Not long ago we reported that Monster Cable had issued a cease and desist letter to Blue Jeans Cable about their Tartan cables. Little did the lawyer drones over at Monster know that Kurt Denke, the president of Blue Jeans was, in a former life, a lawyer by trade. Oops! Someone pushed around the wrong "small" company! While we are no legal experts, we recognize humor when we see it. And this is funny. With Blue Jeans Cable's permission, we've included their full response to Monster's letter below. We even discussed it before its release on AV Rant. Kurt wants to keep this entire process completely open to the public and we're more than happy to oblige. Enjoy.
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RE: Yourletter, received April Fools' Day
Dear Monster Lawyers,
Letme begin by stating, without equivocation, that I have no interest whatsoeverin infringing upon any intellectual property belonging to Monster Cable. Indeed, the less my customers think myproducts resemble Monster's, in form or in function, the better.
Iam evaluating your claim that the connectors on certain Tartan brand productsinfringe Monster's design patents and trademarks. However, the information supplied with yourletter is plainly inadequate to support a claim of infringement and so I amwriting to you to ask for further information and clarification regarding yourclaims.
Iwill begin by addressing your trademark/trade dress claim. You have referred to two trademarkregistrations, and have attached some printouts from the USPTO system but thedepiction of the marks on the drawings provided is small and indistinct, makingit difficult to determine exactly what the alleged resemblance is, and I needfurther information from you.
First,I need legible, scale drawings of the marks, preferably with dimensions shownon the drawing. To the extent thatdrawings are inadequate to show the nature of materials, finishes, printlegends, colors and the like, I will also need examples of each of Monster Cable'sactual 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 claimarising out of trade dress, as you are alleging in essence that there is aresemblance sufficient to cause confusion over the identity or origin of thegoods, and no mere line-drawing can suffice.
Second,I will need copies of the trademark applications and any correspondence betweenthe applicant and the USPTO in support of the applications.
Third,you have not identified the Monster Cable products in question, in actual useand distribution in commerce, whose trade dress you allege has beenappropriated. I have reviewed MonsterCable's online materials and have examined connectors on various Monster Cableassemblies in local retail outlets and am unable to determine which, if any, ofthese are thought by Monster to represent use of these particular marks. I am also unable to determine from thisreview whether Monster Cable actually offers any product for sale to which theTartan connectors are alleged to be particularly similar. My own sense of it, in looking at theconnectors, has been that there is no similarity between the Tartan connectorsand any of the many Monster Cable connectors beyond the general functional and conventional characteristicswhich all or nearly all solder-cup, mechanical-assembly, barrel-style RCA-typeconnectors share. It may be that thereis some line of products to which you have intended to refer but which I havenot found in Monster Cable's marketing materials or displays; but if so, youwill need to show me specifically what product it is, and you will need to callto my attention the specific aspects of the connector design which you contendconstitute unique Monster Cable trade dress, what the associated secondarymeaning of those aspects of the trade dress is, and in what manner and by whatcharacteristics you allege that this trade dress has been appropriated.
Fourth,if the dimensional characteristics of the connector as used in commerce varyfrom the dimensions of the scale drawing of your mark, I will need a properscale drawing, with dimensions, of each version of the actual connector as usedin commerce, as well as photographs of the connectors showing actual in-usefinishes. If there is more than onesuch connector design in actual use by Monster Cable as to which appropriationof trade dress is alleged, of course, I will require this information for eachand every such design.
Onthe basis of what I have seen, both in the USPTO documents you have sent andthe actual appearance of Monster Cable connectors which I have observed in usein commerce, it does not appear to me that Monster Cable is in a position toadvance a nonfrivolous claim for infringement of these marks. There simply is not sufficient resemblancebetween the Tartan connectors and any mark or any example of the marks' actualuse that I can find to support such a claim.But if you have further information for me on that point, you arewelcome to submit it.
Youhave also supplied me with partial documentation on five design patents whichyou claim these connectors infringe. Iwill begin by observing, first, that the five design patents are so very muchunlike one another that it is very hard to imagine that any product couldactually infringe more than one of them at a time; anything close enough to oneof them to be deemed an infringement would, by that fact alone, be toodissimilar from the other four. Thedissimilarity of the Tartan connector from each of them is readily evident.
Ishould add that, for the purpose of this letter, I am assuming that thesepatents are valid. This is in no way aconcession of the point. In fact, thisis a very significant and likely inaccurate assumption, and you should expectthe patentability of these designs to be under attack if you commence an actionfor infringement.
Thefact that you have presented me with five completely distinct design patents, Ihave to say, gives me pause. I would goover them and detail the differences between the Tartan connectors and thoseshown in the patents, but if you are taking the position that it appears youare taking, there might be very little point in discussing it with you. Take, for example, the patent you mark asExhibit B. The connector shown there issubstantially different from the Tartan connectors in every respect, unless oneignores design specifics and focuses on the core attributes of the connector whichare dictated by function. If your viewof Exhibit B is that it is to be construed broadly enough as to encompass theTartan connector, it is very hard to imagine that there is such a thing as asolder-assembly style RCA plug which is not similarly, in your view,encompassed by this patent. And,needless to say, it is very hard to imagine that any court would ever adoptsuch a view of the patent's scope; if you file on this sort of basis, you arein Rule 11 frivolous-claim territory.
Iwill point out, though you are no doubt already well aware, that the grossmorphology of the RCA plug is pretty well dictated by function. RCA plugs intended for soldering and assemblyhave certain attributes in common; their diameter is constrained by the needfor the shell to fit over an internal set of solder points and cable clamp, andtheir length by the need to provide some room for cable end prep andattachment; they are generally radially symmetrical along theanterior/posterior axis owing to the need to accommodate both a round-profilecable and the round-profile RCA socket;the connector end is constrained by the standard dimensions of the RCAsocket, and by the need, as the socket provides for no bayonet or screw attachment,to provide sufficient tension on insertion to maintain good mechanical andelectrical contact; the barrel, grasped by the user for the purpose ofinsertion and removal, requires traction which is typically provided by raisedor recessed rings, plastic inserts, knurling, or the like; and transitionbetween the connector and the cable to which it is attached requires, in oneform or another, a reduction in barrel size at the connector rear. It is my assumption, since you cite designpatents only and no utility patents, that Monster Cable makes no claim here forany functional aspect of any of these designs; if I am wrong, please let meknow what utility patents Monster Cable does hold, and what claims, if any,Monster asserts on the basis of those utility patents.
Further,on that point: one of the design patents you attached is closely related to autility patent applicable to the same design, and you failed to point that factout. I need to be able to rely upon thecompleteness and accuracy of the information you send to me and I find thissort of omission deeply disturbing because it is clear that the effect of thisnondisclosure is to obscure the real significance of the patent features. Similarly, as I note further below, you omitreference to another patent Monster has held which appears, frankly, to befatal to your position. If you expect topersuade me, you had better start making full, open and honest disclosures; Iwill find out the facts sooner or later in any event, but the impact upon yourcredibility will not be repaired. Itlooks like when you sent this letter, you were operating on the premise that Iam not smart enough to see through your deceptions or sophisticated enough tointelligently evaluate your claims; shame on you. You are required, as a matter of legal ethics,to display good faith and professional candor in your dealings with adverseparties, and you have fallen miserably short of your ethicalresponsibilities.
Mysense, in looking at these five patents, is that either you are attempting topresent some argument that I simply do not understand or you are arguing foruntenably broad coverage of these patents which would sweep every functionalaspect of the typical solder-assembly RCA connector within the scope of ahandful of mere design patents. You needto 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 presentdiscussion. It cannot possibly be thatyou believe that more than one of these patents is pertinent, and if you insistthat they are, we cannot have an intelligent dialogue on this subject. Once you have identified the patent whichyou contend is relevant, I need to seethe file history and the references to prior art; I need copies of theapplicant's correspondence with the USPTO; and I need a clear and cogentexplanation from you as to exactly what aspects of the Tartan connector designare alleged to constitute the infringement, and how.
Additionally,if you are able to identify any of these patents as applicable, please let meknow whether Monster Cable presently sells, or has at any time sold, anyproducts bearing connectors which are in conformity with the patent drawings orwhich are otherwise contended to be within the coverage of the patents, andidentify those products for me. Pleasealso provide photographs and/or physical examples of these connectors asmanufactured and sold.
Also, please provide me all of the informationreferenced above as it relates to your expired patent D323643, a copy of whichI am attaching. I will need to know whatproducts Monster now offers or at any time has offered for sale which werebelieved to fall within the scope of D323643, and what claims, if any, ofinfringement of D323643 were made against others by Monster, whether thoseclaims of infringement took the form of correspondence only, litigation, orotherwise. Please let me know which, if any, products Monster has ever soldor 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 ifit is your view that it does not, please identify each and every differencebetween the Tartan connector and the connector represented by D323643 uponwhich your view is based. (On that note,let me point out to you that the "turbine cut" feature is irrelevanthere as your client makes only functional, not design, claims for that featurein its marketing materials for the product.)I would assume that you would agree with me that if the Tartan connectoris less dissimilar from the D323643 patent than from any of the five patentsyou cite in your letter, then the Tartan connector is within the coverage ofthe prior art and cannot, as a matter of law, infringe any of your client'scurrent patents.
Imust also point out that unless there is a good deal of background informationyou have not provided me which makes the case otherwise, Monster Cable cannotpossibly square its patent infringement claim(s) with its own patenthistory. Two views of the matter mightbe 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 forinfringement fails. But if one grantsthe sort of breadth to these patents that you appear to wish to do, a problemarises for Monster. D323643 is the leastdissimilar to the Tartan connector of any of the patents, and stands as anobstacle to any claim of infringement of the others because it establishesprior 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 cannotconstitute 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 tosay that I will be unreservedly surprised if you are successful in doing so.
Pleasealso let me know whether Monster Cable or any related entity has broughtactions to enforce any of the patents and trademarks referenced in your letteror above, and provide me with the jurisdiction, court and docket informationpertaining thereto, along with copies of any decisions or judgments resultingtherefrom. If any such litigationproceeded through discovery, I will need all discovery responses, includingdocument production, issued by Monster, as well as copies of any and alldepositions taken and the exhibits thereto.
Further,if any of these patents or trademarks has been licensed to any entity, pleaseprovide 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 thatMonster Cable's principal US entity pays licensing fees to the Bermudacorporation in order to shift income out of the United States and thereby avoidpaying United States federal income tax on those portions of its income; myrequest for these licensing agreements is specifically intended to include anylicensing agreements, including those with closely related or sham entities,within or without the Monster Cable "family," and without regard towhether those licensing agreements are sham transactions for tax shelterpurposes only or whether they are bonafide arm's-length transactions.
OnceI have received the above materials and explanations from you, I will undertaketo analyze this information and let you know whether we are willing to accedeto any of the demands made in your letter.If my analysis shows that there is any reasonable likelihood that wehave infringed in any way any of Monster Cable's intellectual property rights,we will of course take any and all action necessary to resolve thesituation. If I do not hear from youwithin the next fourteen days, or if I do hear from you but do not receive all of the information requested above,I will assume that you have abandoned these claims and closed your file.
Asfor your requests for information, or for action, directed to me: I wouldremind you that it is you, not I, who are making claims; and it is you, not I,who must substantiate those claims. Youhave not done so.
Ihave seen Monster Cable take untenable IP positions in various differentscenarios in the past, and am generally familiar with what seems to be MonsterCable's modus operandi in thesematters. I therefore think that it isimportant that, before closing, I make you aware of a few points.
Aftergraduating from the University of Pennsylvania Law School in 1985, I spentnineteen years in litigation practice, with a focus upon federal litigationinvolving large damages and complex issues.My first seven years were spent primarily on the defense side, where Ideveloped an intense frustration with insurance carriers who would settlemeritless claims for nuisance value when the better long-term view would havebeen to fight against vexatious litigation as a matter of principle. In plaintiffs' practice, likewise, I wasalways a strong advocate of standing upon principle and taking cases all theway to judgment, even when substantial offers of settlement were on thetable. I am "uncompromising"in the most literal sense of the word. IfMonster Cable proceeds with litigation against me I will pursue the samemerits-driven approach; I do not compromise with bullies and I would ratherspend fifty thousand dollars on defense than give you a dollar of unmeritedsettlement funds. As for signing alicensing agreement for intellectual property which I have not infringed: thatwill not happen, under any circumstances, whether it makes economic sense ornot.
Isay this because my observation has been that Monster Cable typically operatesin a hit-and-run fashion. Your clientthreatens litigation, expecting the victim to panic and plead for mercy; andwhat follows is a quickie negotiation session that ends with payment and alicensing agreement. Your client thenuses this collection of licensing agreements to convince others under similarthreat to accede to its demands. Let mebe clear about this: there are only two ways for you to get anything out ofme. You will either need to (1) convinceme that I have infringed, or (2) obtain a final judgment to that effect from acourt of competent jurisdiction. It maybe that my inability to see the pragmatic value of settling frivolous claims isa deep character flaw, and I am sure a few of the insurance carriers for whom Ihave done work have seen it that way; but it is how I have done business forthe 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, tospeak more precisely, the absence of merit from your claims--from start tofinish. Not only am I unintimidated bylitigation; I sometimes rather miss it.
I will also point out to you that ifyou do choose to undertake litigation, your "upside" is tremendouslylimited. If you somehow managed, despitethe formidable obstacles in your way, to obtain a finding of infringement, andif you were successful at recovering a large licensing fee--say, ten cents perconnector--as the measure of damages, your recovery to date would not reachfour figures. On the downside, I willadvance defenses which, if successful, will substantially undermine your futureefforts to use these patents and marks to threaten others with these types ofactions; as you are of course aware, it is easier today for your competitors touse collateral estoppel offensively than it ever has been before. Also, there is little doubt that makingbaseless claims of trade dress infringement and design patent infringement isan improper business tactic, which can give rise to unfair competition claims,and for a company of Monster's size, potential antitrust violations with trebledamages and attorneys' fees.
Ilook forward to receiving the information requested and will review it promptlyas soon as it is received.
Sincerely,
KurtDenke
Many thanks to Blue Jeans Cable for allowing us to reprint this letter.
Editor's Note: There is also a brief follow-up interview with Kurt over at http://www.freesoftwaremagazine.com for those interested in hearing more.
