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Your source for news, updates and guidance on all things trademarks and intellectual property.

Alt Legal Connect Session: In High Demand: Crafting effective and creative demand letters

Alt Legal Team | September 15, 2021
6 min read

On Wednesday, September 15, Moish Peltz, Partner and chair of the Intellectual Property Practice Group at Falcon Rappaport & Berkman PLLC, presented the session, “In High Demand: Crafting effective and creative demand letters.” Moish provided a strategy for crafting demand letters to achieve your client’s goals, including how to select the appropriate contents and tone, how to use a demand letter to resolve claims before litigation, and how to ensure that demand letters contribute to rather than undermine litigation.

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Introduction

Moish began his discussion by explaining why we send demand letters and the anatomy of a demand letter – identify the goal, research facts and law, write, send, and resolve or litigate. He noted that you can have a great demand letter with all the elements needed, but you need to make sure that it fits your client’s end goal.

Moish presented an example of a demand letter where an attorney sent a letter to restaurant complaining about the fact that when he tried to order soup that was advertised as part of a lunch special, that the restaurant informed him that there was no soup. Feeling slighted, the attorney sent a letter demanding $2.25 in damages, $250 in attorney’s fees, and that the restaurant change its policy. He also claimed that he would file a lawsuit against the restaurant if he did not hear back in 10 days. All in all, the letter was well-written and contained all the elements of a proper demand letter, but the letter clearly did not fit into a larger strategic goal and consider a potential response.

Identify the Goal

Moish emphasized that it is important to ensure that the letter acts strategically towards the end goal. He provided from some advice from early on his career, “Think strategically, act tactically.” When sending a letter, make sure that the goal is achievable through the legal process. Make sure you have facts and legal support to achieve your goal. Also, decide if the attorney is the right person to send the letter or maybe a principal of the business could send it. Think about what is the right way for to a business to approach a dispute and advise client accordingly

Jack Daniel’s had a situation where a Louisville author published a book cover with a theme that looked very similar to the Jack Daniel’s distinctive bottle label. The Jack Daniel’s in house counsel sent a letter and used language that was kind, noting that the author was a “Louisville neighbor” and “fan of the brand”, requesting that the author change the cover art on the next printing and offered to help pay for reprinting. Jack Daniel’s showed with this letter that you don’t need to be in the business of crushing people who love your brand. When people love and mimic your brand, perhaps it is someone to give consideration to and it may be better to approach the situation without a formal C&D. Ultimately, the Jack Daniel’s demand letter went viral for all the right reasons and the matter was resolved without litigation.

Factual Due Diligence

Use the demand letter as an opportunity to understand your client’s business and their issue. After the client brings you the issue, be sure to perform thorough due diligence and independently investigate. Consider whether a private investigation is needed, whether you need to speak to people at the company, conduct website research, and so forth. Also be sure to properly document all of this evidence if it is necessary to use it in litigation in the future. Additionally, Moish suggested that this is an opportunity to make sure that the IP is properly protected and consider whether new applications should be filed consider filing in new territories.

Factual Elements

First, you need to identify parties who should be named in the letter. Consider whether there is an existing relationship or if you’ve had prior disputes, contracts, or relationships. Next, request and review relevant documents. This is a good time to check with the client if there are other people to speak to at the organization or externally. Next, ensure compliance with existing contracts (what type of agreement is in place or any relevant emails). Also consider if existing agreements set out dispute resolution procedures or jurisdiction/venue provisions which may mean you are or are not the right person to be handling the case. Additionally, consider if there are any governing statutes that you need to comply with any relevant statues. Finally, understand time sensitivities – how quickly does the resolution really need to happen? Determine if there is a real business need for immediate/swift action and whether you need to skip the demand letter and seek a preliminary injunction instead.

Legal Research

Moish emphasized the importance of thinking strategically – know your facts and what cases you’re relying on so that if you end up in litigation, you won’t be scrambling. The better you can lay out your facts and draft a narrative that convinces the recipients of your letter that you have won your case, the more likely they will be to take action and comply with what you’ve asked for. The way to get there is to review the facts, research the law, draft a compelling narrative, and prepare for their counterargument. Moish recommended thinking about how this case looks in litigation to frame your case. Maybe you go through this exercise and realize that your client’s case is weak and you need to go back to the client and tell them it’s not the right approach.

Writing

Start writing the demand letter by outlining the factual and legal elements. Next, consider the tone. Is it a C&D demand or are you requiring them to do something? Maybe there’s something more informal that should happen before the letter, like a phone call, and if the call doesn’t work, then change the tone. If you’re asking for a certain act, look at what the law allows and what sort of relief are you entitled to. In terms of timing for response, be mindful that people may not be in their offices and need time to respond. Lastly, as for warnings for non-compliance, determine what is applicable in your case and be prepared to follow up with the proposed consequences for non-compliance. Before sending the letter, discuss strategy with your client – what we will do next if the letter doesn’t work and that we actually have to do that. Be sure to have discussed litigation budget and have litigation counsel lined up.

Consider Consequences

Be sure to consider consequences. Declaratory Judgments, for example, can be problematic. If you foresee the matter devolving into litigation, perhaps consider that as part of your demand letter. Also, think about a larger portfolio of IP and how it affects the demand letter. Consider cancellation, DMCA, and right of publicity issues. Be prepared for a response which could bring you into court in 14 days!

It’s also important to consider the Streisand Effect, where the act of sending a demand letter calls more attention to the dispute than if you just let the dispute die out. The term got its meaning after a photographer took thousands of photos of the California coastline to document beach erosion. One of the photos happened to be a photo of Barbra’s home. Barbra sued the photographer to have the photo taken down from his website. The act of filing that suit caused notoriety over the location of her home which is the exact opposite result of what she wanted strategically. Before the suit was filed, there had been 6 views of the photo on the website, which increase to 500,000 views after she filed. If she had just done something small and lowkey or ignored it, it might have been much more in keeping with her end goal which was to ensure her privacy.

When Can We Use Creative Demand Letters

Humor doesn’t work in every circumstance, but it certainly can be effective!

Netflix and Stranger Things – Netflix sent a letter to the owner of a Stranger Things pop-up event which was humorous and done in a creative way, bringing up aspects from the show. It went viral, showing that humor can work!

Bill Murray and Doobie Brothers – Doobie Brothers sent a demand letter to Bill Murray after he used their music to promote his clothing line. The lawyers seemed to know each other and didn’t cite law, they used humor and simply asked Murray to stop using the music. The response was also tongue and cheek.

Trip Advisor – In lieu of humor, Trip Advisor made a statement with their demand letter in support of LGBTQ+ rights. Trip Advisor sent a letter to a company that was not LGBTQ-friendly, demanding that this company stop claiming any partnership with Trip Advisor. Trip Advisor did not want to be associated with this company and instead wanted to show that they are LGBTQ-inclusive. They sent a creative letter filled with puns showing that they are LGBTQ-inclusive, using the dispute as an opportunity to draw attention to Trip Advisor that is positive to their brand.

Letters That Backfired

A township attorney in West Orange, NJ sent a letter to an individual resident of the town who registered a domain name where he provided factual information to the public about things going on in the township. The demand letter was very strongly-worded and demanded that he cease and desist and withdraw the domain. But at the next township meeting, the town residents all showed up in support of the website owner. Moish recommended that it is important to consider the audience when sending the letter (is it an individual, outside counsel, etc.) and consider whether the tone needs to be extremely formal and lay out all the facts and law, or if it can be informal and humorous. By making these considerations, it’s more likely that your end goals will be complied with. It’s especially important to be considerate of these factors or else you can be considered a “bully.”

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