy on Trademarks, section 9:6; Trademark Manual of Examining Procedure section 1304. Also, you might want to look at Kappa Sigma Fraternity v. Kappa Sigma Gamma Fraternity, 654 F. Supp. 1095, 2 U.S.P.Q.2d 1330 (D.N.H. 1987), mot. granted, 659 F. Supp. 117, 2 U.S.P.Q.2d 1542 (D.N.H. 1987).

 

[cyjeff]

For what it is worth, there used to be a song called the "Sweetheart of Sigma Chi"... that paid the fraternity for every copy of the song sold.

 

[xylene]

Can I help ya, help ya, help ya

Stupid VS. Smart

Stupid

Sororitylease list and sign a declaration the exact sales value of all Delta Delta Delta merchandise you sold?

Poster: I sold 1500 Dollars worth of Delta Delta Delta merchandise

Sorority: Did you have a license to sell that merchandise?

Poster: Um, No.

GAME OVER


Smart

Sorority: Please list and sign a declaration the exact sales value of all Delta Delta Delta merchandise you sold?

Poster: I am not agreeing to any infringement nor am I disclosing sales figures. And I am certainly got agreeing to be bound to pay a settlement set by you at a later date. You say you can subpoena the material. Ok. Well I'd still rather put off till tomorrow what benefits you to have me do today, for your benefit alone. And of course I will fight your subpoena and your alleged case. You make your settlement demand first.

These can be trademarked, but are not covered by copyright.

I'm not sure why you believe otherwise but depending on what sorority material the poster is alleged to have duplicated, the infringement may be of a trademark or of copyrighted material or both.

I also am not sure why you describe a request to give an itemization of the sales of goods infringing on either the trademark or copyright as anything but an admission, one that could be used as evidence in any forthcoming lawsuit.

The poster would be absolutely stupid to not at least begin either a lawsuit or a negotiation from the standpoint of making the sorority plaintiff prove that infringement did occur.

I am further not sure why you are so hot and bothered by the reality that whatever sales figures the poster might stupidly provide would form the minimum damages of whatever lawsuit might or might not take place. I don't think any one here, including the poster is unclear that the sorority could sue for MORE...

 

[divgradcurl]

Stupid VS. Smart

Stupid

Sororitylease list and sign a declaration the exact sales value of all Delta Delta Delta merchandise you sold?

Poster: I sold 1500 Dollars worth of Delta Delta Delta merchandise

Sorority: Did you have a license to sell that merchandise?

Poster: Um, No.

GAME OVER


Smart

Sorority: Please list and sign a declaration the exact sales value of all Delta Delta Delta merchandise you sold?

Poster: I am not agreeing to any infringement nor am I disclosing sales figures. And I am certainly got agreeing to be bound to pay a settlement set by you at a later date. You say you can subpoena the material. Ok. Well I'd still rather put off till tomorrow what benefits you to have me do today, for your benefit alone. And of course I will fight your subpoena and your alleged case. You make your settlement demand first.

Where in the OP's post did they say anything about a declaration? Notarized document doesn't mean declaration, although certainly you could write up a declaration and have it notarized if that's what you wanted. I wouldn't suggest to the OP that he give a declaration at this point. But giving up the information does not fail to preserve any rights, and I am not sure why you think it does.

I'm not sure why you believe otherwise but depending on what sorority material the poster is alleged to have duplicated, the infringement may be of a trademark or of copyrighted material or both.

You are right, the sorority may have copyrighted works as well. But the OP stated that the sorority is alleging infringement of "marks," so copyright is irrelevant here in any case.

I also am not sure why you describe a request to give an itemization of the sales of goods infringing on either the trademark or copyright as anything but an admission, one that could be used as evidence in any forthcoming lawsuit.

Pre-lawsuit negotiations are not admissions that can be used in court. See Federal Rules of Evidence 408.

The poster would be absolutely stupid to not at least begin either a lawsuit or a negotiation from the standpoint of making the sorority plaintiff prove that infringement did occur.

The sorority doesn't have to prove anything. They make a demand; the OP is free to negotiate, or not. If the OP feels he is in the clear, he shouldn't settle unless the settlement amount is less than whatever he feels is value of the risk of a lawsuit. Besides, the OP admitted here that he used the marks without authorization -- what other "proof" does he need. This isn't court, this is simply pre-trial negotiations -- an attempt to settle before trial.

I am further not sure why you are so hot and bothered by the reality that whatever sales figures the poster might stupidly provide would form the minimum damages of whatever lawsuit might or might not take place. I don't think any one here, including the poster is unclear that the sorority could sue for MORE...

You seem to be missing the fact that the sorority will get that information once they file a lawsuit, so the "floor" that you seem to think is there is going to be there regardless. I don't know where the idea comes from that if you "hide the ball" you will get a better settlement position. The OP doesn't have a lot of leverage here.

And BTW, you don't have to allege a specific amount of damages in a federal lawsuit (unless it is a diversity case, which this wouldn't be), you can simply allege "damages to be proven."

 

[xylene]

Where in the OP's post did they say anything about a declaration? Notarized document doesn't mean declaration, although certainly you could write up a declaration and have it notarized if that's what you wanted. I wouldn't suggest to the OP that he give a declaration at this point. But giving up the information does not fail to preserve any rights, and I am not sure why you think it does.

Here are the poster's exact words

Yesterday, I received a similar letter stating that I have until 5/21 to provide a notarized document with sales information and enter into an agreement with the sorority.

If the poster gives them want they are asking for that is a declaration, that is an admission, that is not a negotiation.

Pre-lawsuit negotiations are not admissions that can be used in court. See Federal Rules of Evidence 408.

They are not looking for negotiation. They are asking for declaration, an immediate admission and settlement which grants them the right to set payment. If he signs to that, then it isn't pre-lawsuit anything. If he then renegs, his admission if certain to come up.

If he is sued, he would have to deal with all that.

The sorority doesn't have to prove anything. They make a demand; the OP is free to negotiate, or not. If the OP feels he is in the clear, he shouldn't settle unless the settlement amount is less than whatever he feels is value of the risk of a lawsuit. Besides, the OP admitted here that he used the marks without authorization -- what other "proof" does he need. This isn't court, this is simply pre-trial negotiations -- an attempt to settle before trial.

The OP did not admit anything. His removing the merchandise does not admit infringement.

And yes they do have to prove that the posters acts constituted infringement.

You seem to be missing the fact that the sorority will get that information once they file a lawsuit, so the "floor" that you seem to think is there is going to be there regardless. I don't know where the idea comes from that if you "hide the ball" you will get a better settlement position. The OP doesn't have a lot of leverage here.

The sorority is also doing a calculation of "is it worth it to sue". They think there is a ball, that is for sure. THey do not know how big it is or even what color it is.

They do not know how much this posters cafe press store sold. Could be a small fortune could be nothing.

You are so sure that advising the poster give full disclosure freely is not the thing that will tell them aggressively pursuing the case is worthwhile?

I am not sure why the poster would want to engage in an act of good faith negotiation with a party that is trying to mow over a merchant who has complied thus far.

And BTW, you don't have to allege a specific amount of damages in a federal lawsuit (unless it is a diversity case, which this wouldn't be), you can simply allege "damages to be proven."

Damages unspecified could help the posters case...