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I received one of the cease and desist letters regarding the sale of counterfeit Zumba DVDs

Oswego, NY |

The letter includes and affidavit for me to sign and demands that I send in a payment of $919.32. I did sell a box set of Zumba DVDs on ebay but I had no idea they were counterfeit, I purchased them myself on ebay and sold them because I preferred to do Zumba with other people at the Y. I did not say in my description that I got them directly from the website or try to be misleading or anything--I merely stated that I was selling them because I didn't use them, just like I do with so many other things. The discs played fine and I did not get a complaint from the buyer or anything. This feels really crazy and very unfair--I am being lumped in with jerks who knowingly scammed people and/or were mass sellers when I sold ONE,and the firm doesn't want to hear any individual excuses-pls advise!

Something I failed to mention previously is that the letter I received seems to be a form letter sent through my email address. They do not cite specific information about me other than that I sold the Zumba box set on ebay, the one they allege to be counterfeit. In addition, I purchased the box set thinking it was USED and also sold it as USED. There was nothing out of the norm about it, looked "real" and I played each DVD and they all worked fine with nothing that would have indicated to me that they were of questionable quality in any way and when I sold them I said in my listing that I had watched them but preferred to do the class at the Y and that was my reason for selling them. So the buyer knew they were used also and there was no complaint from them about the DVDs quality or anything like that. I'm thinking I was just a name on a list generated of anything Zumba related sold on ebay during a frame of time maybe?

Attorney Answers 3

Posted

It is unfair, but it will cost you far more than $919.32 to fight it. If you are intent on not paying the $919.32, the you might try this, but keep in mind, that the goal of counsel is to protect their client's copyrights and trademarks, so they do not need to compromise. Write a certified letter, explaining that you do not have $919.32, that you purchased the item from seller ID No. on EBAY, and provide proof; that you had no idea the set was counterfeit, and am surprised to hear that because the labels appeared authentic, the discs played perfectly, and you paid a fair price. State that you agree never to sell a Zumba product on or off ebay, and that you would be happy to put that in writing, but that you sell on ebay to make ends meet, and you just can't pay them. Maybe it will work.

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1 comment

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

This situation is most certainly not unfair. The questioner chose to engage in business but chose not to investigate whether the product he or she was selling could lawfully be sold. That is COMMON SENSE and, forget intellectual property law, selling a product that violates another's rights and causes the buyer to be an infringer as well violates state warranty law under the commercial codes. The question is not a victim. The questioner is the perpetrator. That being said, the questioner should NOT respond to the cease and desist letter w/o first speaking with counsel. It rarely makes sense in these minor enforcement efforts to file suit for damages. The questioner's own attorney will have to decide whether ignoring the letter makes the most sense.

Posted

Copyright and trademark infringement are "strict liability" offenses, which means that what you knew and intended and didn't know and didn't intend doesn't matter at all. And it may feel unfair, but consumers are responsible for knowing what they sell, and IP owners can hold sellers liable if they infringe. So while you may be an "innocent" infringer, and you didn't make any claims about genuineness, you're still an infringer who sold a counterfeit product, and the courts have wide discretion in imposing damages against infringers.

The firm you're dealing with, Johnson & Pham, who represents Zumba, knows, even if they didn't buy your 1 copy and have it examined for authenticity, that you're an infringer because they know when the Zumba company made and sold authentic Zumba products, and they know that yours aren't authentic and you still bought it (which isn't illegal) and then re-sold that same counterfeit copy (which is a violation of federal law), thus impacting their client's legitimate market for the sales and putting these fakes in the market which of of course they're trying very aggressively to stop.

$919.32 does seem like a lot for 1 sale and some large multiple of your actual profit on the sale, but they want to make sure to punish you enough to make you stop. Ypou can try to negotiate them down to something more reasonable, and agree as they want not to sell their products again. Make sure any settlement paperwork you sign says that they ALLEGE it's counterfeit, and admit no liability, but simply a settlement to avoid the expense and uncertainty of litigation.

PLEASE READ THIS BEFORE YOU COMMENT, EMAIL ME OR PHONE ME. I'm only licensed in CA. This answer doesn't make me your lawyer, and neither do follow-up comments and/or emails and/or phone calls, and you shouldn't expect me to respond to your further questions if you haven't hired me. We need an actual agreement confirmed in writing before any attorney-client relationship is formed. This answer doesn't constitute legal advice, and shouldn't be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.

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2 comments

Asker

Posted

So a question I have is how do they know the the specific box set that I bought and then sold on Ebay was even counterfeit? All I am going off of is that they are telling me it is counterfeit and I am unclear as to how they know this for certain? If they only know a time when Zumba made and sold authentic products and infer that this copy was counterfeit because it didn't fit in that time range or something, how do they account for the sale of used items? I purchased this as a used box set and sold it as a used box set?

Pamela Koslyn

Pamela Koslyn

Posted

Did they have their own investigator buy your set from you? If so, they've examined it and can tell from it's packaging if it's legit or not. If they didn't buy it, it's not impossible (even if unlikely) that your set was bought from a legitimate source. That's why you can argue that it's ALLEGEDLY counterfeit and negotiate a better deal.

Posted

Here is your problem---you broke the law when you sold a fake box set of Zumba DVDs on e--bay. Further, I disagree with my colleague one one point---you also broke the law when you purchased these fake DVDs on e-bay. You say you that the goods were counterfeit, but this misses the point. You also did not know that the goods were authentic. Anyone who buys and sells goods on e-bay or from any other source has a duty to make sure that the goods that you buy are authentic. One step that a buyer can take is to require the seller to warrant and represent as party of a written agreement that the goods are authentic and to agree to indemnify and defend you if you get sued by the copyright owners for infringement. If the seller is a legitimate business selling legitimate goods, it should be willing to provide indemnification. But if the seller does not provide indemnification, than the buyer purchases the goods at its own risk--and assumes the risk of getting sued because the goods are not authentic. That is what happened to you here.

Is this fair? Sure it is. Anyone who can read a newspaper understands that it is illegal to purchase or download counterfeit DVDs, music, movies, etc. Thus, when you buy or sell goods, you have a duty to make sure that the goods are authentic. Otherwise you risk being sued for copyright infringement. Although you may not have known that the DVDs were fake, you surely knew that it was illegal to buy or sell counterfeit goods on e-bay. It was your fault that you did not take steps to assure that you were engaging a legitimate transaction. If you don't know whether goods are legitimate, then don't buy or sell them. By the way--one sure sign that the goods may be fake is if they are sold at a substantial discount----if the price seems too good to e true, then there is probably a problem with authenticity.

You should know that the law firm is letting you off easy here. Statutory damages for a wrongful purchase or sale of counterfeit goods in violation of copyright law range from $750 to up to $150,000 for each item. If your infringement is deemed accidental, the court can award damages no greater than $35,000 for each work, but if you are found to have engaged in willful copyright infringement, the Court can assess punitive damages against you of up to $150,000 for each DVD that you wrongly bought or sold. Further, the copyright law allows the court to grant attorneys fees to the copyright owner to compensate the copyright owner for the fees and expenses incurred in protecting his intellectual property rights. A settlement of less than $1000 can be viewed as a bargain compared to the liability you probably would face if plaintiff was forced to litigate the case in a federal court.

There really are only two possible defenses that you could assert in a court case--(1) that you didn't buy or sell the goods (but you admit that you did so this won't fly here, or (2) the goods were in fact authentic (but they clearly were not authentic, so this also won't fly here). Thus, you have no real defense other than the rather lame assertion that you didn't know the goods were counterfeit. You didn't know because you didn't take steps to assure that the goods were authentic. Ignorance and/or willful indifference to your legal obligations is no excuse.

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2 comments

Asker

Posted

The problem I have with your response is that ebay creates a different selling environment in that I purchased this set as used and sold it as used so my understanding would be that if the item is authentic, which I had no reason to think it wasn't, that Zumba got their money from the first person that bought the item, right? How is all of this affected by it being used??? I guess I didn't spell it out that I bought and sold this as USED but I did. Also, on ebay when there is an auction format the whole idea is to try to get an item for as little as you can and bid accordingly, making the authenticity test you mentioned where a "substantial discount" being an indication of it being fake not applying as neatly. Sellers across the board can start the auction at 99 cents whether the item is authentic or not. so is Ebay supposed to also be responsible for how people post the items even if they are used?

Maurice N Ross

Maurice N Ross

Posted

You are misinformed if you believe that it is ok to buy and sell used counterfeit goods. It is illegal to buy or sell counterfeit goods whether or not they are used. Ebay's terms of service clearly put consumers on notice that they required to take steps to avoid dealing in counterfeit goods. Further, E-bay uses both an auction and buy now format. As to the auction format, if you get a price that is too good to be true, you should be very suspicious. While consumers sometimes save some money during the auction process, usually the price paid for authentic goods via auction does not reflect the kind of deep discount that should be a red flag. Whether via auction, buy now, or any other sales format, if the price is too good to be true you should take extra care to assure that the goods are authentic. Finally, E-bay makes it clear in its terms of use that it has no responsibility to assure that the items posted on E-bay are authentic, nor does E-bay have any duty to protect you in the event the items are not authentic. If you want to sell or buy goods on E-bay, then you have the duty to assure authenticity of the goods, and if it turns out the goods are not authentic, you can be held liable for infringement. No offense, but this is entirely your responsibility because you assumed this risk when you tried to get good deals on e-bay.