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)
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
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.
“…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."
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.
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?
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).
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.