by Pam
Rewritten on May 19, 2012
Tillerman's recent post on Proper Course, a conversation with a sailor at a regatta this past weekend, Eric Faust being made General Manager at the ILCA, and posts on various forums, have all combined into a perfect storm in my head which motivated me to verify what facts I could and share that information.
Since, I got some information wrong in the first post and since there is already so much incorrect information circulating, I’m revising the post but leaving the original post in place since I received word that it was brought to the attention of the World Council who are currently meeting. My intention is to simply show that we need more information and maybe the ILCA needs to consult with another attorney for a second opinion.
The March 23, 2011 ILCA proposed rule change and the resulting September 23, 2011 vote and discussions along the way have given rise to a dilemma … to ratify the rule change or not to ratify, that is the question. A case can certainly be made for urgency but a case can also be made for measuring twice and cutting once.
So let’s jump in and assemble the various statements and see what pieces can be verified and what questions still remain.
(I put the text in the icon below since it took me a minute to find it on the link)
Players
BKI - Bruce Kirby Inc. (former and present design rights holder)
GS - Global Sailing (former design rights holder)
LPE - Laser Performance Europe - a builder and a trademark owner
ILCA - International Laser Class Association
Rights
Patents - None
Trademarks - “LASER”
Design rights - boat design
BKI / GS - boat design rights (BKI pre 2008 / GS in 2008 / BKI in 2011)
LPE - "LASER" trademark rights in several areas and former right to build boat by virtue of contract with BKI/GS
ILCA - no rights to boat design or trademark - controls definition of “class legal” boat
Dispute (pieced together from various sources)
BKI contracted with LPE to build boat. BKI sold design rights to GS. LPE paid two years of royalties to GS and then stopped paying. GS terminated LPE’s right to build the boat. BKI reacquired design rights from GS. Unknown whether BKI and LPE re-established contract to allow LPE to build boat.
ILCA Action
“…we are proposing to change the rule to eliminate the “building agreement from Bruce Kirby or Bruce Kirby Inc.” requirement. Manufacturers who have trademark rights and who build in strict adherence to the ILCA Rules and to the Construction Manual, which is controlled by ILCA, will continue to have the right to build Class legal boats."
PATENTS
There are and never were any Kirby design patents for the Laser.
ILCA: ‘… a builder also needs a building agreement from Bruce Kirby or Bruce Kirby Inc. This provision is mostly historical. The rule was instituted at a time when Bruce Kirby held certain design rights. … The lawyers also informed us that the Kirby design patents had in fact expired….’
Kirby: ‘… There never were any patents. You can't patent a sail boat design. These were contracts, legitimate contracts drawn up by lawyers and there is no suggestion that I had a patent on the boat. These were long term contracts that were renewable every so many years. No-one’s ever questioned them so I don’t know what lawyer they found that suggested this course of action. It’s crazy!...’
What can be verified: A search of various patent offices in most major countries revealed that Bruce Kirby had two US design patents:
D304,922 (12/5/89 - 12/5/03) for “Sailboat Hull” - but not for a Laser
D304,922 (12/5/89 - 12/5/03) for “Sailboat Hull” - but not for a Laser
D373,156 (08/27/96 - 08/27/10) for “Model Sailboat” - but not for a Laser
Here are the images (click to make bigger) of the first and second page of the design patents.
It’s quite possible that the ILCA’s attorney isn’t a Laser sailor, and when he/she saw these design patents, one of which recently expired, he/she incorrectly concluded that this must be the subject of Kirby’s designer/builder contract. However, any Laser sailor can tell you that these design patents probably don't cover the Laser (one has a jib and the other a keel). Unless the attorney can somehow make a case similar to the stool vs. chair as in this example http://www.patentlight.com/?p=41, I’d have to say the ILCA might have received some inaccurate advice.
COPYRIGHT
Bruce Kirby/Bruce Kirby, Inc. holds 4 copyrights in the US and the one worth noting is the Laser Construction Manual:
Type of Work: Text
Registration Number / Date: TXu001362085 / 2007-06-21
Title: Laser construction manual.
Copyright Claimant: Bruce Kirby, Inc.
Date of Creation: 2005
Authorship on Application: Bruce Kirby, 1929-.
Copyright Note: Cataloged from appl. only.
Names: Kirby, Bruce, 1929-
Bruce Kirby, Inc.
ILCA: ‘… Manufacturers who have trademark rights and who build in strict adherence to the ILCA Rules and to the Construction Manual, which is controlled by ILCA …’
I cannot find any record that indicates the Laser Construction Manual has been assigned to the ILCA. “Control” doesn’t necessarily equate to “ownership” and a copyright would cover the text and any derivative works for 70 years after the death of the author. Perhaps the ILCA should consult with an attorney regarding who owns this Laser Construction Manual and if it’s still Kirby, what does that mean for the ILCA?
TRADEMARKS
The LASER trademark has always been owned by the builders, not the designer (Kirby), design rights holders (Kirby/BKI/GS) or the ILCA.
ILCA: ‘ …requires that a builder of class-legal boats must (among other things) (i) manufacture the hull, equipment, fittings, spars, sails and battens in strict adherence to the Construction Manual and (ii) have the Laser trademark rights…’
‘Global Sailing [design rights holder] has said it may form a new class association for a “Kirby Sailboat”. LPE [builder] informed the ILCA that it intends to form its own “Laser” class’.
Kibry: I can find no statement made by Kirby claiming to own or have ever owned trademark rights to LASER. Instead he has indicated the official name of the boat (presumably in the designer/builder contracts) is the Kirby Sailboat.
Forums: Various posters on various forums have said that Kirby sold his trademark rights. These are incorrect assumptions.
Here is the assignment record for the USA LASER trademark. If you click on the “serial number” at the top, it will take you to the trademark record. Performance Sailcraft, Inc. filed the original registration on June 17, 1974 and it is currently owned by Karaya (Jersey) Limited.
CAN LASER trademark - ownership record is similar to US
AUS - Performance Sailcraft Pty. Ltd. originally filed and still holds LASER trademark. As of June 29, 2010 they filed for about a half dozen more variations of the LASER trademark, all of which will issue as registered trademarks on September 29, 2012.
EU - Performance Sailcraft Europe Limited originally filed and still holds LASER trademark (as far as I can tell but I’m not as familiar with searching at this office).
Designer/Builder Contracts
To comment on the contracts would be pure speculation but given the above pieces that can be verified, it gives rise to some questions. Given that it's almost a certainty that there were never any patents, then is the basis of the contract still valid? Is the ILCA rule the only thing that binds the builder to the designer/builder contracts? What about the Laser Construction Manual? The Copyright Office shows Kirby to be the owner but the ILCA says they “control it”. Does that document bind the ILCA to Kirby? Or do the designer/builder contracts actually hold all of the pieces together and changing the class rule will still not invalidate the contracts nor empower the builders to build the boats? And, I've received new information regarding LPE and there is something there that is very off and worth a little investigation.
To ratify or not to ratify, that is the question. If you had more information available to you when you voted, would you have voted differently? Do you feel that the information you were given created confusion? Did it affect the way you voted? Should we measure twice and cut once? How expensive is it if we get it wrong and ruin it. I don’t know.
I voted NO because I didn't feel that I had enough information about the situation to make an informed decision in favor of changing a Rule that had worked perfectly well for 40 years.
ReplyDeleteIf I had been given more information I might well have voted differently.
Yes, I do feel that the information I was given created confusion, in that ILCA and Bruce Kirby published statements that were not consistent with each other, and nobody ever answered such questions as what was the real nature of the dispute between LPE and GS, and what do the contracts between BKI and the builders actually say.
I also felt that a class association should not arbitrarily change a rule that protected their boat designer's interests. In the absence of any convincing information at the time that Bruce Kirby had acted dishonorably I felt I should err on the side of supporting him rather than one of the builders.
Without the answers to questions like that I felt it was safer to maintain the status quo. Measure twice and cut once, as you say.
Thanks Pam, that is a brilliant summary. I think that it's also important to know that the current owner of LPE is not the original owner. The current owner of LPE aquired the company as part of the McLaren group. Perhaps his disinterest in sailing and LPE can be attributed to the change in the status quo?
ReplyDeleteJust to clarify...
ReplyDeleteLPE is not part of the "McLaren Group." The McLaren Group, based at the McLaren Technology Centre in Woking, Surrey, England, is a group of companies created by Ron Dennis, focused around the Vodafone McLaren Mercedes Formula One Racing Team.
LPE is under the same ownership as Maclaren which is is a baby buggies, strollers and carriers manufacturer.
Thanks Oztayls! I guess my summary was better than I thought. I've been in touch with two of the key players in this game and received the approval of my favorite IP attorney for my analysis. I'm curious to learn more about LPE. I've heard conflicting information about the company and its owners. However, I've been asked very nicely to refrain from further posting on the matter and have chosen to comply.
ReplyDelete... for now.
ReplyDeleteHmmm. What happened to "sunshine is the best disinfectant"? Did someone ask you "very nicely" to turn the sunshine off?
ReplyDeleteA little sunshine can do some good ... too much can sometimes cause a burn. Moderation.
ReplyDeleteWorking like a patent engineer in Houston and before in Paris, your article was very interesting. But regarding the patents, the most important is to check the claims. If the claims are very broad, sometime a patent can protect a concept which is not really illustrated with the drawings. So if there is no information about the center-board in the claim 1, that's mean all the systems ( a jib and/or the other a keel) can be protected.But with a design patent there is no claim just some drawings. However, the laser has been designed before the date of file of these two patents, so they cannot covered the laser. Moreover these two design patents have been validated only in US and are expired now. So the design is free to use it.
ReplyDeleteThanks again for the article
Sebastien DUBOIS
FRA 164245
SSC
Kirby as designer surely has Copyright, any patents aside, unless he has sold / transferred those rights.
ReplyDeleteAs far as I know US Copyright law, copyright is valid for 70yrs after the artists death.
Therefore Kirby, or rights assignee, can stop or withdraw permission to a 3rd party manufacturing their design as they wish (licencee contractual terms permitting)
I don't think "patents" are relevant in this case.
Indeed, patents are not relevant because there are no patents on the Laser. The relevance is that the ILCA lead up to believe there were but that they had expired. Bad ILCA. The trademarks are relevant. This research is now old and better international information has been found on the non-US trademarks. US data I can find without problem - non US, I'm still learning. Yes, there is a Copyright on the Laser Construction Manual. How much good that does is up to a court of law. With an architect, who has designs for a building, the only thing copyrighted is the physical design plans. There have been arguments that it extends to the building of the building because the plans had to be used to build the building. Maybe a similar argument could be made for a Laser. But if it could, I'm sure Kirby's attorney would have done that already so that is probably not an option in the US.
Delete