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.

LASER FOLKS - Speak Now or Forever Hold Your Peace

by Pam

Dear Laser sailors, ILCA, and Performance Sailcraft Australia: 

You have until June 2, 2017 to file an opposition with the U.S. Trademark Office to stop Velum Ltd. from being granted the exclusive right to use the Laser starburst mark in connection with the services below: 

Organization of sports competitions; Organizing and conducting sporting events for the purpose of helping high school seniors earn a college scholarship in their respective sport; Organizing and conducting college sport competitions and athletic events; Organizing, arranging, and conducting sailing events; Organizing, conducting and operating sailing tournaments; Instruction in the nature of sailing clinics; Instruction in the nature of sailing lessons; Organizing and conducting college sport competitions and athletic events; Organizing and conducting sporting events for the purpose of helping high school seniors earn a college scholarship in their respective sport; Organizing and conducting sporting events for the purpose of helping high school seniors earn a college scholarship in their respective sport; Providing information relating to organizing community sporting and cultural activities, contests and games; Providing information relating to the organizing of educational, cultural, sporting, or entertainment exhibitions; Providing news and information via an Internet web site in the field of competitive sailing 

 

On December 28, 2016, Velum, Ltd. applied for registration of the US service mark on the Laser starburst design. It has been approved and was published for opposition on May 2, 2017. 

Publication for purposes of Opposition

According to the US Trademark Office, "Any party who believes it will be damaged by the registration of the mark may file a notice of opposition (or extension of time therefor) with the Trademark Trial and Appeal Board. If no party files an opposition or extension request within thirty (30) days after the publication date, then eleven (11) weeks after the publication date a certificate of registration should issue."

Background

Karaya (Jersey) Limited and Velum, Ltd. are the most recent owners of the trademarks for the word LASER as well as the Laser starburst design. That right has historically been limited to the use of the mark in connection with goods, like sailboats, etc. They never acquired the right to use the mark in connection with the provision of services, like running regattas. Or more specifically, the exclusive right to use the mark in connection with organizing, conducting and operating sailing tournamements. As we all know, that right has historically been assumed to be owned by the ILCA and, by extension, the members of the ILCA. 

So what happens if Mr. Farzad Rastegar (the man behind the shell companies) successfully obtains the exclusive right to use the Laser mark in connection with running regattas? We can only speculate. He is a businessman after all and not a sailor. I would assume he is obtaining the mark for the purpose of making money. He already uses the offshore companies to license the use of the mark to Laser Performance, then shifts that income stream offshore for tax purposes. Being able to collect licensing fees from the ILCA, or its members, every time they have a Laser regatta seems like an income stream to me and would seem a logical conclusion to draw as to his intent. Of course, he might be of a more benevolent mind and he might just be trying to secure the mark to make sure no one can come along and hold the ILCA hostage while demanding they change fundamental rules to suit one side over another, or that they relinquish their patents on the Mark II sail, or that all big events be run in one builder's territory and and not another, or some other such mischief. 

So, what can you, the ILCA, members of the ILCA, or PSA do about this?  If ever there was a time to pay an attorney to protect your rights, it is now. 

Where should they look? Well, for starters, I would certainly ask for a qualified legal opinion, on the following:

1. Look at the specimen they filed as proof of their use of the mark.

2. Look up the term Collective Trademark because the ILCA and, by extension, its members, would appear to possibly have a priority claim of use of the mark in connection with regattas. A win of a collective trademark for the ILCA might also lead to being able to unravel some of the other LASER trademark registrations in the US.

3. Look at the ownership chain of title for the existing LASER trademarks. There are some breaks and the true owner may not be Velum at all. There may even be a possibility to claim that the LASER mark has effectively been abandoned for years.  An opposition filed by the ILCA to this latest registration attempt might turn out to uncover a bigger problem and ultimately shift ownership of all the LASER marks in the US to the ILCA. 

4. Look at Velum's previous attempts to register the service mark in the US and at Bruce Kirby's oppositions to the registrations. One of the oppositions is still pending which I assume prompted them to refile this recent application using a different specimen, trying a slightly different spin.  Velum argues that it has already licensed the trademark to the ILCA and then extensively detailed the ILCA's control over the entire Laser game.  Is there such a license?

5. Oh, and PSA, when you look at the Kirby oppositions you will find that the US Trademark Trial and Appeal Board has already ruled that the agreement signed previously, which prevented Kirby from ever contesting the marks, does not apply to this newly claimed use of the mark for services. It's fair game.  If the ILCA won't defend their right to the mark under a collective trademark or otherwise, then there may be angles PSA can exploit to claim a right in the service mark in the US.

Lastly, those of you in the EU.  Might already be time to bend over.  The service mark in the EU was filed at the same time, has already gone through the opposition period, and a registration certificate was issued on April 12, 2017. I wonder if the ILCA has already received a cease and desist letter asking them to pay a licensing fee to run Laser regattas in the EU.  Does any of this have a connection in why the charter fee is so steep for the Master Worlds in Croatia this year?  Surely not.

Kirby v. Laser Performance, et al.

by Pam

And we finally have a decision on the pending lawsuit ...

CONCLUSION

(of a 14 page Order from the Judge)

For the foregoing reasons, the motion for summary judgment by LPE and QMI (Doc. #186) and the motion for summary judgment by ILCA (Doc. #183) are GRANTED in light of my conclusion that plaintiffs Bruce Kirby and Bruce Kirby, Inc., have no standing to maintain their claims. The motion to dismiss by ILCA (Doc. #174) is DENIED as moot in light of the granting of its motion for summary judgment. The motion for summary judgment by counterclaim defendants Bruce Kirby and Bruce Kirby, Inc. (Doc. #180) as to several of the counterclaims asserted by counterclaim plaintiffs LPE and QMI is GRANTED in part (as to Counterclaims III and IV) and DENIED in part (as to Counterclaims V through IX). The motion for summary judgment by counterclaim defendant GSL (Doc. #184) against LPE and QMI is GRANTED in part (as to the claim of overpaid royalties for the Laser Radial and Laser 4.7) and DENIED in part (as to the claim of overpaid royalties for packaging).

But what does that mean ... basically, it appears the court is recognizing the sale of Bruce Kirby's intellectual property rights to Global Sailing and not recognizing the return of those rights to Bruce.  So, really it's just a passing of the torch (pun intended) to Global Sailing.  Global Sailing can now bring suit against Laser Performance and begin another 3 years of limbo for the Laser class. 

ILCA - Legal Mumbo Jumbo

by Pam

I rarely read the Sailing Anarchy forum these days but when I do I always get a quick read on the some of the questions being asked by the class members (and non-members). Things usually begin with a little speculation, then a few people throw in a couple of facts, then the speculation continues on this mixture of speculation and facts. 

It's like reading one of those historic fiction novels where you can't tell where history leaves off and someone's imagination kicks in.  Finally, I get frustrated and head to the Internet to look everything up for myself just to satisfy my curiosity. 


One of the questions recently was about the ILCA.  What kind of entity is the ILCA?  Where is the main office?  I did a little research and couldn't find a definitive answer but it appears the ILCA (or their attorneys) may be misrepresenting the organization in some legal documents.  I always start by following the patents and other legal documents.  Presumably, they'll want to be sure to get this stuff right:

SAIL PATENTS:

Radial Sail with Reinforced Luff Tube

US 8739721 - (US patent)  filed Dec. 9, 2010 and granted Jun. 3, 2014

WO 2012/076852  (PCT international application) filed Dec. 9, 2011 - will never grant

AU 2011340315 (PCT national application) - not a patent - it's still in examination

GB 2499751 (PCT national application) - not a patent - it's still in examination

 

Sail

US D664493 - (US design patent) filed Feb. 9, 2010 and granted Jul. 31, 2012

LASER CLASS ASSOCIATION, INC. d/b/a 

INTERNATIONAL LASER CLASS ASSOCIATION

In 2011, the US patents were assigned to the ILCA (UK address).  

In 2013, when the UK patent application was filed, the UK database indicated the ILCA is "incorporated in the United Kingdom"

In June 2013, the Texas Comptroller lists the name of the ILCA as "Laser Class Association Inc" and indicates it is a Texas non-profit corporation with offices in Austin, TX.  The formation documents at the Texas Secretary of State list the management as Tracy Usher, Hugh Leicester, and Andy Roy with Eric Faust being the organizer and registered agent for the LCAI.  The Assumed Name (the d/b/a or doing business as) documents list the International Laser Class Association as the d/b/a for the Laser Class Association Inc.

In December 2014, document 174 of the Kirby/LPE litigation has an Affidavit from Tracy Usher stating "ILCA is a self-administered, self-funded, non-profit international organization ... As of June 24, 2013, ILCA registered in Texas to become a non-profit corporation.  The name of the corporation is "Laser Class Association, Inc." but it still operates as the ILCA with its primary offices still located in Falmouth, Cornwall in the United Kingdom."

As of Septemper 13, 2015, the UK Land Registry shows Jeff Martin as the current Lessee of 51B Church Street, Falmouth, UK TR11 3DS but the lease also indicates the lease termination date was January 31, 2013.  Companies House has always been the 'go to' place to find information about a UK company and yet the ILCA isn't listed. 

It has been suggested on Sailing Anarchy that the ILCA is an Isle of Man company which doesn't have records that can be looked up to verify anything.  It has also been suggested on Sailing Anarchy that it is a British unincorporated association which isn't required to register anywhere so it can't be verified.  

Why would Jeff Martin have the lease for the UK ILCA office in his own name unless the ILCA really is an unincorporated association, as I believe those types of entities can't hold title to property?  It is my understanding that under British law, the Isle of Man is not part of the UK.  So, given the legal documents in place that have declared the ILCA to be a UK company, I'm leaning toward believing that it is an unincorporated UK association. 

If that assumption is true, then how can the ILCA hold title to the US patents (if a UK unincorporated association has no such right to hold title to personal property which is what a patent is)?  And how could it ever hope to enforce its rights in the US patents (since it would have no right to do so)?  So, why wouldn't the ILCA want the Texas non-profit corporation to hold title to the patents instead of the UK entity? 

So, I'm left with more questions than answers. I'm going to have to stop visiting Sailing Anarchy.  It makes my head hurt.

Update on Kirby/LPE Litigation

by Pam

Karaya LASER TM Cancellation Proceeding (92/057,167) TM for: SAILBOATS, AND PARTS AND ACCESSORIES FOR SAILBOATS - NAMELY, SPARS, BOOMS, CENTER BOARDS, RUDDER COVERS AND BOAT COVERS
10-Oct-14	Proceedings Terminated - contractual estoppel - the "Head Agreement" dated July 11, 1983 stated BKI "shall not at any time question or contest directly or indirectly the validity of the trademark ‘LASER’” and would not do any act “which would or is likely to invalidate the trademark ‘LASER’ in any country of the world . . . "
Velum LASER TM Cancellation Proceeding (92/057,217) TM (Service Mark) for: ORGANIZING SPORTING EVENTS, NAMELY, SAILING COMPETITIONS, AND REGATTAS; SAILING SCHOOLS
12-Oct-15	Plaintiff's Pretrail Disclosures
26-Nov-15	Plaintiff's 30-day Trail Period Ends
11-Dec-15	Defendant's Pretrial Disclosures
25-Jan-16	Defendant's 30-day Trial Period Ends
09-Feb-16	Plaintiff's 15-day Rebuttal Disclosures
10-Mar-16	Plaintiff's 15-day Rebuttal Period Ends
Kirby v. LP Lawsuit (3:13-cv-00297)
Parties:	BKI - Bruce Kirby, Inc. (Plaintiff-Counterclaim Defendant) BK - Bruce Kirby (Plaintiff-Counterclaim Defendant) LPE - LaserPerformance (Europe) Limited (Defendant-Counterclaim Plaintiff) QM - Quarter Moon, Incorporated (Defendant-Counterclaim Plaintiff) ILCA - International Laser Class Association (Defendant) GSL - Global Sailing Limited (Additional Counterclaim Defendant) PSA - Performance Sailcraft Pty. Ltd. (Additional Counterclaim Defendant) - DISMISSED 11-20-14 KL - Kayara (Jersey) Limited (Defendant) - DISMISSED 2-27-14 - lack of personal jurisdiction VL - Velum Limited (Defendant) - DISMISSED 2-27-14 - lack of personal jurisdiction ISAF - International Sailing Federal Limited (Defendant) - DISMISSED 2/27/14 - lack of personal jurisdiction FR - Farzad Rastegar (Defendant) - DISMISSED 2/27/14 - failure to state claim
Pending Motions	174 Motion to Dismiss by ILCA 180 Motion for Summary Judgment by BK, BKI 183 Motion for Summary Judgment by ILCA 184 Motion for Summary Judgment by GSL 186 Motion for Summary Judgment by LPE, QM
18-Sep-15	2:00 PM Hearing on 174, 180, 183, 184, 186 motions

Update: 9-18-15 Minutes

What's Going on with Kirby v. LPE?

by Pam

Everyone keeps asking and the people that know aren't talking. I don't have any insights but every time I go to check the status, it takes me too much time to find everything again. So, the below case headings are links that will take you to the public data available. I've summarized what I saw as coming up but if I have it wrong, please correct me.

The trademark cancellation stuff is all public and it's just a matter of understanding the cancellation process. Looks like everything is proceeding along.

The lawsuit is quasi public and from my calculations a Joint Status Report is due on August 24th which should shed some light on how things are going and whether there was any progress in the mediation. A few of the parties have been dismissed.  A couple more are trying to get dismissed. It's all moving very slow.

Karaya LASER TM Cancellation Proceeding (92/057,167)
30-Aug-14	Plaintiff's 30-day Trial Period Ends
14-Sep-14	Defendant's Pretrial Disclosures
29-Oct-14	Defendant's 30-day Trial Period Ends
13-Nov-14	Plaintiff's Rebuttal Disclosures
13-Dec-14	Plaintiff's 15-day Rebuttal Period Ends
Velum LASER TM Cancellation Proceeding (92/057,217)
19-Aug-14	Discovery Closes
03-Oct-14	Plaintiff's Pretrial Disclsoures
17-Nov-14	Plaintiff's 30-day Trial Period Ends
02-Dec-14	Defendant's Pretrial Disclosures
16-Jan-15	Defendant's 30-day Trial Period Ends
31-Jan-15	Plaintiff's Rebuttal Disclosures
02-Mar-15	Plaintiff's 15-day Rebuttal Period Ends
Kirby v. LP Lawsuit (3:13-cv-00297)
Parties:	BKI - Bruce Kirby, Inc. (Plaintiff-Counterclaim Defendant) BK - Bruce Kirby (Plaintiff-Counterclaim Defendant) LPE - LaserPerformance (Europe) Limited (Defendant-Counterclaim Plaintiff) QM - Quarter Moon, Incorporated (Defendant-Counterclaim Plaintiff) ILCA - International Laser Class Association (Defendant) GSL - Global Sailing Limited (Additional Counterclaim Defendant) PSA - Performance Sailcraft Pty. Ltd. (Additional Counterclaim Defendant) KL - Kayara (Jersey) Limited (Defendant) - DISMISSED 2-27-14 - lack of personal jurisdiction VL - Velum Limited (Defendant) - DISMISSED 2-27-14 - lack of personal jurisdiction ISAF - International Sailing Federal Limited (Defendant) - DISMISSED 2/27/14 - lack of personal jurisdiction FR - Farzad Rastegar (Defendant) - DISMISSED 2/27/14 - failure to state claim
07-Aug-14	Disclosure of Opening Expert Reports due Prefiling Conference Request for Dispostive motions (if any) due
24-Aug-14	Joint Status Report due
29-Aug-14	Damages Analysis due
04-Sep-14	Rebuttal Experts Reports due
15-Sep-14	Trial Brief due
22-Sep-14	Discovery due
Oct. 2014	Mandatory Settlement Conference
20-Oct-14	Trial Ready Date

You Just Can't Keep an Old Dog Down

by Pam

A few days ago we had a guest post from a life long Laser sailor. Actually, it was a open letter to the ILCA and a show of support for Bruce Kirby. Given the litigious nature of our society, our guest poster had a change of heart and asked us to take the post down. 

I get it. He's right. About society and about Bruce Kirby. Since we support Bruce's cause 100% (and I really liked the picture I found of a determined old dog) and since we really don't like the way the ILCA, the ISAF and Rastegar have treated Bruce, we still want to show our support.

Well, I've been under the weather for the last few days and didn't even know until now that the post had been taken down. My throat was killing me and I pulled out a package of Halls drops that I had purchased some time ago. I opened the first one, barely able to lift my head, and noticed writing on the wrapper. It read 'Dust off and get up' and I, unable to speak and feeling like dog do-do, quietly thought of a curse word. With every drop, I read yet another "pep talk in every drop.'  So, Bruce Kirby, we support you with the politically correct, Halls 'pep talk in every drop:'

Dust off and get up

Conquer today

It's your's for the taking

Be resilient

You've survived tougher

Don't waste a precious minute

The show must go on.  Or work.

Don't give up on yourself

Tough is your middle name

Flex your "can do" muscle

Nothing you can't handle

Don't try harder.  Do harder!

March forward!

Keep your chin up.

Go for it

Get through it

Put your game face on

Seize the day

There were many more but that was enough drops to get me out of bed and back in action. Give 'em hell Bruce!

Public Offshore Leaks Database

by Pam

The ICIJ (International Consortium of Investigative Journalists) have made their Offshore Leaks Database available to the public (story here).  You can search for free or download the entire thing. Every page has a place where you can report anything you find that you would like them to investigate further.  They have even provided a five minute video tutorial to make it super easy to learn how to use the database:  http://offshoreleaks.icij.org/

I've actually been keeping up with this because when I was researching the web of entities that surround the Laser game and Farzad Rastegar, many crossed through offshore entities where little, if any, information could be found.  The leaks database is not complete and there are many legitimate businesses with offshore accounts.  The ICIJ is essentially asking the public to search what we know and connect any dots we can and then bring it to their attention (confidentially) so that they can investigate further.  Naturally, I searched the web of entities surrounding the Laser game but came up empty. I did not search variations of names and they freely admit that there are plenty of typos in the data.  Perhaps others with more time, energy, and perhaps inside knowledge will have a better shot. For the record, below is the web of jurisdictions, entities, and addresses that I had previously located and I'm the first to admit that it is most likely incomplete. 

Jurisdictions:  British Virgin Islands, Ireland, Jersey (Channel Islands), Siwtzerland, Hong Kong, Antigua and Barbuda.

Names: Farzad Rastegar; Spring Meadow Holding Limited; Karaya Holdings Limited; Karaya (Jersey) Limited; Velum Limited; Armon Limited; Sina Holdco Limited; Quarter Moon, Incorporation; Full Moon Holdings Limited; Dory Ventures LLC; Sina Holdco; Meywin; LaserPerformance LLC; SailLaser LLC; LaserPerformance Sail; Sport LLC; Vanguard Sailing Center; Vanguard Sailboats; Vanguard Racing Sailboats; Garda Company LLC; American Baby Products, Inc. f/k/a Maclaren USA, Inc.; Excelsior Testa LLC; Excelsior Property Holdings LLC; Maclaren N.A., Inc.; Maclaren Services, Inc.; LaserPerformance (Europe) Limited; SailLaser Limited; Maclaren Europe Limited; Ronson Limited; Ronson International Limited.

Addresses: Mill Mall, P. O. Box 964, Road Town, Tortola, British Virgin Islands; 17, rue du Cendrier, PO Box 1699 CH-1211, Geneva 1, Switzerland; 14 Conway Street, St. Helier, Jersey; 300 Highpoint Avenue, Portsmouth, RI 02871; 200 Highpoint Avenue, Portsmouth, RI 02871; 4 Testa Place, S. Norwalk, CT 06854; 25 Van Zant Street, Norwalk, CT 06854; Station Works, Station Road, Long Buckby, Northampton, Northamptonshire NN6 7PF

Rule 14

by Pam

Dear ISAF, 

Please remember Rule 14 when you meet in Copenhagan at the ISAF mid-year meeting.  Here is a reminder.

For those of you with more time on your hands than me ... the live stream of the meeting will be available from 07:00-15:00 (UTC) (09:00-17:00 local time) on Saturday 11 May on: www.sportsxstream.com/isafmeeting2013

Laser Trademarks Up for Grabs?

by Pam

I originally wrote this back in November but took it down the next day to wait for a more appropriate time.  

As noted in my LaserPerformance United Unions post, Rastegar has quite the maze of confusingly incestuous entities.  It appears that he lost track and the result is that he may very well have lost some of the trademarks for LASER, SUNFISH, VANGUARD, ZUMA, RED DRAGON and NOMAD. 

Quarter Moon Inc. d/b/a Vanguard Sailboats sold several trademarks to Karaya Holdings Limited, an Irish entity, which then transferred the trademarks to Karaya (Jersey) Limited, a Jersey Island entity.  Seems fairly straight forward except that some errors in the transfer to the Jersey entity makes it questionable that the last transfer is valid which leaves everything still in the name of the Irish entity which is now dissolved.  Whether or not the errors can be papered behind to salvage ownership of the marks may have to be determined by a court of law.

So, to be specific on the errors, check for yourself.  Here is the Vanguard to Karaya Irish assignment and here is the Karaya Irish to Karaya Jersey assignment.  Look closely at the supporting document of the second assignment.  It’s just a name change from Karaya Jersey’s former name, Dorsal, to its current name.  Did you catch the error?  Who cares what the former name of Karaya Jersey is when it is Karaya Irish that owns the trademarks.  Note that the assignment was trying to go from an Irish company to a Jersey company and submitted a Jersey name change as evidence of assignment.  Even the US Patent and Trademark Office (USPTO) didn’t catch this error and incorrectly lists Karaya Jersey as the current owner.

So then, being curious, I pulled the publicly available paperwork for Karaya Irish to see if I could determine if they properly conveyed the trademarks to Karaya Jersey which would mean an easy filing with the USPTO to correct things.  What I found was that the paperwork did indeed list the conveyance to Karaya Jersey but they listed the transfer as of January 1, 2009.  If you go back and look at the name change document they filed with the USPTO, you’ll see that the name change from Dorsal Irish to Karaya Irish didn’t happen until February 23, 2009.  Meaning, it could maybe be argued that the trademarks were conveyed to an entity that wasn’t yet legally in existence.

But then the icing on the cake is that the Karaya Irish entity, which, at present, may be the last entity to hold clear title to the trademarks, was dissolved on October 22, 2010.  That might be a problem.  Hard to paper behind something when the conveyance was hosed up and the entity that needs to correct it is dead. 

Confused?  Easy to see how they lost track of which door the trademarks were hiding behind.  Doug drew the diagram above to make it simple.  It didn’t help matters that they had two Karaya entities and two Dorsal entities, a pair of each in each country, and in Jersey one became the other but in Ireland they remained separate and then 2 were dissolved, leaving only 1.  That’s just plain jacked up.

The LASER marks owned by Karaya that are possibly up for grabs are in the classes of goods that include sailboats and sails.  LP has another foreign entity, Velum Limited, that owns the LASER marks that secure the class of services that includes regattas.  And that registration is jacked up too. 

Most people have heard about the critically received 8 year deal that LP secured with the US Inter-Collegiate Sailing Association to use LP manufactured boats exclusively for all national and semi-final college championships.  After securing such a deal, I predicted back in November that the ILCA would be influenced to go in the direction of following through with their fundamental rule change, which they did.  I mean from a business point of view, LP has the LASER trademarks and the 8 year exclusive deal with ICSA.  That seems like a fairly strong bargaining position.

But, let’s think about this.  If LP entities don't have clear title to the trademarks, can that be used to invalidate the 8 year exclusive agreement?  And, really, LP doesn’t even own the trademarks.  I mean, we all know that some how, some way, Rastegar is the ultimate owner but the ILCA’s fundamental rule change indicates that the manufacturer has to have trademark rights.  Legally, LP doesn’t own the trademarks but the ILCA doesn't elaborate on what 'trademark rights' means. But what if the LASER trademarks are totally up for grabs?

Then I found this very interesting post about why trademark holdings companies are a bad idea.  Skip down to the section titled: Legal Pitfalls of Licensing through Trademark Holding Companies:

"One of the defenses mounted ... for invalidity is that the licensor holding company doesn’t exercise sufficient control over its licensees. Rather, they argued, control is exercised by the holding company’s parent corporation and the holding company has therefore made a “naked license.” The remedy for a naked license is for the court to declare that the trademark in question was abandoned by the trademark owner."

Hmmm.