May 16, 2012

The Kirby Sailboat

by Pam
Updated version can be found here The Kirby Sailboat - Take Two.  Don't bother to read this unless you're just curious.  

Tillerman's recent post on Proper Course and a conversation with a sailor this past weekend motivated me to find some answers to questions no one seems to know the answer to and everyone seems to be talking circles around.  

So, since I spend my days looking up details of patents and trademarks, I figured I was uniquely qualified to do some digging.  Not only did I find the answers, I formed a theory as to what the heck is really going on.  It's just a theory so don't go quoting me because I don't have any inside information and I'm basing my theories on some minor experience with such matters.  So, let's just jump right in.

Bruce Kirby has two US design patents and they are public information.  Both have expired.  Now judge for yourself on whether either of these patents covered the Laser (click on the image to make it bigger):

A jib?  Doesn't look like a Laser to me.

A keel?  And the title says is "Model Sailboat"?

Okay, two strikes.  Those aren't Lasers.  My search included all the major patent offices and I even used the fancy search software that patent attorneys use.  Bruce Kirby had said the building contract rights weren't based on copyrights (he probably meant 'patents') and the ILCA said the Kirby contracts were based on 'certain aspects' of patents that had recently expired. 

Actually, I think they were both speaking their version of the truth.  Bruce, knowing his rights were based on contracts and not intellectual property patents, trademarks or copyrights.  The ILCA, citing that the patent rights had recently expired (the second design patent above expired in August of 2010).  Also, check out this patent attorney's explanation of stools vs. chairs and the infringement possibilities between the two (  Those darn patent attorneys can make a case for just about anything and they probably saw the design similarities in the model and the Laser and assumed the building contracts (which the ILCA admitted to not having seen) might somehow have been based on a patent right.  I'm betting against the patent licensing/infringement/expiration thing being a factor and believing the right to build the boat was based on the building contracts which related to hull molds, design specifications, etc.

Now, let's move on to trademark rights.  I've heard people say that Kirby lost or sold his trademark rights.  Not so.  I checked the trademark offices of the US, CA, EU, and AU.  Kirby never filed for trademark coverage of "LASER".  All the initial filings were by Performance Sailcraft (Inc. in the US & CA, Pty. Ltd. in AU, Europe Limited in the EU).  Kirby had said the official name of the boat was the 'Kirby Sailboat.'  That seems plausible since the actual building contracts (which I don't know anything about) should be about the hull design and specifications of the boat he called the 'Kirby Sailboat' but it would make sense to give the contracting parties the right to call it something else and they chose "Laser." 

Now, here's an interesting twist.  The US and CA have this super long transactional history of the ownership of the LASER trademark rights changing several times with it now being owned by Karaya (Jersey) Limited as of December 14, 2011 but the Assignment was back dated to January 1, 2009.  I think Karaya is somehow linked to LaserPerformance but I didn't bother to follow that up.  In AU, the LASER trademark owner is still Performance Sailcraft Pty. Ltd. and 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.  I'm not completely familiar with using the EU searching function but it appears the trademark owner in the EU is Performance Sailcraft Europe Limited.

So, assuming that Bruce Kirby didn't have patent or trademark rights all this time, it would make sense that the building contracts covered Kirby's "trade secrets" and that is what was contracted for.  Trade secrets aren't public information and they never expire.  I read somewhere that Kirby indicated one of the parties owed him alot of money which created the contract dispute that the ILCA jumped into the middle of.  It's only a guess on my part, but I've worked for companies that licensed their intellectual property to larger companies and at some point there is always a routine tipping point where the big dog in the fight decides to stop paying royalties and keep all the money for themselves since it is cheaper to fight in court than it is to pay royalties. 

Now, what creates that tipping point is anyone guess.  A scheduled renegotiation point in the contract in which one or both of the parties want a bigger piece.  Who is to say. 

Now go out and look at the manufacturer tag on your boat.  It lists 3 parties - the ILCA, Bruce Kirby, Inc. and the trademark owner. 

Bruce Kirby owns the trade secrets for the Laser design (the Kirby Sailboat) and always will.  The manufacturers own the rights to the "LASER" trademark but not the boat design.  The ILCA just changed the class rules to say that the Laser no longer has to be the originally designed Kirby Sailboat.  What a mess. 

Of course, it's possible, I'm completely wrong.  But perhaps I've added a few missing pieces to the puzzle and people with more knowledge than me can connect the dots so that they make more sense.

UPDATE:  So let me see if I have this straight ...

BKI - Bruce Kirby Inc. (design rights holder - design date-2008 and 2011-present)
GS - Global Sailing (design rights holder - 2008-2011)
LPE - LaserPerformance Europe - a LASER trademark holder and a builder
ILCA - International Laser Class Association

Patents - none
Trademarks - “LASER”
Design rights/trade secrets - boat design
BKI / GS - design rights to the boat design (BKI pre 2008 / GS in 2008 / BKI in 2011)
LPE - "LASER" trademark rights in several areas and 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
“The lawyers also informed us that the Kirby design patents had in fact expired. Therefore, 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."

Uh ... correct me if I'm wrong but my thoughts are ... there was never a patent ... the design rights didn’t expire and are now controlled by BKI. ILCA’s rule change (if ratified) attempts to authorize the manufacturers to build a boat the manufacturers have no legal right to build without a contract and the ILCA has no legal right to authorize. Oh, they can probably build it and the ILCA can give it their stamp of approval ... and it might be class legal ... but it isn’t legal.  


  1. Thanks for all your research. That clarifies a lot.

    But I don't think it is correct to say that the ILCA changed the class rules to say that the Laser no longer has to be the originally designed Kirby Sailboat. They TRIED to change the rules to say that the builders of Lasers no longer need to have an agreement with Bruce Kirby or Bruce Kirby Inc. which is not quite the same thing. The rule change was passed by Laser class members but to come into effect it has to be approved by ISAF. Many months after the members' vote the change has not yet been approved by ISAF as far as I know.

  2. Ah, yes ... it was the "TRIED" part and the informal survey seeking a new nsme that motivated me to see who owned what. I'm confused on the name change part because what I found wasn't what I'd heard. The use of the name LASER doesn't seem to be a problem. It's the use of the boat design of the Laser that is in question.

    I could be wrong but it would seem that the building contract with Kirby is a matter of contract law and regardless of what the ILCA votes upon or passes, the courts ultimately must determine whether to uphold Kirby's rights in the contract. A determination by the courts could take years.

    I'm not sure I understand why the ILCA decided they needed to try to intervene but attempting to cut Kirby out of the picture seems like an attempt to predict the outcome of a contract dispute. Looks like one party has rights and one party has money. Unfortunately, our legal system doesn't always favor the person with the rights.

  3. It seemed to me too that the ILCA was taking sides in a commercial dispute. But the situation was that, for whatever reason, after Kirby sold Bruce Kirby Inc (the company that owns the design rights) to Global Sailing, the contract between LPE and BKI was terminated. That meant (and still does mean as far as I can see) that all the Lasers built by LPE after that time are not legal Lasers under ILCA Rules. In an Olympic year! With the Olympics in Europe!

    At the very least, the proposed rule change would have made all those LPE built Lasers legal again.

    What a mess!

  4. So there was a contract dispute that spilled into the Laser class and the ILCA decided they had to do something. And now their action, may or may not be ratified because there are now concerns that the pre-amble on the vote made misleading statements. Given my patent research, it seems like a no-brainer that the statements (perhaps unintentionally) were misleading and have caused alot of confusion. So if they undo the vote, we're back to the potential illegal LPE boats. Or have we heard that when Kirby re-acquired the rights, he also reinstated the LPE contract with an effective date that covers the nonlegal period? Wouldn't that make things simple.

  5. Tillerman wrote: “.......That meant (and still does mean as far as I can see) that all the Lasers built by LPE after that time are not legal Lasers under ILCA Rules. In an Olympic year! With the Olympics in Europe!"

    I have heard from a Performance Sailcraft connection that LPE are not producing any Lasers, haven't been doing so for some time, and that it's been impossible to buy a really new one from them at the moment. I also understand that the only "new" LPE Lasers are those that were built 2 years or more years ago and which are still held in stock. That being the case where are all the Olympic boats to come from? I also heard from the same connection that Olympic sailors may have to transport their own boats to the Olympic venue. In fact, this has already started to occur.

  6. Wow. I had not heard any of that news before Oztayls.

    Of course if it's all from a Performance Sailcraft source (presumably meaning the Australian builder which is owned by the same family as Global Sailing) I would take it all with a pinch of salt!


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