Eeyore wrote:

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Name: monsterletter.pdf

And their repsonse.
http://www.audioholics.com/news/indu...s-strikes-back



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.


__________

Your letter, received April Fools' Day

Dear Monster Lawyers,

Let me begin by stating, without equivocation, that I have no
interest whatsoever in infringing upon any intellectual property belonging to
Monster Cable. Indeed, the less my customers think my products resemble
Monster's, in form or in function, the better.

I am evaluating your claim that the connectors on certain Tartan
brand products infringe Monster's design patents and trademarks. However, the
information supplied with your letter is plainly inadequate to support a claim
of infringement and so I am writing to you to ask for further information and
clarification regarding your claims.

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.

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.

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.

The fact that you have presented me with five completely distinct
design patents, I have to say, gives me pause. I would go over them and
detail the differences between the Tartan connectors and those shown in the
patents, but if you are taking the position that it appears you are taking,
there might be very little point in discussing it with you. Take, for
example, the patent you mark as Exhibit B. The connector shown there is
substantially different from the Tartan connectors in every respect, unless
one ignores design specifics and focuses on the core attributes of the
connector which are dictated by function. If your view of Exhibit B is that
it is to be construed broadly enough as to encompass the Tartan connector, it
is very hard to imagine that there is such a thing as a solder-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
adopt such a view of the patent's scope; if you file on this sort of basis,
you are in Rule 11 frivolous-claim territory.

I will point out, though you are no doubt already well aware, that
the gross morphology of the RCA plug is pretty well dictated by function. RCA
plugs intended for soldering and assembly have certain attributes in common;
their diameter is constrained by the need for the shell to fit over an
internal set of solder points and cable clamp, and their length by the need to
provide some room for cable end prep and attachment; they are generally
radially symmetrical along the anterior/posterior axis owing to the need to
accommodate both a round-profile cable and the round-profile RCA socket; the
connector end is constrained by the standard dimensions of the RCA socket, and
by the need, as the socket provides for no bayonet or screw attachment, to
provide sufficient tension on insertion to maintain good mechanical and
electrical contact; the barrel, grasped by the user for the purpose of
insertion and removal, requires traction which is typically provided by raised
or recessed rings, plastic inserts, knurling, or the like; and transition
between the connector and the cable to which it is attached requires, in one
form or another, a reduction in barrel size at the connector rear. It is my
assumption, since you cite design patents only and no utility patents, that
Monster Cable makes no claim here for any functional aspect of any of these
designs; if I am wrong, please let me know 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 a utility patent applicable to the same design, and you
failed to point that fact out. I need to be able to rely upon the
completeness and accuracy of the information you send to me and I find this
sort of omission deeply disturbing because it is clear that the effect of this
nondisclosure is to obscure the real significance of the patent features.
Similarly, as I note further below, you omit reference to another patent
Monster has held which appears, frankly, to be fatal to your position. If you
expect to persuade me, you had better start making full, open and honest
disclosures; I will find out the facts sooner or later in any event, but the
impact upon your credibility will not be repaired. It looks like when you
sent this letter, you were operating on the premise that I am not smart enough
to see through your deceptions or sophisticated enough to intelligently
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
adverse parties, and you have fallen miserably short of your ethical
responsibilities.

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.

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.

Once I have received the above materials and explanations from
you, I will undertake to analyze this information and let you know whether we
are willing to accede to any of the demands made in your letter. If my
analysis shows that there is any reasonable likelihood that we have infringed
in any way any of Monster Cable's intellectual property rights, we will of
course take any and all action necessary to resolve the situation. If I do
not hear from you within 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.

As for your requests for information, or for action, directed to
me: I would remind you that it is you, not I, who are making claims; and it is
you, not I, who must substantiate those claims. You have not done so.

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

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.