An important announcement from MLS at AV123 (1 Viewer)

[Larry B]

Ted:

It is just too common a word to be trademark-able.

Since you state this with absolute certainty, I must assume that you are familiar with trademark law.
However, my understanding is that to trademark a name, you do NOT have to be the first to use the name, only the first to use the name in relation to a particular product. For example, I believe "McDonald's" is a trademark, even though the name McDonald obviously existed before the McDonald folks started making hamburgers.
If you prefer to believe that this is meritless case, even though at least two companies are altering their product lines because of it, you are free to do so. I on the other hand, would prefer to know the facts before reaching a conclusion.
Larry

 

[Larry B]

Ted:

If it is not "quite that cut and dried" I am going to
trademark "French Bread", "Italian Bread", "cucumber", "tomato", etc. and start suing the dirty so & so-s who are infringing on my trademark.

As I understand it, a trademark cannot contain within it the nature of the product. Thus, you cannot name your new computer company "Software" and expect to trademark the name. On the other hand, you could probably trademark the name "Ted's Consulting."

Please understand that these issues are dictated by law, not by our passions.

Larry

 

[Larry B]

Felix:

copyright infringement

Copyrights have to do with printed material (books, for example). It is thus unlikley that copyrights have anything to do with the composition of the tweeter.

Larry

 

[Ted Todorov]

Larry,

In that case, since you don't have to be the first, I'll go and start trademarking common food items.

I am not in any way arguing over what the law says, I haven't a clue. I am arguing about common sense. There were, are and alas always will be stupid laws.

Unfortunately, their stupidity and thus un-enforceability can not be demonstrated without someone with enough time and money taking them to their logically absurd conclusion, in this case trademarking commonly available items and demanding from everyone else that they stop selling them or pay a tribute.

Ted

 

[Larry B]

Ted:

The last thing I want to do is fight with you, but I just don't understand why you think the relevant laws are stupid. I realize that the demise of the Diva line inconveniences many people, but that does not in and of itself make the laws stupid or unfair.

I have to go now, so allow me to wish you, and everyone else, a happy and safe holiday.

Regards,

Larry

 

[Doug BW]

I certainly do not have much knowledge in the area of trademark laws, but it may be relevant that there already exists (or existed) a brand of speakers that used the name Diva...the Apogee Diva.

I think part of the reason for trademark laws is to keep companies from naming their products in such a way that a consumer may become confused and buy the wrong product. So there isn't really a trademark problem between Stratus Computers and the Dodge Stratus....most people can tell the difference between a car and a computer. However, try to manufacture a computer and use the common word "Apple" as its name.....

 

[Alex Prosak]

Larry,

When I said that the original rectangular box speaker manufacturer should go after every other rectangular box speaker since I was meaning their "trade dress" not patent. I'm just trying to illustrate that I think the whole thing is petty and to what extremes some issues can be taken too. Again, I don't know the specifics and I could be completely off base.

 

[SkiingNinja]

Just a couple of things here...
We were assured by the Swans people that the Diva name was indeed their own. Well, as we know now, it isn't.
Yes, this is a trade dress issue and not a patent issue. Personally, I find it absurd...as another posted pointed out, I could just go and say that a speaker with a cabinet mounted tweeter is my design and everyone else infringes on my trade dress. Just silly of course...
Please let me know if I miss anyones questions...so many questions on so many forums...so little time!
I'm available via phone and e-mail as well for anyone who wants to chat.
Sean

 

[Magpile]

Seems like the Onix Rockets has been in planning for a long time. That threat of lawsuit must have been in place for quite a while. How come the snoops in the competing company didn't leak this out to us?

Heck, Magneplanar sued the pants out of Apogee on their ribbon tweeter patent and put those copy cats outta business. So if Dr Bose is 100 years old, you better watch out on his lawsuit on his box speaker design. Realistically, who would want to copy on Bose's design and infringe his patents?

So is AV123 like GM with its shell child companies? Moving designs and finished products left and right between Perpetual Tech, Onix and Diva?

 

[EricHaas]

I have more than a passing familiarity with intellectual property law here in the U.S. Although I think it reasonable to withhold one's opinion without a complete knowledge of the facts, there are certain aspects of this issue which trouble me.

First of all, as we all now understand, B&W has no patent on putting a tweeter on top of a cabinet. Rather, B&W has threatened suit against AV123 (and perhaps other companies) based upon a theory of trade dress.

Trade dress is a facet of trademark law. Basic trademark protection is for product names and logos. Trade dress extends trademark protection to the manner in which a product is packaged and presented.

To be protected by trade dress, an aspect of a product must be unique. A perfect example is the old glass Coca Cola bottle. It had a unique shape that was not a common geometric shape.

The second element that must be satisfied for trade dress protection is that the product aspect must be *purely* cosmetic. It *CANNOT* be functional. This is critically important, because the functional aspects of products are already protected by patent law. Where no patent has been acquired, or where a patent has expired (after 17 years), there is no protection for the functional design of a product. Permitting the protection of functional aspects of product design under a trade dress theory would effectively provide "back door" patents to the manufacturers. And these de facto patents would be of *unlimited duration*, as trademarks and trade dressings, unlike patents, never lapse unless the manufacturer ceases to market the product for a long period of time. This would stifle innovation to an immense degree. If that doctrine had been applied historically, the state of loudspeaker design would be way behind what it is now.

Here, we have this issue of where a tweeter is placed, and apparently B&W argues that it can forever prevent any other speaker manufacturer from putting a tweeter on top of a cabinet because aside from the sonic reason to do so, it also would make the speaker look similar in a certain way to its own. This argument simply is not valid under trade dress doctrine, and its long term consequences would be terrible for the industry.

Presumably, B&W has argued that there are other cosmetic similarities besides the tweeter, such as the shape of the enclosure. However, the shape of an enclosure undeniably has a functional purpose as well. What do a Coca-Cola bottle and a speaker enclosure NOT have in common? That's easy: the enclosure shape effects the quality of the sound, but the bottle shape presumably does NOT affect the taste of the Coke. One is purely cosmetic and the other is not.

The only aspect of speaker design that argubaly would *not* be functional would be its finish. However, finishes are not protected by trade dress either because they are not unique (See above; it would be like trade dressing a color.)

We can speculate that B&W's claims must have merit because other speaker companies have changed their practices. However, in my experience, IP laws are often used to leverage a competitive advantage even where the claims have little merit. In fact, this is as often true as not when these lawsuits are threatened.

In most cases, it is simply more economical to change the product than to litigate the issue. I'd be very surprised if that isn't what happened here.

 

[SkiingNinja]

So is AV123 like GM with its shell child companies? Moving designs and finished products left and right between Perpetual Tech, Onix and Diva?

Not quite...
AV123 and Perpetual Technologies are the same company.
Swans is the speaker company that we purchased the Diva speakers from. We are just a distributor.
Onix is another seperate company that Mr. Pu owns (a partner of Mark's).
I hope that helps
Sean

 

[Brett Miles]

First, I would like to say that I find this whole issue/discussion quite interesting (while also sucking big time as a Diva owner), and I thank the participants for their legal explanations. We've apparently established that B&W does not have a patent on the top-mount tweeter; my question is WHY NOT? I've also seen mentioned a number of companies that should be effected by this, but Norh has not been one of them. Could this be another well-reviewed, internet-only design also on the chopping block?

 

[ling_w]

Swans is the speaker company that we purchased the Diva speakers from. We are just a distributor.

Onix is another seperate company that Mr. Pu owns (a partner of Mark's).

How does this make out? Onix is a british company. Swan is owned by this other company in China. How did all the designs of Swan all of a suddenly migrate to a completely unrelated company? Next thing, I am going to see Outlaw subwoofers.

BTW, will Swan's subwoofer migrate to the Onix liine?

 

[rodneyH]

Eric, I would agree, my guess is that B&W has a fairly large budget for attorneys and it is not worth the trouble to fight it. This is VERY VERY common in Law. And I appluad the people at AV123 that they are acting pro-actively, instead of fighting and having a small possiblity of loosing everything (we all know that our legal system or international legal systems can not be trusted 100%). So, even as a huge B&W owner and fan, I applaud AV123 for being straight up with its customers.

. "So if Dr Bose is 100 years old, you better watch out on his lawsuit on his box speaker design. Realistically, who would want to copy on Bose's design and infringe his patents?"

I think Bose just sued JBL last year based on their port design (and JBL should have some HUGE financial backing), and caused JBL to completely re-do the design.

 

[EricHaas]

"We've apparently established that B&W does not have a patent on the top-mount tweeter; my question is WHY NOT?"

Good question. Perhaps they did have one and it is expired. Anyone know how long B&W has been putting tweeters on top of cabinets?

Also, requirements for patenting something are somewhat stringent. It really has to be something new, and cannot be derivative of anything already out there. I would assume B&W would have a patent if it were possible.

 

[Roberto Carlo]

In most cases, it is simply more economical to change the product than to litigate the issue. I'd be very surprised if that isn't what happened here.

Thanks for the excellent explanation of the issues, Eric. If only my law school professors had been half as succinct as you were.
One of the things that we A/V enthusiasts lose sight of is just how small many of these companies that we read about actually are. I have no particular knowledge, but it wouldn't surprise me to learn that AV123 has smaller annual sales than my family's tile and marble business in Miami.
That being the case, defending a lawsuit, regardless of the merits, which I have no opinion on, can make the difference between being profitable or not. I feel for Sean and company; it's a bad set of options, but they made the only viable choice.

 

[Allan F]

Eric,
Thank you for the description provided above. This certainly helps to promote (at least my) understanding of the issue.

Allan

 

[SkiingNinja]

How does this make out? Onix is a british company. Swan is owned by this other company in China. How did all the designs of Swan all of a suddenly migrate to a completely unrelated company? Next thing, I am going to see Outlaw subwoofers. BTW, will Swan's subwoofer migrate to the Onix line?

Thanks for writing. Swans did not own the design. Mark contacted the originators/inventors of the design and they are now building for us.
No, no Outlaw subs
The Swans sub was rejected by us because it did not meet our standards...
There will be a Rocket sub...or two...
Sean

 

[felix_suwarno]

confusing. swans didnt own the design. so what did they do? they didnt even sell the divas, av123 did.

 

[Jonathan K]

Okay, Swan Speakers, owned by Hi Vi Research, is pretty much the biggest speaker company in China, okay? Now, they came up with the basic design for the Diva speakers (apparently, not entirely originally...), which av123.com improved upon and sold internationally. When some bad stuff happened, (apparently, Swan lied to av123.com about a few things, like the Diva name), and B&W started threatening -- and taking -- legal action against anyone who did a top mounted tweeter like that, av123.com took a look at their position. What would you do if you were them? Your supplier didnt have the best relationship with you, a big huge gigantic company was breathing down your back, with enough money to make you go bankrupt even if they DONT win the case, just through lawsuits, how would YOU fix those problems? Av123.com made a good choice -- they simply made a better set of speakers without these problems, and are now selling them *themselves*. They get out of trouble, and everyone gets a nice new, inexpensive, VERY kickass line of speakers to buy.