So, Monster Cable is known for making some...interesting claims with regard to how special their cables are (not always so special) and employs lawyers to send fancy letters to unsuspecting companies that make special cables, too.
Generally, they claim that Company X has infringed upon one of their patents by making cables that might in some way look like Monster's but aren't the same, and hopes that the threat of litigation will compel a settlement, and a licensing agreement. This tends to work when the company on the receiving end is easily intimidated.
Not this time.
a manufacturer of high-end (and American made) audio equipment. What they didn't know is that their CEO is an attorney who graduated from UPenn Law School and spent almost two decades in litigation.
to have made it to Slashdot. After systematically deconstructing Monster's claim as frivolous and making it quite clear how unenforceable it is, he lets them know they have messed with the wrong guy, he's mad as hell, and he's not going to take it anymore! First off, he starts by completely deconstructing Monster's claims as facially insufficient for well, anything, and notes that the information they've supplied him with is completely inadequate for him to figure out if he's actually infringed:
I
will begin by addressing your trademark/trade dress claim. You have referred to two trademark
registrations, and have attached some printouts from the USPTO system but the
depiction of the marks on the drawings provided is small and indistinct, making
it difficult to determine exactly what the alleged resemblance is, and I need
further information from you.
First,
I need legible, scale drawings of the marks, preferably with dimensions shown
on the drawing. To the extent that
drawings are inadequate to show the nature of materials, finishes, print
legends, colors and the like, I will also need examples of each of Monster Cable's
actual uses of these marks in commerce; actual physical examples would be best,
but photographic reproductions might do.
As you will understand, these considerations are essential to any claim
arising out of trade dress, as you are alleging in essence that there is a
resemblance sufficient to cause confusion over the identity or origin of the
goods, and no mere line-drawing can suffice.
Second,
I will need copies of the trademark applications and any correspondence between
the applicant and the USPTO in support of the applications.
Translatation: Prove it.
Third,
you have not identified the Monster Cable products in question, in actual use
and distribution in commerce, whose trade dress you allege has been
appropriated. I have reviewed Monster
Cable's online materials and have examined connectors on various Monster Cable
assemblies in local retail outlets and am unable to determine which, if any, of
these are thought by Monster to represent use of these particular marks. I am also unable to determine from this
review whether Monster Cable actually offers any product for sale to which the
Tartan connectors are alleged to be particularly similar. My own sense of it, in looking at the
connectors, has been that there is no similarity between the Tartan connectors
and any of the many Monster Cable connectors beyond the general functional and conventional characteristics
which all or nearly all solder-cup, mechanical-assembly, barrel-style RCA-type
connectors share. It may be that there
is some line of products to which you have intended to refer but which I have
not found in Monster Cable's marketing materials or displays; but if so, you
will need to show me specifically what product it is, and you will need to call
to my attention the specific aspects of the connector design which you contend
constitute unique Monster Cable trade dress, what the associated secondary
meaning of those aspects of the trade dress is, and in what manner and by what
characteristics you allege that this trade dress has been appropriated.
Fourth,
if the dimensional characteristics of the connector as used in commerce vary
from the dimensions of the scale drawing of your mark, I will need a proper
scale drawing, with dimensions, of each version of the actual connector as used
in commerce, as well as photographs of the connectors showing actual in-use
finishes. If there is more than one
such connector design in actual use by Monster Cable as to which appropriation
of trade dress is alleged, of course, I will require this information for each
and every such design.
On
the basis of what I have seen, both in the USPTO documents you have sent and
the actual appearance of Monster Cable connectors which I have observed in use
in commerce, it does not appear to me that Monster Cable is in a position to
advance a nonfrivolous claim for infringement of these marks. There simply is not sufficient resemblance
between the Tartan connectors and any mark or any example of the marks' actual
use that I can find to support such a claim.
But if you have further information for me on that point, you are
welcome to submit it.
Translation: You cannot be serious, but go ahead. I dare you.
You
have also supplied me with partial documentation on five design patents which
you claim these connectors infringe. I
will begin by observing, first, that the five design patents are so very much
unlike one another that it is very hard to imagine that any product could
actually infringe more than one of them at a time; anything close enough to one
of them to be deemed an infringement would, by that fact alone, be too
dissimilar from the other four. The
dissimilarity of the Tartan connector from each of them is readily evident.
I
should add that, for the purpose of this letter, I am assuming that these
patents are valid. This is in no way a
concession of the point. In fact, this
is a very significant and likely inaccurate assumption, and you should expect
the patentability of these designs to be under attack if you commence an action
for infringement.
Translation: I'm keeping a straight face, but if you really want to dance, let's dance.
For his next trick, he proceeds to rip apart Monster's "patents" even more. By this time, the lawyers have to wonder what is going on...
My
sense, in looking at these five patents, is that either you are attempting to
present some argument that I simply do not understand or you are arguing for
untenably broad coverage of these patents which would sweep every functional
aspect of the typical solder-assembly RCA connector within the scope of a
handful of mere design patents. You need
to clarify this, and frankly, I think you need to indicate to me which, if any,
of these patents you actually contend are relevant to the present
discussion. It cannot possibly be that
you believe that more than one of these patents is pertinent, and if you insist
that they are, we cannot have an intelligent dialogue on this subject. Once you have identified the patent which
you contend is relevant, I need to see
the file history and the references to prior art; I need copies of the
applicant's correspondence with the USPTO; and I need a clear and cogent
explanation from you as to exactly what aspects of the Tartan connector design
are alleged to constitute the infringement, and how.
Additionally,
if you are able to identify any of these patents as applicable, please let me
know whether Monster Cable presently sells, or has at any time sold, any
products bearing connectors which are in conformity with the patent drawings or
which are otherwise contended to be within the coverage of the patents, and
identify those products for me. Please
also provide photographs and/or physical examples of these connectors as
manufactured and sold.
Also, please provide me all of the information
referenced above as it relates to your expired patent D323643, a copy of which
I am attaching. I will need to know what
products Monster now offers or at any time has offered for sale which were
believed to fall within the scope of D323643, and what claims, if any, of
infringement of D323643 were made against others by Monster, whether those
claims of infringement took the form of correspondence only, litigation, or
otherwise. Please let me know which, if any, products Monster has ever sold
or offered for sale which were marked with the patent number, or other reference,
to D323643. Please also advise me whether, in your view,
the Tartan connector does or does not fall within the scope of D323643, and if
it is your view that it does not, please identify each and every difference
between the Tartan connector and the connector represented by D323643 upon
which your view is based. (On that note,
let me point out to you that the "turbine cut" feature is irrelevant
here as your client makes only functional, not design, claims for that feature
in its marketing materials for the product.)
I would assume that you would agree with me that if the Tartan connector
is less dissimilar from the D323643 patent than from any of the five patents
you cite in your letter, then the Tartan connector is within the coverage of
the prior art and cannot, as a matter of law, infringe any of your client's
current patents.
I
must also point out that unless there is a good deal of background information
you have not provided me which makes the case otherwise, Monster Cable cannot
possibly square its patent infringement claim(s) with its own patent
history. Two views of the matter might
be taken; the first, which is my view, is that none of the design patents,
including D323643, encompass the Tartan connector. If that is so, of course, the claim for
infringement fails. But if one grants
the sort of breadth to these patents that you appear to wish to do, a problem
arises for Monster. D323643 is the least
dissimilar to the Tartan connector of any of the patents, and stands as an
obstacle to any claim of infringement of the others because it establishes
prior art; if its scope, like the others, is granted the breadth you argue for,
then the Tartan connector falls plainly under the prior art and cannot
constitute an infringement of the later, and more dissimilar, patents. Read the patents narrowly, and Monster loses;
read them broadly, and Monster loses.
You are welcome to point out any error in my reasoning; but I have to
say that I will be unreservedly surprised if you are successful in doing so.
Please
also let me know whether Monster Cable or any related entity has brought
actions to enforce any of the patents and trademarks referenced in your letter
or above, and provide me with the jurisdiction, court and docket information
pertaining thereto, along with copies of any decisions or judgments resulting
therefrom. If any such litigation
proceeded through discovery, I will need all discovery responses, including
document production, issued by Monster, as well as copies of any and all
depositions taken and the exhibits thereto.
Translation: I Double Dog Dare You!!! Let's go!!!
Oh, and here's my favorite part when he insinuates that Monster operates an illegal tax shelter (probably true):
Further,
if any of these patents or trademarks has been licensed to any entity, please
provide me with copies of the licensing agreements. I assume that Monster Cable International,
Ltd., in Bermuda, listed on these patents, is an IP holding company and that
Monster Cable's principal US entity pays licensing fees to the Bermuda
corporation in order to shift income out of the United States and thereby avoid
paying United States federal income tax on those portions of its income; my
request for these licensing agreements is specifically intended to include any
licensing agreements, including those with closely related or sham entities,
within or without the Monster Cable "family," and without regard to
whether those licensing agreements are sham transactions for tax shelter
purposes only or whether they are bona
fide arm's-length transactions.
Now, what Monster could not have known was that this guy was a highly trained and experienced litigator in a previous life, and the ending paragraphs of this response are absolutely the most priceless thing I've ever seen in my life and I assume have caused a few changes-of-underwear at Monster. Translation: You've f*cked with the wrong guy, buddy. You wanna play rough? I'll play rough!
I
have seen Monster Cable take untenable IP positions in various different
scenarios in the past, and am generally familiar with what seems to be Monster
Cable's modus operandi in these
matters. I therefore think that it is
important that, before closing, I make you aware of a few points.
After
graduating from the University of Pennsylvania Law School in 1985, I spent
nineteen years in litigation practice, with a focus upon federal litigation
involving large damages and complex issues.
My first seven years were spent primarily on the defense side, where I
developed an intense frustration with insurance carriers who would settle
meritless claims for nuisance value when the better long-term view would have
been to fight against vexatious litigation as a matter of principle. In plaintiffs' practice, likewise, I was
always a strong advocate of standing upon principle and taking cases all the
way to judgment, even when substantial offers of settlement were on the
table. I am "uncompromising"
in the most literal sense of the word. If
Monster Cable proceeds with litigation against me I will pursue the same
merits-driven approach; I do not compromise with bullies and I would rather
spend fifty thousand dollars on defense than give you a dollar of unmerited
settlement funds. As for signing a
licensing agreement for intellectual property which I have not infringed: that
will not happen, under any circumstances, whether it makes economic sense or
not.
I
say this because my observation has been that Monster Cable typically operates
in a hit-and-run fashion. Your client
threatens litigation, expecting the victim to panic and plead for mercy; and
what follows is a quickie negotiation session that ends with payment and a
licensing agreement. Your client then
uses this collection of licensing agreements to convince others under similar
threat to accede to its demands. Let me
be clear about this: there are only two ways for you to get anything out of
me. You will either need to (1) convince
me that I have infringed, or (2) obtain a final judgment to that effect from a
court of competent jurisdiction. It may
be that my inability to see the pragmatic value of settling frivolous claims is
a deep character flaw, and I am sure a few of the insurance carriers for whom I
have done work have seen it that way; but it is how I have done business for
the last quarter-century and you are not going to change my mind. If you sue me, the case will go to judgment,
and I will hold the court's attention upon the merits of your claims--or, to
speak more precisely, the absence of merit from your claims--from start to
finish. Not only am I unintimidated by
litigation; I sometimes rather miss it.
I will also point out to you that if
you do choose to undertake litigation, your "upside" is tremendously
limited. If you somehow managed, despite
the formidable obstacles in your way, to obtain a finding of infringement, and
if you were successful at recovering a large licensing fee--say, ten cents per
connector--as the measure of damages, your recovery to date would not reach
four figures. On the downside, I will
advance defenses which, if successful, will substantially undermine your future
efforts to use these patents and marks to threaten others with these types of
actions; as you are of course aware, it is easier today for your competitors to
use collateral estoppel offensively than it ever has been before. Also, there is little doubt that making
baseless claims of trade dress infringement and design patent infringement is
an improper business tactic, which can give rise to unfair competition claims,
and for a company of Monster's size, potential antitrust violations with treble
damages and attorneys' fees.
I
look forward to receiving the information requested and will review it promptly
as soon as it is received.
Sincerely,
Kurt
Denke
