Intellectual Property

THE AMERICA'S CUP INTELLECTUAL PROPERTY

The trophy that is known today as the America’s Cup started life in 1851 as the Royal Yacht Squadron £100 Cup and was subsequently donated to the New York Yacht Club by means of a Deed of Gift dated 8th July 1857. At that time the United States Copyright Act permitted a maximum of 42 years copyright protection, corporate or individual, and thus it would appear that any copyright that arose from the Deed of Gift would have expired by 9th July 1899 and Garrards' copyright for the design of the trophy would have expired by 1894. However, when the Club belatedly applied for a trade mark as late as 1976 the Club claimed that the words America’s Cup had been in commercial use since 1871 which means that any copyright would have expired in 1914.

If the Club had intended to maintain exclusive right to the use of the words America’s Cup beyond 1914 it would have been sensible for them to have registered a trade mark before copyright ran out. So why might they have failed to register a trade mark before the expiry date given that the 1976 USPTO trade mark application claimed the words America’s Cup had been in commercial use for over 105 years?

It seems probable that the Club did not attempt to register a trade mark for two reasons. Firstly, they almost certainly considered that the trophy was a sporting challenge not a common commercial property and secondly, that ownership of copyright in the words America’s Cup was not clear.

Indeed, it could be that the words America’s Cup were originally coined in the popular press or by a third party or simply arose in the general public consciousness rather than being the specific name given to the trophy by the Club. If that’s what happened they wouldn’t have owned any copyright in the words America’s Cup absent a legal assignment and that could be why they didn’t apply for the trade mark because if the words were already in common use the Club could not have got an assignment.

Interestingly, neither Deed of Gift nor the trophy refer to the America’s Cup. Indeed, the trophy itself simply refers to the fact that it that had been won by the yacht America and was engraved with the name of 100 Guinea Cup by the syndicate that had donated the trophy to the Club. Thus, it would seem reasonable to assume that the trophy was called the 100 Guinea Cup. In fact, all the races for the trophy were run as the Queen’s Cup from 1870 until 1887 when the New York Yacht Club finally adopted the name America’s Cup. That’s 30 years after the trophy had been donated to the Club and some 36 years after the original syndicate had won the RYS £100 Cup. And it’s also 16 years after the date claimed on the 1976 trade mark application.

The awkward facts for America’s Cup Event Authority and America’s Cup Properties Incorporated are that since at least 1881 the popular press had referred to the Queen’s Cup as the America Cup and by 1885 they were referring to it as the America’s Cup. And so it would appear that by the time that the New York Yacht Club adopted the name America’s Cup in 1887 they used a name that was already well established in the public domain.



Source: Daily Alta, California dated 30th March 1885.

So who got there first? The popular press, the general public or General Benjamin Butler who, in his own words, had not the honor to be a member of the New York Yacht Club? It would appear from a rather inconvenient report in the Daily Alta on 30th March 1885 that the Club never owned any copyright in the words America’s Cup. It looks like General Butler, owner of the yacht America that won the RYS £100 Cup in 1851, Union Army Civil War hero and 33rd Governor of Massachusetts, was the first to name the America’s Cup with his exhortation to the Club to put up a defender for the Queen’s Cup.

If copyright in the words America’s Cup belonged to General Butler, it would appear that any such copyright expired with Butler when he died in 1893. No wonder the Club didn’t apply for a trade mark. Indeed, it would be interesting to know if Butler's long lost letter has survived in the New York Yacht Club's grand library of all matters America's Cup and if so, why it was ignored by the Club's committees, historians and trade mark lawyers in 1976? In any event the words America’s Cup are currently in use in the sports of cycling, darts, football as in FIFA Copa América, golf, kung fu, motoring, fly fishing, roller skating, hockey, poker and taekwondo. The same words are also used in sailing as the informal name for the Little Cup, International C-class catamaran championship, that has been known as the Little America’s Cup by sailors and media for over 58 years worldwide. As a result of which it would appear that the words America’s Cup were customary in the current language and the bona fide and established practices of the trade many years before the Club’s belated and futile 1976 trade mark application.

AMERICA'S CUP PROPERTIES INCORPORATED

On 17th June 2014 the America’s Cup Event Authority and America’s Cup Properties Incorporated attempted and failed to take control of America's Cup Masters. At 00.51 BST on 18th June 2019 the statutory time limit for commencement of enforcement proceedings against America's Cup Masters passed without any attempt by ACPI to enforce their claims to an exclusive right to the words "America's Cup" made in a Cease and Desist letter dated 17th June 2014. Thus it appears ACPI has accepted that the registered trade marks in the words "America's Cup" are not enforceable.

The correct response to correspondence from lawyers acting on behalf of either ACEA or ACPI threatening the commencement of legal proceedings is not to be intimidated by their arrogant, marauding and thoroughly obnoxious behaviour. Ignore their threats of legal proceedings and associated demands for money. Refuse absolutely to assign intellectual property and refuse to pay any licence fees. Simply remind the lawyers that it was not you who left the seacocks open and tell them to withdraw groundless threats of legal proceedings or you will refer the matter to Registrar of Trade Marks. If the threat of legal proceedings persists an application can be made for a hearing under the provisions of Part 1 Section 21 of the Trade Marks Act 1994 or alternatively a request can be made for an investigation under the provisions of Part 1 Section 46 of the Trade Marks Act 1994.

Indeed, it appears that the ACPI trade mark for the words America’s Cup may be at risk of revocation under the provisions of Part 1 Sections 5 and 47 of the Trade Marks Act 1994 on the grounds that it has never had, nor can it ever acquire a distinctive character. We note that under the provisions of Part 3 Section 100 of the Trade Marks Act 1994 it states that: “if in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put it is for the proprietor to show what use has been made of it”.

We also note with considerable amusement that you don’t actually have to have been threatened by lawyers in order to start an investigation into the trade mark for the words America’s Cup. Any citizen is entitled to apply for an investigation into the validity of any trade mark under the provisions of Part 1 Section 46 of the Trade Marks Act 1994 at any time without notice to America’s Cup Event Authority or America’s Cup Properties Incorporated.

Finally, if America’s Cup Event Authority, America’s Cup Properties Incorporated or any of their associates do anything that you consider infringes your intellectual property you can apply to have the trade mark struck off by same process.

Use this link to access UK Patent Office website if you want to apply have the America's Cup trade mark struck off the Register: Application Form TM26(O)


THE THINGS THEY SAY...

Extract from a letter sent to America's Cup Masters by America's Cup Properties Inc.

We would also like to inform you of the America’s Cup Event Authority’s (“ACEA”) and ACPI’s policies on unsolicited business proposals. By submitting any unsolicited business proposals, ideas, creative suggestions, notes, concepts, drawings or other information (collectively “Unsolicited Materials”) to ACEA and/or ACPI, you agree to assign to ACEA and ACPI and all rights of every nature and description, in perpetuity, throughout the world, in such Unsolicited Materials. The Unsolicited Materials shall be deemed, and shall remain, the sole property of ACEA and/or ACPI (as determined between them), and ACEA and/or ACPI shall (as determined between them) exclusively own all now-known and hereafter existing rights to the Unsolicited Materials for any purpose (commercial or otherwise). Thank you. Very truly yours, James R. Menker

It would appear America’s Cup Event Authority and America’s Cup Properties Inc. made an unsuccessful attempt to appropriate America’s Cup Masters intellectual property after they had failed to get an assignment by lawful means. It would be interesting to know who gave Menker the instruction to send such an uneducated and abusive letter.

James Menker is a shareholder in Holley & Menker the distinguished firm of US trade mark attorneys who provide a complete range of intellectual property services to major national and international organisations. Holley & Menker’s most impressive international client list includes FIFA and the thoroughly obnoxious double act of ACEA and ACPI.

Holley & Menker were instructed by Sam Hollis Chief Operating Officer of the America’s Cup Event Authority, Chief Executive Officer America’s Cup Properties Incorporated and legal counsel for the America’s Cup. Hollis is a sports lawyer specialising in the structure, marketing, sale and delivery of a full range of commercial rights in sport. He studied law at Oxford and was trained and qualified at Freshfields in London where he worked with the team that advised London 2012 on its bid to host the Olympics.

THE AMERICA'S CUP MASTERS INTELLECTUAL PROPERTY

America’s Cup Masters, America’s Cup Legends, AC Masters, AC Legends, Classic America’s Cup, America’s Cup Classics, Historic America’s Cup, America’s Cup Heritage, Heritage America’s Cup, International America’s Cup Class Masters, International America’s Cup Class Legends, IACC Masters, IACC Legends, America’s Cup Class Masters, America’s Cup Class Legends, ACC Masters, ACC Legends, J Class Masters, J Class Legends, 12 Metre Masters, 12 Metre Legends, 12 Meter Masters, 12 Meter Legends, Twelve Metre Masters, Twelve Metre Legends, Twelve Meter Masters, Twelve Meter Legends, Universal Rule Masters, Universal Rule Legends, History of the America’s Cup, America’s Cup History and America’s Cup Hall of Fame are trade marks and copyright intellectual property of AMERICA'S CUP MASTERS™

The words Masters, Legend, Legends, All, America, Anniversary, Antique, Bowl, Celebration, Celebrity, Challenge, Champion, Championship, Classic, Classics, Club, Concours, Cup, Demonstration, Elegance, Era, Evolution, Ex, Famous, Festival, Fleet, Former, Glory, Glorious, Gold, Golden, Great, Greatest, Hall of Fame, Heritage, Heroes, Historic, Historical, History, Honour, Honor, Honourable, Illustrious, Immortal, Individual, Invitation, Invitational, Jubilee, League, Match, Nostalgia, Oldtimer, Pageant, Parade, Past, Race, Regatta, Retro, Retrospective, Review, Series, Star, Stars, Story, Super, Thoroughbred, Tradition, Traditional, Trial, Trophy, Ultimate, Venerable, Veteran, Vintage, White, Wings, World, World Cup, Yacht, Years, Boat Names, Boat Numbers, Class Names, Dates, Date Ranges and Names of any former or present America’s Cup venues for example Newport, Freemantle, Auckland, Valencia, Proper Names and any combination, form or variation of these or any other words, singular or plural or no title words at all that may result in copyright infringement whether used as part of a sub-title or title name of a regatta or series of regattas, match races, fleet races or demonstrations such as described on this website as the America’s Cup Masters are trade marks and/or copyright intellectual property of
AMERICA'S CUP MASTERS™

The trade marks and copyright intellectual property in the words AMERICA'S CUP MASTERS and AMERICA'S CUP MASTERS™ are the property of AMERICA'S CUP MASTERS™ exclusively. These trade marks and copyright intellectual properties protect the exclusive rights of AMERICA'S CUP MASTERS™ in any and all activities and events within the sport of sailing such as described above including any and all directly related or unrelated sailing activities and events. The trade marks and copyright intellectual properties protect the exclusive rights of AMERICA'S CUP MASTERS™ in any format of sailing activity or related event whether any such activities and events are held under the description of classic, traditional, modern or contemporary sailing events or sailing events encompassing any combination thereof or any other defined or as yet undefined sailing classification regardless of whether or not such activities or events form part of the published description of AMERICA'S CUP MASTERS™ on this website.

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