(February 19, 2020, 3:14 PM EST) — A Connecticut federal jury has found that racing sailboat maker LaserPerformance has been willfully ripping off the trademark of the original designer of the Laser dinghy, and awarded the designer $6.8 million in damages.
After deliberating for about a day following a four-day trial, the New Haven jury on Friday found in favor of sailboat designer Bruce Kirby and his Bruce Kirby Inc., who alleged that after he ended an agreement to have LaserPerformance sell his design, the company continued selling boats with his name and mark on them.
The jury found that LaserPerformance, legally known as Quarter Moon Inc., had willfully infringed Kirby’s trademark, and awarded Kirby $4.33 million from Quarter Moon and $2.52 million from its European unit, LaserPerformance (Europe) Ltd.
The jury’s willfulness finding means the court will assess whether punitive damages are warranted.
Kirby filed suit in March 2013, alleging that LaserPerformance — a name shared by several companies controlled by Farzard Rastegar — was ripping off the sailboat design created by Kirby around 1970.
The Kirby sailboat, a small, one-person racing dinghy known as the Laser, had become a standard class for international racing, and manufacturers that wanted to sell the design entered into royalty agreements with Kirby, according to court documents.
Authorized builders can use the design and put a plaque featuring Kirby’s name and trademark on the hull of each boat, and only boats with those plaques can be used in sanctioned international sailboat races, according to the suit.
Kirby alleged that this system worked well for more than 20 years before LaserPerformance decided to stop paying royalties but continued using Kirby’s design and marks.
Another company, Global Sailing Ltd., later purchased the rights to Kirby’s designs and marks, and filed its own claims alleging that LaserPerformance was committing breach of contract by failing to pay it the royalties it had owed Kirby.
Global Sailing’s claims were consolidated with Kirby’s but severed before the trial, and they are headed to a bench trial against LaserPerformance later this year.
An attorney for Kirby declined to comment Wednesday. An attorney for LaserPerformance did not immediately respond to a request for comment.
Kirby is represented by Wesley Whitmyer Jr., Walter Welsh, Benjamin Luehr and Robert Keller of Whitmyer IP Group LLC. LaserPerformance is represented by Douglas Skalka, Peter Fay and Robert Flynn of Neubert Pepe & Monteith PC. The case is Bruce Kirby Inc. et al. v. LaserPerformance (Europe) Ltd. et al., case number 3:13-cv-00297, in the U.S. District Court for the District of Connecticut.
Huge thanks to Law360.com.