Discussion:
What is the name of your state? Delaware
We sold some Heineken heat transfers (iron-on or heat press used to apply on T-shirts) through Ebay. We bought them from a local warehouse cleanout auction. As with most of the stuff in the warehouse it probably dated back to the 80's. We had and still have no idea whether they infringe Heineken's copywrite. It wasn't something we even considered. They have a picture of a Heineken bottle cap and the phrase "grab a he_ney." Our auctions were originally ended by Ebay because the Heineken representatives contacted them for possible infringing copywrite items. We sent two emails to them and never heard anything back for a month or so. I'll include the email correspondence from the so-called Heineken representatives (three emails in all). We would like to know what to do? Would it be wise wise to send the transfers to them? Is it likely they'll sue us? The amount they are requesting is much much more than we actually sold on Ebay.
This is the first email that came directly from them (the one we recieved after waiting a month or more).
Dear _________:

Heineken Brouwerijen B.V. ("Heineken") is the owner a large and valuable intellectual property portfolio that includes designs, trademarks, trade dress and copyrights. C___ E___ has been engaged by Heineken to help protect this intellectual property.

C__ has learned that you are involved in the distribution of merchandise that violates Heineken's intellectual property rights (the "Merchandise"). Specifically, the "Grab a H_iney" heat transfers that you are offering for sale on eBay are in violation of Heineken's intellectual property rights.

The unlicensed production or sale of merchandise bearing Heineken marks and/or designs, or ones confusingly similar thereto is illegal and constitutes infringement, counterfeiting and unfair competition. Such activities damage Heineken's goodwill and reputation, devalue their intellectual property and siphon profits away from them and their licensees. There are a variety of state and federal law that protect intellectual property rights not the least of which is the Lanham Act, which allows trademark owners to enjoin the production and sale of counterfeit merchandise and recover profits and/or statutory damages.

In light of your infringing activities and on behalf of Heineken, we demand that you:
1.. Immediately cease any and all manufacture, distribution, promotion or sale of the Merchandise and all other unlicensed Heineken merchandise in your possession.
2.. Voluntarily surrender to C__ E__ all items in your possession that infringe upon the intellectual property rights of Heineken including all means of producing such items such as silk screens, heat transfers, positives, negatives, artwork, etc.
3.. Cooperate with C__ E__ concerning the investigation of any other parties with which you have or have had a business relationship involving the Merchandise.
4.. Pay to the order of "Heineken Brouwerijen B.V." $2,750.00 to compensate them for the damages arising from your illegal activity.
At this stage, Heineken will accept the amount referred to above as compensation for the damage they have suffered as well as the costs they have incurred for the investigation and resolution of this matter. The amount requested here also represents less than the minimum amount Heineken would expect to receive if they are forced to litigate this issue, which they are prepared to do if necessary. Additionally, you should be aware the many general business liability insurance policies provide coverage for trademark infringement under the "advertising injury" section of the policy. If you believe that you may be eligible for such benefits, we could provide you with additional information to help you pursue such a claim.

Be advised that any response which provides less than a voluntary surrender of all infringing Merchandise and information requested above and payment to Heineken, shall be deemed insufficient and shall be interpreted to mean that you intend to continue selling infringing Merchandise in violation of the law. Unless you comply with the foregoing demands, we will take appropriate steps to enforce our client's rights and to protect the public from continued deception.
Upon your receipt and review of this email, please contact me or my associate no later than January 19, 2004 to discuss these issues. If you do not respond by that date, we will construe this to mean that you continue to infringe upon the rights of our client and may take further legal action against you without additional notice.

This email is being sent to achieve a prompt and informal resolution to this matter and is therefore privileged. Nothing contained in or omitted from this letter is nor should be considered an admission of any fact or a waiver of any right, all of which are expressly reserved.
Sincerely,
_____
This is the email we sent back:
Thank you for the explanation. Please allow me start off by stating for the record that it was never my intention to infringe on anyones copyright or trademark. I bought the subject heat transfers at a local auction of some old warehouse merchandise that hadn't seen the light of day for a decade or more.
Also, for the record, it was impossible for me to reply by the January 19 date you indicated as a deadline since I didn't receive your email until this afternoon (January 29).
Although I haven't looked into the legality of your claim yet, mainly because this is my first experience with this type of situation and I have no idea where to start, I'll assume for the time being that you're correct. We've sold a total of about 1500 "grab a hei_ey" heat transfers to date, all of them prior
to being notified by eBay that we were in violation of their policy.
I understand your concern and that of your client and intend to provide any assistance you require to remove this item from the public domain. I have no means of producing any type of heat transfers and no artwork or other items relating to the "grab a heiney" transfers, but will gladly surrender all of my remaining stock of about 17,000 and await your instructions for accomplishing that task. In exchange for my full cooperation and in light of the fact that I've already "lost my shirt" on these (no pun intended), it is my hope that you'll reconsider your request of $2,750.00 compensatory damages.
And the final email from them. We are still waiting to reply.
First let me thank you for your quick reply to our email. Heineken
appreciates your assurance that you will no longer offer for sale the "grab a hein_y" heat transfers which infringe on their trademark rights. They also appreciate your willingness to surrender the infringing items as demanded. This good faith action on your part will no doubt assist in the resolution of this matter. The remaining stock of 17,000 should be sent to
the address listed below marked to my attention.
As it relates to the damage request made by Heineken of $2,750.00, you must understand that they have been damaged by these actions. Heineken must expend funds in the investigation and prosecution of trademark infringers.
Additionally, your and other infringers' actions dilute the Heineken's market for its duly authorized and licensed goods. Further, the actions of infringers tarnishes Heineken's good name. Despite the above and the fact that Heineken has already expended a considerable amount in the investigation and pursuit of your actions they are willing to negotiate a settlement with you. If you could suggest a reasonable amount other than
the demanded amount of $2,750.00 to settle this matter I would be willing to take that amount back to Heineken for their approval.
Once an amount is agreed upon by both you and Heineken I will send you a settlement agreement to be executed by both you and a Heineken agent. This agreement will contain specific information regarding the payment of the settlement amount which is made directly to Heineken.
I look forward to hearing from you.
This letter is being sent in an attempt to achieve a prompt and informal resolution of this matter, and is thus privileged. Nothing contained in, or omitted from, this letter is intended to be or should be considered an admission of any fact or a waiver of any right or defense, all of which are expressly reserved. Thus, this letter cannot be utilized in evidence or referred to in any litigation with regard to the merits of this matter.
Thank you for taking the time to read this complete message. We would appreciate any help you could offer. Thank you, Bryan
Answer:
i would be cautious about sending any amount of money to someone you have only been dealing with over the internet. You should ask that regular correspondence be exchanged for the rest of the "negotiations".
Answer:
Originally posted by stephenk
i would be cautious about sending any amount of money to someone you have only been dealing with over the internet. You should ask that regular correspondence be exchanged for the rest of the "negotiations". **A: for the readers, please define "regular" correspondence.
Answer:
I have two questions: If the heat transfers were originally produced legally, why would the re-selling of them be illegal? Wouldn't that make something like buying a music CD at a retail outlet and then re-selling illegal?
Answer:
Sellinbiz:
Your post says nothing about your verifying the authenticity of this 'claim' or its source.
I would suggest that rather than continue this email correspondence (which is both not legally valid and easily subject to scaming and spoofing), contact them one more time and ask that ALL future correspondence be in writing.
Also, I would suggest you check to see if this person both is who they claim and has the rights to represent the brewery.
Those are just the start of this issue.... and once you have heard from them in writing, if you do, come back here for further suggestions.
Answer:
Regular correspondence being written letters not email.
Answer:
but you must admit that was a very clean and tight threat letter the Heineken lawyers used. i'm going to copy it word for word in all my future threats
Answer:
I have no idea whether or not these were originally produced legally or not.
I do believe the source of these emails is legit. They contacted Ebay and had the transfers removed. They are registered with Ebay in the VERO program and have an intellectual property website set up. I don't know if you have to have a special invitation or liscense to be in the VERO program or if it's open to anyone.
It's kind of odd because since the transfers were removed from Ebay we've got several email offers to buy all we have. Are they trying to set us up?, I don't know.
If they are who they say they are, how should we proceed? We'll request correspondence in letter form. Thank you for the suggestion.