In this post, names and circumstances have been changed to obscure the guilty.
Let’s say that my client makes plain sweatshirts, and on the back of some of these blank sweatshirts, someone else had printed Alamo-related text and imagery and was selling them. They were doing this on behalf of a local community baseball team that incorporated the word “Alamo” in its design. And let’s say that a plaintiff named Pat files and owns a registration for the trademark in “Remember the Alamo.”
Somewhere along the way, Pat catches sight of these sweatshirts and thinks, “Ah, I’ve got them now. They’re a great big sweatshirt company, and I’ll sue them for trademark infringement as well as copyright infringement, because I have a distinctive way that I present the word ‘Alamo’!” (Interesting note: Pat, who represented himself, only provided extremely low-quality pictures of his design in his complaint. I still don’t think anyone knows what his design looks like.)
I contacted Pat and asked for some more time. His initial response to me was something along the lines of “I’m not going to even look at the stipulation that you drafted to ask for more time. Here’s an opportunity to settle this case right away, for a relatively low amount.”
It may have been a small amount of money, but it was a lot more than it was worth. So I wrote to the court instead and got another month of time. Pro se “little guy” looks like a jerk to the court…
In our answer, we said, “Listen, we just make the sweatshirts. They’re blank. We didn’t put the allegedly offending phrase or image on the sweatshirt. We’re going to make a motion to dismiss, because you’ve got no reason to hold us in this, other than our name being on the label. We made no deal with any of the other people that you’re suing, that are associated with this sweatshirt. Your dispute is not with us.”
As you likely know from other posts, in a copyright dispute, the prevailing party can be awarded attorney’s fees. So we made Pat an offer of judgment for a couple of hundred dollars. An offer of judgment is if you don’t get an award of more than what I’m offering you now, then you pay my attorney’s fees. That’s federal rule 68.
Pat responded and said, “Gee, I’ll tell you what. I’ll settle for a bargain price — half of what I demanded the first time around.” To which my client said, “I don’t negotiate with hostage takers.”
While we were waiting the statutory amount of time (10 days) in which he could accept that offer, another large party in this lawsuit wrote a long, detailed motion to dismiss that pointed out, among other things, that “Alamo” is a city in Texas. In other words, it’s not clear that he has a valid trademark at all, because what he’s trying to protect is geographically descriptive. It also wasn’t clear that his copyright had been infringed at all, because their design was pretty different from the plaintiff’s logo. And the big company also demanded not only their legal fees, but to ban the plaintiff from bringing future lawsuits.
Suddenly, out of the blue, Pat accepted my offer for a few hundred dollars.
Unfortunately, threatening lawsuits with the intention of getting the other side to settle because it is cheaper than fighting it, seems to be a new career path that many are following, with or without a license to practice law. It’s nice to see cases that have happier endings.
Mark S. Kaufman
Kaufman & Kahn
747 Third Avenue
New York, NY 10017
Tel. (212) 293-5556
Fax. (212) 355-5009