Case files available for download at: http://www.datafilehost.com/download-8f17f883.html

Just now??!!

Can't view the file right now. How are they claiming to have been damaged?

Yeah, I don't want to download a zip like that. Can you post the highlights, or text version?

Case started about 17 months ago.

Cliff Notes below

HK:  Their guns look like ours. (Complaint)

CH:  So what, how did we violate any of your patents or trademarks. (Answer)

HK:  No really, your guns look like ours.  (Reply to Answer)

CH:  Dear Judge, this lawsuit is bullshit.  Please grant a motion to dismiss this frivolous lawsuit. (Motion to Dismiss)

HK:  Dear Judge, their guns really look like ours.  Deny their motion so that we can sue them for making guns that look like ours. (Reply to Motion to Dismiss)

Now awaiting Judge's decision on motion to dismiss.

Weren't they talking about suing the makers of the GSG-5 as well?

I don't know very much about patent/IP law, can you actually sue for infringement based upon the fact that an item looks similar to yours but has different internal workings and markings.  If so, why hasn't Colt sued everyone for making AR's since they look like their designs?

Colt's patents expired.

To win a patent case you have to prove that you've been damaged. Since HK doesn't make 9X series rifles anymore they are going to have a hard time claiming damages.

We're talking about Todd here, so I fixed the spelling for you.

For a utility patent - Maybe, but HK does not seem to have any that are enforceable or else they would have cited them in the complaint.  Utility patents expire after awhile.

For a design patent - Maybe, but HK does not seem to have any that are enforceable or else they would have cited them in the complaint.  Design patents expire after awhile.

Trademark - HK is not alleging that CH used any of HK's registered marks.  Instead, HK is alleging the CH is using their trade dress, meaning their guns look like ours.  Trademarks do no expire if
                     the government fees for extension are paid and the marks are kept in use.

Astra beat me to it.


And just remember, anybody can sue for anything. This is why we need some meaningful tort reform.

I was under the impression that the patent for MP5s and some other HK rifles and subguns had expired.




Tag for more details.


I am torn. As much as I hate to admit it, there are parts of me that hope Coharie wins



Edited to add Coharie CA94 SBR picture:







 

I could see it if HK still made them for the civ side...so screw HK and their non civilian selling arse

My Cohaire sp89 clone is running well

Come on guys,  before you start talking patents and what not, at least look at the complaint.

While the general allegations are cute, there are no claims of patent infringement.  There do not appear to be any federally registered marks.  There are no federally registered copyrights.

Trade dress, common law claims and certain business-related claims...thats all.  Many of the claims are silly at best.  Would love to represent the defendant in this case.

Trade Dress is their strongest leg to stand on, and is valid.  If you spend millions of dollars creating a product and then someone new comes along and makes a product that looks identical to yours and profits from it,  then you have a case.

Xanadu-

Have you ever tried a trade dress case?  They are extremely difficult, plaintiffs have a helluva time with such cases.  

It's easy to say they look alike and arrive at the conclusion that there is a valid trade dress.  That is not trade dress.  

Non-functionality and distinctiveness are key issues that HK has the burden of showing  in proving trade dress.   It will be a fun fight to watch.

They are being so agressive in this that they cancelled my ebay ad for an airsoft gun because Classic Army does not have a license to produce an airsoft version of the MP5.

So I am out the listing fee of $18 because I was selling something that was sold to me that looked like a HK product

   

Trade dress is indeed a difficult case to prove.  Functionality will be a pretty good defense to such a claim in this case.

+1

Some more info and an opinion from a buddy of mine who is also an IP attorney and a gun nut.  HK has sued the following in the past few months (the complaint is basically the same):

Crosman
Gamo
Precision Airsoft (Olympia, WA)
These are all making airsoft guns that look like an HK or that say "HK" or "MP5" on the package.

Vector Arms
This case settled quickly.

German Sports Guns
Orion Arms
American Tactical Imports
These are a German manufacturer and two US distributors selling HK clones.

All of the HK complaints are poorly worded and vaguely refer to "HK IP" rather than to any specific rights. They also include claims for "forgery," which really relates only to falsified documents.

Certainly, HK owns its trademark "HK." It owns registrations for "MP5" and some other models. Those registrations may or may not be valid, but the burden is on the challenger to prove they are not. Its claim to right in trade dress for the look of its models is highly suspect, but if they can get several little companies to fold under their threats or after being sued, that bolsters their legal position. It looks like the defendants are fighting, but it will take some time before we get any rulings from the court.

The plaintiff's counsel appears to be a one-attorney, non-law firm called Continental Enterprises, which is stated to be all about IP protection an strategy.  http://www.ce-ip.com  They say: "We view counterfeiting and infringement issues as business problems that call for creative and cost-effective business solutions. Because CE is not a law firm, we focus more on the bottom line. Our services are highly personalized and your individual needs shape our strategy. Whether implementing targeted solutions or developing a comprehensive long term program, we aggressively pursue domestic and foreign infringers on your behalf."

The info under each of their IP categories reads: "Continental Enterprises offers a wide range of innovative and unique intellectual property protection services. By combining both investigative and enforcement services under one roof our services are both comprehensive and streamlined."

The one attorney there, Darlene Seymore, appears to have experience in "family law, criminal defense and legal ethics."  Her bio is here: http://www.ce-ip.com/html/counsel_bio.html.  There is no evidence that there is anyone there except this one attorney, who has no IP law experience.

Strange strategy for HK.

I did not know that it was Continental Enterprises that represented them.  If you do a search on that firm, you see a number of negative things about this firm and the manner in which it conducts business.  Also, as pointed out, apparently the firm actually knows very little about case law. They find some item that they claim to be infringing.  They then send out cease and desist letters to the manufacturer telling them to stop production and provide an accounting of all the alleged infringing items that were manufactured, the sale of the items, and money received.  After they have received this information, they say that they will settle the case for $xxxx or they will file suit.  From what I have seen, when they file suit, they usually lose their cases.  They are just hoping for a quick settlement from as many people as possible.

Looks more like a 'slap' type case to legally harass and intimidate smaller companies by running up their legal bills.
HK does not have a lot at stake in the suits, just a one attorney company, while the defendants are paying multiple attorneys (though not all may be working at the same time).

I updated the title to reflect that...

Hey this company saved me a lot of money. I bought a sear pack in 1996 $1100.00 which was high  at the time. I didn't want to spend the money on HK guns to run the pack. First gun I bought was A springfield sar8 post ban in 1997 before those were cut off from import also$850.00 . Then I bought a special weapons mp5 short barrel summer sale $1100.00 next was a vector 93 $1100.00 then a special weapons sw94 16inch barrel $750.00. All the guns work  makes a decent collections for shooting machine guns. 3 of the guns were copies done by todd bailey and I can say I would buy from him again. I have about $5000.00 into the 4 guns and sear pack not  BAD !

If HK wins the only way to get a new hk type weapon  will be to buy an hk flat and build it yourself or pay a gun smith .

I have heard HK is planning to release to a .22lr MP5 clone in the US...














Seriously though, we can't even import HK MP5 style guns anymore can we? It's not like they are really losing any money here.

I think most 22lr guns tend to fall under the "sporting" exemption as far as importation goes. So yes, HK may feel like they are going to lose $. Just a speculation - HK is probably doing this as a preemptive strike because they don't want a poor sales record of trying to sell $1500 guns versus $500 guns to come out in court as sour grapes.

My $.01

Are we looking at the same complaint?  Count I - federal trademark infringement; Count II - federal trademark dilution; Count III Lanham Act.  Granted, the complaint doesn't state exactly what trademarks are being infringed, provide a description of the trademark, when it was registered, etc.

As the the counterfeiting count (Count VIII), they allege that a document was forged (but don't say what document).

Wiz, I agree with you.  First, I did not see anything regarding patent infringement.  BTW, utility and I also believe design patents are issued for 20 years periods, providing the inventor pays maintenance fees at years 3, 7 and 14.  For utility patent infringement, the party asserting the claim must have a valid patent for the alleged infringed product (product being the same elements of the claimed subject matter or obvious variants).  The claims are located in the back pages of a patent and set forth the legal bounds of the invention (the name of the game is the claim).  A design patent provides protection for the overall look and design of the product.  A design patent has no claims, but relies on the figures for protection.  You can tell a US design patent by the numbering (i.e. D-123,456).  A utility patent will have just numbering (i.e. 1,234,567).  A little diversion from the topic, but maybe good for some potential inventors.  

Trademarks official definition is a source identifier of goods (i.e. a symbol or mark that identifies the product with the company).  It's all about associating the product with the company so a consumer knows what exactly they are buying.  Companies usually police these things very stringently because if they don't they could be deemed to have constructively abandoned the mark.  Also, if the product symbol or term is used to the point that it becomes a generic term (Q-tip, Band-Aid ...etc.), the company will lose their right to their exclusive use of the TM.  They are good and valid indefinitely provided that the holder actually and continuously uses the TM in a commerce stream.  To obtain a valid TM, they must file an application with the patent and trademark office (www.uspto.gov).  There, trademark attorneys will search the logo and determine whether it is in use in a similar industry.  If not, they are awarded a TM.  You must have a valid or pending TM to sue for infringement in federal courts, though I am not sure that applies to state courts.  TM's used to be in the province of state courts, but is now pretty much under federal jurisdiction as the Lanham Act was adopted in 1946.  Among the TM's used is trade dress, which is the distinctive way something looks.  It is why you see pretty much every chain restaurant such as McDonalds, Chili's ...etc. look the same.  The look must be for ornamental purposes (looks only) and not functional (it makes the use more efficient).  I believe that is what HK is asserting with TM infringement.

That said, it is not absolutely illegal to use a TM item, so long as there is no deceptive intent (deceptiveness is the standard).  Would it be likely to confuse an average person that the product they are buying or receiving is not actually from another trusted and reputable manufacturer to which they associate this product.  I have only skimmed through the complaint and I did not see where HK has listed any TM or patent registration numbers.  Moreover, the drawings in the complaint are not that clear.  They are alleging common law trademark infringement, so that kind of tells me they do not have a valid TM for the overall look of the weapons, but are relying on a deceptive intent as their basis for infringement (i.e. you are making, selling and confusing people with weapons which look like ours).  It is probably also the main reason HK sued them in state court, though they could remove to federal court (and it appears in SW answer they did just that) based on diversity of citizenship (i.e. citizens of different states and done on a convenience basis for the parties involved).  Obviously, the HK logo (which is most likely well protected!) is not at issue.  Does HK even still manufacture the MP5 anymore?

The motion to dismiss and default judgment are usual motions filed during proceedings and typically must be raised or else they will be deemed waived should the case go to appeal.  Typical standard for these is no general issue of material fact to which the party would be entitled to relief (i.e. they have no legal cause of action) and is decided by a judge not a jury.  For an injunction, it must be shown that the asserting party will be irreparably harmed and an injunction is the only way to prevent it.  This is usually done prior to settling of the case, keeping things as they are until a decision is made.  Permanent injunctions do happen, but are rare as there are other remedies typically available such as money damages.  

In the answer, SW asserts a couple affirmative defenses (the proverbial "yeah, I did it, but so what, they are still not entitled to relief" defense).  They assert that HK knew about this stuff for a while and did nothing.  This would constitute abandonment.  They also allege the good ole' statute of limitations defense.  I believe it may be a few years from discovering the infringement that HK must file an action in a court.  They also counterclaim that HK tried and failed to get a valid TM and hence has no cause of action because there is nothing to protect.  Moreover, SW asserts that HK trade dress design (the design of the weapon) is functional in nature and not ornamental (because it is functional, you should have obtained a valid US utility patent and sued us for patent infringement instead)

I cannot speak to the fraud, forgery, counterfeiting and conversion charges set forth in the complaint.

Just a little explanation of IP law although it appears from this thread that there are some very knowledgeable people in the field.