LP At It Again?

by Pam

What on earth is end game of Laser Performance "LP"?  By now, most have heard about LP beginning its hostile takeover of the International Sunfish Class Association (ISCA). Finally, it's the Laser sailors' turn to watch the fight from the sidelines. I know, I know, many have drawn the conclusion that the ILCA is next, but Bruce Kirby may still be holding LP at bay.

We all knew about the Kirby v. LP case. Some were partial to Kirby's side (ImproperCourse), some were partial to ILCA's side (ProperCourse), but very few understood or really got behind LP's point of view.  Some perceived the ILCA to be siding with LP but to me it looked more like the ILCA was playing a chess game with LP, and the ILCA had essentially decided to sacrifice a pawn (Kirby) in hopes of staying in play a little longer.  I thought it was the wrong move but I completely understood the logic of the move.  

When the decision on the court case was handed down back in December 2016, most decided Kirby had lost and stopped paying attention. There were rumors of negotiations taking place behind the scenes and that a decent settlement for all (except Kirby and Global Sailing "GS") was likely and the Laser sailing game would go on as usual. The ISCA has apparently been having those same types of negotiations behind the scenes and look where they are now. Fortunately, for the Laser sailors, Bruce Kirby always had the best interests of the sailors in mind (yes, I believe, even when he added the ILCA to the lawsuit). 

What most don't realize is that GS and Kirby did not just roll over and play dead when the decision was handed down in December 2016. In fact, the case is still pending, with the Judge issuing a decision in June 2017 saying that he made a mistake:

... The Court dismissed Counts I through IV despite the fact that defendants themselves did not seek dismissal of these particular counts on standing grounds (likely because defendants knew that the BRUCE KIRBY® trademark had not been sold to GSL). In view that defendants did not seek dismissal of Counts I through IV on standing grounds, I do not think it was incumbent on plaintiffs to have anticipated the Court's mistake by making a fuller record of precisely what intellectual property rights had been sold rather than licensed to GSL. Because of the Court's own mistaken understanding on this issue, I think it is appropriate to correct the error ...

In that same decision the Judge said it was too late for GS to amend its counterclaims against LP in the pending case so GS filed a new lawsuit against Rastegar in July 2017 and that case was then joined with the Kirby case in October 2017:

As we have seen before, this might buy the Laser sailors a few years before LP can fully swallow up the ILCA and, in the meantime, we get to watch the ISCA class play its chess game with LP and maybe learn a few things along the way.  

And, let's not forget that Kirby was particularly offended when he discovered that LP was trying to obtain the LASER trademark for the purposes of running regattas and he initiated cancellation proceedings of the LASER service mark (for regattas) as well as the LASER trademark (for sailboats). Unfortunately, he was forced to withdraw the cancellation proceedings for the sailboat mark since LP produced an old document stating that Kirby had agreed to never contest the LASER trademark (for sailboats). However, the US Trademark Office ruled that the agreement did not apply to the LASER service mark (for regattas) and allowed the proceeding to continue. That proceeding was stayed pending the outcome of the civil lawsuit but now appears to be moving again (but might get stayed again). In the meantime, LP filed for a new service mark for regattas on the starburst logo, which registered in July 2017.

It is curious to me that the rights to the LASER trademark (for sailboats) are held by Karaya (Jersey) Limited but the rights to the starburst logo trademark (for sailboats) are held by Velum Limited. Seems like that would somehow give rise to a legal argument about two different entities holding a trademark for the same product. I thought a trademark was supposed to help a company identify and distinguish its goods (and their quality) from the products of others.  I certainly do not know if a Laser sailboat is the product of Karaya, Velum, LP or the ILCA. I more closely identify the Laser sailboat as being manufactured by LP (in some jurisdictions) to the global standards of the ILCA and certainly not to the standards of Karaya or Velum (or any of the other Rastegar shell companies).

But, really I digress ... even though Doug and I both sold our Sunfish earlier this year, the main purpose of this post was to offer some information to the ISCA since they intend to play their chess game a little differently than the ILCA: 

1. Take a look at the Kirby cancellation proceedings of the LASER trademark. Many of the assignment documents included both the Sunfish and the Laser.
2. Take a look at an old post about the possibility of the SUNFISH and  LASER trademark being up for grabs.
3. Talk to an attorney about "collective trademarks" and whether the Sunfish class has a rightful and priority claim to the Sunfish marks.  
4. Take a look at the specimen that Velum filed to renew their registration and to evidence their ongoing use of the SUNFISH service mark for running regattas.  They did the same thing with the LASER service mark in the Kirby cancellation proceeding and then said that the ILCA was a licensee. How hosed up is that?  So the ISCA runs the regatta (allegedly, as a licensee) and that provides evidence for Velum's use of the service mark and then Velum can terminate the alleged license and then gets to keep the service mark ... when it has never run a regatta?  

All of this might be a dead end but it might give your attorneys something to think about.  The ISCA is different from the ILCA in that AMF Incorporated filed for the SUNFISH service mark for running regattas back in 1972 with a first use date of 1959 and Velum subsequently acquired those rights. Sadly, I think it was LP's review of the trademark portfolio that might have inspired and motivated them to take over running of the regattas. But, surely it could be argued that they abandoned the service mark for running regattas because they have not done so for quite some time (like ever according to ISCA's recent writing). Whatever you do, good luck!  We are all watching and rooting for ISCA!

Disclamer:  All of this is personal opinion and speculation from a 20 year patent paralegal who is completely unqualified in trademarks but just might have a slight advantage in knowing where to look for some information.