# A Patent Infringment Lawsuit



## STEVETERRY (Jul 10, 2008)

CB'ers may be interested in the following press release issued by ETC today:

July 10,2008

FOR IMMEDIATE RELEASE 

Electronic Theatre Controls (ETC) announced today that it has filed a patent infringement suit against Lightronics Inc. seeking unspecified damages in U.S. District Court. After a number of attempts by ETC to resolve this matter without resorting to litigation, the action was filed with co-plaintiffs David Cunningham and Gregory Esakoff. Cunningham and Esakoff are the inventors and owners of the Source Four® ellipsoidal spotlight design, which they have exclusively licensed to ETC. The suit alleges that Lightronics knowingly and willfully infringed and continues to infringe certain U.S. Patents covering the ETC Source Four® ellipsoidal reflector spotlight.
.
ETC CEO Fred Foster commented: “The Source Four® ellipsoidal is a groundbreaking invention that has had a profound effect on the lighting industry over the last 16 years. ETC places a very high value on the intellectual property surrounding the Source Four® product, and we will vigorously defend it against illegal patent infringement.” David Cunningham added: “Patent protection in the lighting industry provides a key incentive for new product development and innovation. Patent infringement has the effect of removing this incentive and would eventually have a negative effect on new product innovation.” Foster continued: “ETC has a long history of significant and continuous investment in the development of the Source Four® product line. Patent protection is a key enabling factor in this development program.”


----------



## Van (Jul 10, 2008)

Oh great there goes my cheapo supply of S4 knock-offs.


----------



## LDTom (Jul 10, 2008)

STEVETERRY said:


> CB'ers may be interested in the following press release issued by ETC today:
> 
> July 10,2008
> 
> ...




Very Interesting, Thanks for Sharing. I never used a Lightronics cheaper S4 knock off but they must be something if ETC is coming after then.


----------



## lieperjp (Jul 10, 2008)

I was wondering when that would happen. It's funny this showed up today because I just saw an advertisement for them today in Live Design.


----------



## soundlight (Jul 10, 2008)

Finally!

I was wondering how long Lightronics would get away with this.


----------



## Grog12 (Jul 10, 2008)

No surprise there.


----------



## JD (Jul 10, 2008)

STEVETERRY said:


> Electronic Theatre Controls (ETC) announced today that it has filed a patent infringement suit against Lightronics Inc.



Good luck on that one! I once owned Sigmatel stock. Had been $40 a share as they supplied all the MP3 chips for Ipods etc. Then the Chinese company ACTs semiconductor copied their chip and blew them off the market. Sigmatel sued. As ACTs was in China, (even though they had American distribution) they filed that the case had to be tried in China. Sigmatel's stock was at $3 per share, right before they went belly up on Feb 4, 2008. 

Since all Chinese companies are really only one, the Chinese government, the chance of prevailing is about 0%

A quick check shows that there is no such thing as American stock for Lightronics Inc. (Dow, Nas, S&P.)


----------



## derekleffew (Jul 10, 2008)

/sarcasm ON
A great way to stifle creativity and innovation by filing frivolous lawsuits against innocent companies whose products may appear, on the surface, to be vaguely similar to yours.

It's Vari*Lite vs. High End all over again.

Tomorrow I'm going to try to buy as many of those ERSs as I can, then sell them at a huge premium on ebay. At least until Philips buys ETC and PRG.
/sarcasm off


----------



## STEVETERRY (Jul 10, 2008)

derekleffew said:


> /sarcasm ON
> A great way to stifle creativity and innovation by filing frivolous lawsuits against innocent companies whose products may appear, on the surface, to be vaguely similar to yours.
> 
> It's Vari*Lite vs. High End all over again.
> ...



Derek, my friend, you have it wrong.

ST


----------



## derekleffew (Jul 10, 2008)

STEVETERRY said:


> Derek, my friend, you have it wrong.


Not the first time I've had something wrong. I've screwed up way more important threads than this! 

Seriously, Lightronics has a Virginia Beach, VA address. Do they, in fact, import their products from Asia? Are these so-called Ellipsoidals, made in China? FWIW, MSRP on Lightronics 6.25" units is $440, "street" price for ETC 426 is $308. In ten or even two years, where are parts going to be available?


----------



## gafftapegreenia (Jul 10, 2008)

So what makes ETC sue Lightronics and Elation, but not Strand or Altman? Are we talking intellectual property based upon appearance of the fixture? Because then that makes sense. Or, on the other hand, is the suite based upon overall fixture design and performance?

Derek, the part about Philips buying ETC and PRG, you never know but part of me wouldn't be surprised to learn that the idea might have passed over a meeting table once of twice. 

I understand ETC in their effort, and I support them, but I do agree, with the Lightronics being more expensive and less well known, fewer will be sold, and servicing with be a royal pain. The worst part is some poor souls will be stuck with these lights for a long time. 

And what about that knock-off PARnel, surprised nothing has been filed over that yet.


----------



## Kelite (Jul 11, 2008)

gafftapegreenia said:


> So what makes ETC sue Lightronics and Elation, but not Strand or Altman? Are we talking intellectual property based upon appearance of the fixture? Because then that makes sense. Or, on the other hand, is the suite based upon overall fixture design and performance?



I believe each of those companies have taken the proper avenue by paying a licensing fee to David Cunningham to use the patented technology of the compact filimant lamp as well as the dichroic coated glass reflector. 

Also, if a product's outward appearance can be easily confused with a patented product, then 'market confusion' is often the result...


----------



## rosebudld (Jul 11, 2008)

I've seen those Lightronics too and thought the same thing like really are they as good and if so what's stopping ETC from suing them..


----------



## JD (Jul 11, 2008)

Kelite said:


> I believe each of those companies have taken the proper avenue by paying a licensing fee to David Cunningham to use the patented technology of the compact filimant lamp as well as the dichroic coated glass reflector.



The compact filament lamp would be under the patent of the lamp manufacturer. This makes the Source 4 a "leaning" patent, as it requires a product from another patent holder in order to work correctly. Nothing unusual there, as most product patents are "leaning" as they are built on other pre-existing patents. The Lightronics fixture is an obvious copy. Problem is, what may be obvious to us may not be obvious to a judge and jury. As a good friend of mine, who is a corporate lawyer says, "It is rare for this to turn out well for either company." In most cases, the battle drags out for years and costs a fortune. Such nuances as the leaning patens make for gray areas that confuse the legal process. Once again, my best wishes to ETC as they are at least standing up for themselves!


----------



## dramatech (Jul 11, 2008)

What you say about the lamp being patented under the lamp manufacture would be the logical answer. In the case of the HPL lamp the patent is held by ETC. When they were in fact working with the designers of the Source 4, they couldn't get any lamp manufactures to produce the lamp because they thought there wouldn't be a great demand for it. ETC put up the money for the development of the lamp with the stipulation of holding the patent. This is why many companies were able to produce very similar instruments to the source 4, and not infringe on the pantent by using a different lamp. Most of the other companies used slightly different lens fields of angle and didn't follow the exact shape of the source 4. It is very questionable as if that appearance is patentable under the new patent laws. The Lightronics units are manufactured in China by a seperate company that has nothing to do with Lightronics. The fact that Lightronics is the exclusive distributor makes them the US target for ETC. I seriously doubt that the case will ever come to trial. ETC probably gave Lightronics a "Cease and dissist" order and Lightronics balked. Lightronics is a privately owned corporation owned by Kevin Nelson, the designer of the initial tree hung dimmers and rack mount dimmers that is their trademark. The ETC smartfade series is pretty much a copy of those Lightronics products that have been around longer than ETC. ETC is a huge corporation that could eat Lightronics for lunch. Lightronics will back down as the ERS line is not a big producer for them, and really isn't priced competively to a source 4. I talked to the folks at Lightronics during LDI, ( I have known them almost from their beginings) and they said that they were marketing them just to make their line more complete and didn't expect to sell all that many. A very similar situation is the Behringer Ultrapar 1000. It is a direct knockoff of the ETC PAR. In fact many of the parts are interchangeable. They thought that they could get around the HPL patent issue by using a lamp with a G9.5 socket. Truth is that there is a removeable heatsink, that when removed the instrument will use a HPL lamp. ETC issued a cease and desist and Behringer quit selling them in the US and Canada. 
My comments are facts as I know them, and I am not taking issue with creative patent laws or their morality. Each purchaser must deal with that with their own conscience.


----------



## derekleffew (Jul 11, 2008)

Hmm. A search among the many patents of David W. Cunningham turns up this: something about some new-fangled Light Emitting Diode method of illumination. That will never catch on.

But the one for Water-Heater for Locomotives from 1906 is interesting. Perhaps ETC is investigating alternative energy sources in an effort to lessen our dependence on foreign oil?


----------



## STEVETERRY (Jul 11, 2008)

JD said:


> The compact filament lamp would be under the patent of the lamp manufacturer. This makes the Source 4 a "leaning" patent, as it requires a product from another patent holder in order to work correctly. Nothing unusual there, as most product patents are "leaning" as they are built on other pre-existing patents. The Lightronics fixture is an obvious copy. Problem is, what may be obvious to us may not be obvious to a judge and jury. As a good friend of mine, who is a corporate lawyer says, "It is rare for this to turn out well for either company." In most cases, the battle drags out for years and costs a fortune. Such nuances as the leaning patens make for gray areas that confuse the legal process. Once again, my best wishes to ETC as they are at least standing up for themselves!



Actually, all the relevant patents in question are held by Cunningham and Esakoff (not "the lamp manufacturer") and exclusively licensed to ETC:

5,345,371
Re. 36,316

Please take a look at them to get the full picture--they tell the story.

ST


----------



## Lightingguy32 (Jul 23, 2008)

I too was wondering when this was going to happen. The lightronics copy has a body that looks a lot like the ETC S4 and it uses the HPL lamp. I saw an add online for them back in september 2007 and thought to my self "when are they going to get a lawsuit fired at them?"


----------



## Sean (Jul 23, 2008)

STEVETERRY said:


> Actually, all the relevant patents in question are held by Cunningham and Esakoff (not "the lamp manufacturer") and exclusively licensed to ETC:
> 
> 5,345,371
> Re. 36,316
> ...



Steve...

What makes the patent for:
"Lighting control system dimmer module with plug-in electrical contacts"
#5352958
different from the Colortran ENR's? Well, other than some material selection? I read through most of it, and nothing jumped out at me.

Just curious....

--Sean


----------



## SteveB (Jul 23, 2008)

Sean said:


> Steve...
> 
> What makes the patent for:
> "Lighting control system dimmer module with plug-in electrical contacts"
> ...



Cunningham designed the ENR for C-Tran, then turned around and sold the design to ETC as the Sensor, making the correct determination that the licensing agreement with C-Tran wasn't tight enough to prevent him from doing so. C-Tran sued and lost, big-time. 

Steve B.


----------



## derekleffew (Jul 23, 2008)

So it WAS the ENR dimmer that took down Colortran. I knew they should have stayed with the D192, which in both packs and racks, was a huge improvement on the CD-80. But if it hadn't been for the L-86, we might not be vertical today, "Standing Tall!"


----------



## Goph704 (Jul 23, 2008)

does anybody have a picture or some specs of the ERS's in question? I'm using a bunch of strand SL's that are pretty similar to ETC's themselves and I just want to see what the fuss is about.


----------



## jmabray (Jul 23, 2008)

ENR's took down Colortran, I thought, due to their tendency to melt and then catch on fire. Seeings as they were made from plastic, I always bought this story. Was I mistaken?


----------



## SteveB (Jul 23, 2008)

jmabray said:


> ENR's took down Colortran, I thought, due to their tendency to melt and then catch on fire. Seeings as they were made from plastic, I always bought this story. Was I mistaken?



Gotta do some digging, but I thought I read recently that the early ENR's had aluminum contacts of some such, and that was what heated up, melting the plastic and causing some melt-downs that totally burned out downtown Las Vegas. Just checking to see if Dereks's paying attention. 

Easy enough to retro-fit to copper, which is what Colortran did, but coming on the heals was C-Trans lawsuit against Cunningham and ETC, which they lost and which cost some million or some such. Eats into your cash flow and next thing they are owned by NSI of all things. 

Hoping someone can fill any any juicy details.

SB


----------



## Les (Jul 23, 2008)

In response to Goph704:

In this post I have added photos of each "optically modern" fixture I could think of, except the Selecon Pacific. These include instruments accused of being knock-offs. Which is everything except the first pic. 


ETC Source Four




Lightronics Ellipse


Altman Shakespeare


Strand SL


Leviton Leo


----------



## MNicolai (Jul 23, 2008)

It's a hard model to fit into your company's repertoire without getting called out for having jacked the design from someone else. Consider it, they all have the same features for the most part, in slightly different designs. Patent infringement is far more air-tight than the amount a company could easily design their way around. In my mind, Selecon is the only company to have replicated anything that's a far cry from the S4, but that's not to say that any single company should be blamed for not being able to produce anything else. You'd be asking each company to ultimately provide the same product, but maybe with a slightly altered bell or whistle.


----------



## gafftaper (Jul 24, 2008)

Remember Altman and Strand have paid a licensing fee to be able to use patented features of the design. So while they are similar they did it the legal way. Lightronics has not. 

I didn't know Leviton made one of these S4-like instruments... Does anyone know if they have paid the license or is it distinct enough to not require it?


----------



## Hughesie (Jul 24, 2008)

i knew the time was coming up. Next up American dj


----------



## derekleffew (Aug 2, 2008)

The founding of Electronic Theatre Controls, in Fred Foster's own words, as appeared in the March 2001 issue of _Live Design_.

 After high school, I went to the University of Wisconsin in Madison and started taking theatre courses. This was 1975, and Gilbert Hemsley was teaching, and so I took his courses. I was really much more into the technology and being an electrician, I think. I find that I can cue, I can do a light plot. But what ultimately is my downfall is color. Scientifically I understand color, but to this day my wife and daughter dress me. 
 Anyway, in one of the theatres at the college we had a Cue File [Thorn/Kliegl Q-File], which was this English product Kliegl sold that had three racks of electronics, not even a microprocessor in it, and it cost a quarter of a million dollars. I said to my brother, who’s a couple years older than I am and was at that point a physics undergraduate student, ‘Bill, you gotta come down and see this really cool computer.’ His direct quote was, ‘Gack! We can do this for $5,000.’ It was right after the first AD-80 microprocessors came out. 
So we got together with a couple of our friends and decided to build our own. Our nominal conception date for the company was at one of Gilbert’s parties on Christmas Eve in 1975. Gilbert’s parties were these wonderful, wild debaucheries where whoever he could bring into town—somebody from the Met, or Jack O’Brien—would be in his house, and graduate students and undergraduates would be there. He had gallons of Lambrusco and some kind of food cooked with a lot of garlic. 
 If you wanted to talk to Gilbert, you had to informally make an appointment and wait for your audience. Your audience with Gilbert would happen wherever, with whomever was around at the time. So I dragged the founders of the company—Bill, Gary Bewick, and Jim Bradley, and another friend of ours, Bob Gilson—over to this party to talk to Gilbert and propose that we do this. Somewhere well into the night, we went up and had the audience in Gilbert’s bedroom. Everybody listened to what we were going to do, and the general response was, ‘Yeah, sure. You can’t do a Cue File [Q-File].’ 
So we started buying parts or scrounging parts from the physics department, using the labs in the physics department or the basement of my apartment, and put this thing together through the course of that year. It generally broke down that my brother was writing software, Gary did the hardware, Jim did text editing and some things around the edges, and I was the theatrical input into it. 
 We didn't know what we were doing, and we didn't have a penny to do it. Sometime during the next year we needed to buy a disk drive. Disk drives were 8" floppy drives that held 150 kilobytes of data. They cost $1,500, and we all had to come up with money. We decided we'd each throw in $300 or $400, and get a quarter of the company. We still weren’t really a company at that point, but we were partners. We got a Protech floppy disk drive, so I went out to Bobby Gilson's shop and welded up the box to put it in, cut the crease panel out of a sheet of aluminum in my father's basement with a saber saw. My hands were bleeding from filing it. 
We went back to Gilbert’s on Christmas Day of 1976, a year and a day later. There was another party, and he had a big ham out on the table for the Christmas dinner. We put a 3' x 1' box with a monitor built into it that ostensibly did everything a Cue File [Q-File] did, right on the table. The reaction was, ‘Oh, [expletive deleted].’


So it appears as though every company gets its start via "inspiration" from another.


----------



## Darthrob13 (Aug 5, 2008)

derekleffew said:


> So it appears as though every company gets its start via "inspiration" from another.



Joseph Levy and Edward Kook would tend to agree with you.


----------



## derekleffew (Aug 5, 2008)

Darthrob13 said:


> Joseph Levy and Edward Kook would tend to agree with you.


 As would brothers John and Anton, I suspect. 
Even the illustrious ControlBooth itself was not immune from such accusations in its early days, as research indicates.


----------



## SteveB (Aug 5, 2008)

Now if someone could explain the whole Color Kinetics owns-the-entire-entertainment-LED-market thing. 

From what little I know and understand, they patented stuff that was essentially common knowledge and very basic stuff.

Seem like it tends to suffocate inovation.

Steve B.


----------



## gafftaper (Aug 5, 2008)

SteveB said:


> Now if someone could explain the whole Color Kinetics owns-the-entire-entertainment-LED-market thing. From what little I know and understand, they patented stuff that was essentially common knowledge and very basic stuff.
> 
> Seem like it tends to suffocate inovation.
> Steve B.



Someone posted a link a year or so back to all CK's patents and many of them are silly. How the US patent office can grant a patents like these is unreal. There were many patents on things that are extremely generic and things that were already in use before CK started doing them. Can't blame CK too much for trying to dominate the market when the patent office is so uninformed in how they grant them.

"DUH... OK... you can patent the ability to create visible light."

On the other hand we have the ETC situation where someone is blatantly copying an innovative technological breakthrough that is known and respected by everyone in the industry. What was going through Lightronics heads? "hmm... maybe no one will notice if we just copy the S4."


----------

