Lawyer billing the other party for writing a letter to them (I'm in New Zealand, but I'm also interested in answers/data points from other jurisdictions) A friend whose Intellectual Property (design patent) is being infringed engaged a lawyer who intends to write a cease and desist letter to the other party, and to send a bill to this other party for his letter! Although it is likely the other party is aware they are infringing, my friend has not reasonably communicated with this other party asking them to stop prior to getting his lawyer involved. I can't quite put my finger on why, but it is my distinct impression/feeling that if the other party challenges the bill, they could not be forced to pay it. Are there any rules of law around this kind of thing?
As a matter of contract law it would not be possible to enforce a requirement to pay legal fees without agreement. You could easily see how this would be problematic: one could just draft letters to hundreds or thousands of people and require them to pay the costs of composing the letter. My understanding is that this is common practice in the United States (see speculative invoicing). However, people are generally free to pay whatever they want to anyone they want. The other side is free to pay the legal costs, they just probably won't. In some common law jurisdictions, the concept of a Calderbank offer may be another reason to write a letter such as this; the settlement offer can be relied upon in later proceedings as an indication as to the costs that would be appropriate to award to the winning party, should the offeree unnecessarily prolong legal proceedings
Any written communication is generally admissible Subject to all the normal rules for admissibility of course. For texts between you and a third party the major issue that springs to mind is relevance. As in, how are they relevant to the dispute between you and this man? If they are not, your lawyer should have objected to them on this basis, however, its too late now. I'm curious as to how he obtained these and whether it was done legally or not. Illegality will not affect their admissibility as the exclusionary rule doesn't apply to civil matters, however, it does speak to the gentleman's character.
The issue of who pays directly for the items and/or to contractors is irrelevant. The important thing is to memorialize the agreement/arrangement in writing so as to preempt or solve eventual disputes. A clearly written agreement signed by the parties would supersede any presumption of conditions and rights arising solely from the parties' conduct.
There are basically two kinds of things one could do. One could assign or transfer intellectual property rights and contracts related to the app to the entity, or one could license the intellectual property rights to the entity. Generally speaking, in a related party transaction, everything should be in a signed writing, and a notice of the transfer of an intellectual property right that has been registered or filed with a government agency should be provided to the government agency in question. Since there are potentially copyright, patent, trademark, publicity, and contractual rights that might be associated with the app, each aspect which exists should be transferred or licensed, as the case may be. While the forms to do this aren't particular long, the concepts involved and correct terminology are subtle, so this would not be a wise undertaking to attempt on a do it yourself basis.
The answer to the question "can so-and-so sue me?" is almost always "yes", regardless of context. Such a suit might be baseless, and it might get settled in your favor, but you still have to spend the time and money to defend yourself. This can be disastrous for a start-up that's trying to get off the ground, and it's how patent trolls make their money. (I'm not accusing SnapChat of engaging in such tactics as a rule, of course; I'm just pointing out that the legal system does allow for them.) Whether or not you are likely to be sued is a separate question, and one that can really only be effectively addressed by a trademark attorney with full knowledge of the particularities of your situation.
How close is such a statement corresponding with the reality? Legally, such language is a meaningless statement of future intent that at best makes clear that the person making the statement isn't waiving any of their legal rights. Certainly, no infringer would have standing to sue if they failed to do so. Whether a joint venture member or foreign reseller could sue the company for failing to enforce its IP rights is another question that presents itself very differently and depends upon much more than what the warning labels state, such as the language in the joint partnership or reseller's agreement with the copyright owner. Also, in criminal copyright violation cases, even if the copyright owner asks for the maximum possible consequences, the U.S. Justice Department is under no obligation whatsoever to go along with that request. Likewise, a judge has no obligation to impose the maximum penalty allowed by law following a criminal conviction, even if the copyright owner and the U.S. Justice Department both request a maximum sentence for someone who pleas guilty or is convicted of the offense following a trial. In practice, something like 98% of federal criminal cases, and a similar percentage of federal civil cases, result in agreed resolutions which result in less severe penalties than the maximum penalties allowed by law. This happens as a result of a mutual agreement to resolve the case with a guilty plea, or a settlement agreement in a civil case, or both. Also, in practice, none of these companies, nor the federal government's prosecutors, have the resources to press anything but the most clear and serious copyright violation cases, and cases that are valuable for P.R. purposes. Anything else is essentially a random lottery from myriad cases that could have been brought in order to counteract the argument (both political and legal) that their copyright protections are empty and completely unenforced is a large part of the cases to which the statutes would make it seem that they apply. Also, in a case brought by a joint venture owner or reseller for failure to enforce a copyright which causes the partner damages, presumably in some sort of breach of contract or breach of fiduciary duty action, there would be no way to prove damages from all of the non-enforcement, since enforcing every known infringement would not be cost effective and would reduce the net profits of everyone involved.
Your client is confused about how copyright law works (at least in the United States and virtually every other country I've ever heard about copyright in). If I were guessing, they read something like this from the United States Copyright Office: The copyright in a derivative work covers only the additions, changes, or other new material appearing for the first time in the work. Protection does not extend to any preexisting material, that is, previously published or previously registered works or works in the public domain or owned by a third party. and figured that because it's a derivative work, the copyright only covers the additions and changes they make, and there's no copyright protection for the original work. This misunderstands the law: the original work still has its own copyright (assuming it hasn't expired), and permission from the holder of the copyright on the original work is required to create that derivative work in the first place*. The copyright on the derivative work is separate—that is, both copyrights exist in parallel. * Some exceptions, such as fair use, exist, but would be unlikely to apply to the situation you describe.
There are two cases to distinguish: information that the other party does not want to give without court order, and information that the other party may not give without court order. Only the former case matters, of course, since the latter by definition requires a court order. So, if the other party is legally capable of giving the information, but it's commercially not sensible for them, then you'll need to sweeten the deal. And that's business, not a legal question anymore. In other words: there's no legal instrument that's at the same time equal to a court order but also different from one. When you need a court order, there's no alternative to a court order.