sufficiently informed the target as to the legal risks involved in
continuing its alleged infringing activities, while at the same time
leaving room open for discussion. This last part was important to
many of the lawyers. They stressed that overly aggressive letters or
ones that made over-broad legal claims can undermine the lawyer’s
credibility in any ensuing negotiations, particularly if the target
obtains experienced trademark or copyright legal counsel. According
to one of the lawyers:
A: You’ll look foolish. Especially if the lawyer on the other side is
experienced. I mean someone who knows trademark law, not one
of those patent lawyers who dabbles in trademark. Someone who
knows the nuances. It can be a small community. We all know
each other sometimes, know the other guy’s reputation. And we all
know the law. So sometimes the easiest case is to write a letter to
let the trademark lawyer on the other side know your client’s
serious. Then we both know about what the settlement should be
and it gets done without too much cost to both clients.106
One further tactic identified by a number of the interviewed
lawyers is to draft a complaint for trademark or copyright
infringement and send it to the target with the demand letter. The
obvious message such a tactic conveys is that the alleged
infringement is a serious matter that will result in expensive litigation
if the matter is not resolved. Some lawyers explained that they had
several options after drafting a complaint. One is to send the
complaint to the target but not file it with the court or formally serve
it. This option is not ideal, the lawyers explained, because it does not
preserve the IP owner’s right as the first-filer in a lawsuit to select the
court for any litigation that may ensue and thus possibly obtain some
advantage. A second option described is to file the complaint, but not
serve it. This allows the IP owner to select a desired litigation forum
and to communicate the seriousness of the matter, while still sending
a message that the plaintiff is willing to negotiate. Most of the
lawyers stated that drafting complaints was generally reserved for
more serious matters that warranted having the client spend the
money. Almost all of the interviewed lawyers opined that sending a
complaint with a demand letter very frequently helped resolve these
serious matters. One lawyer explained:
A: It can have in terrorem effect. You can’t ignore it. The infringer
will take it seriously because he realizes he needs to get a lawyer