Colt Sues Bushmaster & H&K

[dischord]

Apr 21, 2004 17:10 ET

Colt Challenges Rivals' Illegal Marketing Practices

Connecticut-based Colt Strikes Back Against Copycat Manufacturers Bushmaster Firearms and Heckler & Koch

HARTFORD, Conn., April 21 /PRNewswire/ -- Colt Defense LLC today filed suit against Bushmaster Firearms, Inc. and Heckler & Koch and demanded that the two companies end their illegal marketing campaigns with respect to the Colt(R) M4(R) carbine.


In its lawsuit filed in the U.S. District Court for the Eastern District of Virginia, Colt cited acts of trademark infringement, trade dress infringement, trademark dilution, false designation of origin, false advertising, patent infringement, unfair competition, and deceptive trade practices. Colt is seeking injunctive relief and damages against the two companies.


Colt is the leading supplier of military and law enforcement weaponry and related products to the U.S. Government and many American allies. It holds a sole source contract to exclusively supply the M4 carbine to all branches of the U.S. military. Only Colt may manufacture an authentic M4 carbine; those made by others are imitations.


The M4 carbine evolved from the most combat-proven family of weapons, the Colt-developed M16 rifle. To develop this carbine, Colt at its own expense integrated 40 years of combat experience of the M16 rifle with advances in technology. Colt then offered this carbine to the U.S. Army that subjected it to a multi-year certification process before finally accepting it for use by American troops.


"This case is about the systematic efforts of Bushmaster and Heckler & Koch to confront us, not as competitors on a level playing field, but with unlawful marketing practices that misrepresent the nature of their products and disparage the products of Colt Defense," said Colt's President and Chief Executive Officer, Lieutenant General William M. Keys, USMC (retired).


"Colt's products have been the mainstay of the U.S. military for over 100 years, and have played a significant role in both World Wars and the Vietnamese conflict. Today, our products are in the hands of our elite forces in Iraq. Our reputation was earned the hard way, on the battlefield. And it is our battle-tested reputation that these defendants are attempting to exploit by selling M4 knockoffs," said General Keys.


According to the complaint, both Bushmaster and Heckler & Koch are intentionally and illegally blurring the distinction between their products and the products manufactured by Colt, particularly the M4 carbine. Both Bushmaster and Heckler & Koch have developed copycat versions of the M4 to profit from Colt's good name and reputation.


In a transparent attempt to mislead potential customers into believing that they are buying "American Made" products, Heckler & Koch, whose principal place of business is Oberndorf, Germany, falsely states that it will manufacture firearms in a plant in Georgia that does not yet exist. In fact, Heckler & Koch's manufacturing and engineering is performed outside the country, according to the complaint.


The complaint alleges that Bushmaster, which has no legal right or authority to sell to the U.S. military, has intentionally and illegally incorporated the look and feel of the Colt M4 into its "M4 type" carbine. By duplicating the appearance of a real M4 weapon, and employing calculated marketing that blurs the distinction between Colt's products and their own, Bushmaster deceptively markets its "M4 type" carbine to the civilian market and foreign governments, hoping that consumers will confuse the goodwill associated with the Colt brand with Bushmaster, according to the complaint.


The complaint also alleges that Bushmaster has plagiarized Colt's M16 and M4 parts numbers. By doing so, Bushmaster intentionally misrepresents to its non-military customers that Bushmaster parts are interchangeable with Colt's AR-15(R), M16(TM) and M4(R) products -- a misrepresentation that could have serious safety repercussions.


Colt Defense LLC is an American company with a direct lineage to the original company founded by Samuel Colt in 1836. Colt Defense products command a global presence as the weapons of choice in over 50 countries. Located in West Hartford, Connecticut, its manufacturing facilities are ISO 9001-2000 certified and quality-certified by the U.S. Department of Defense. The Colt name is famous in the United States and throughout the world, and has long been associated in the minds of military, civilian and law enforcement customers with high quality and innovation. Many of Colt's products have achieved legendary status. Over 9,000,000 authentic M16 rifles and M4 carbines have been installed for military and law enforcement use around the world.


Source: Colt Defense LLC

CONTACT: Carlton S. Chen of Colt Defense LLC, +1-860-244-1315, or
[email protected]


Web site:

http://media.prnewswire.com/en/jsp/...lines&criteriadisplay=show&resourceid=2668635

 

[Thumper]

Evidently, someone thinks there's gonna be lots of $$$ up for grabs come September.

 

[MaterDei]

Funny how they waited until AFTER the frivilous lawsuit bill's defeat to do this.
Can't we all just get along?

 

[dischord]

Funny how they waited until AFTER the frivilous lawsuit bill's defeat to do this.

That bill would not have stopped this suit (whatever the suit's merits otherwise).

 

[Nando Aqui]

Are Bushmaster and H&K the only ones making imitations? Sure seems that there are several others, though maybe not big enough.

 

[Destructo6]

I thought the "M4" designation and its configuration were government owned/controlled, putting the whole deal in the public domain.

Does Colt fear HK and Bushmaster that much?

 

[HankB]

To develop this carbine, Colt at its own expense integrated 40 years of combat experience of the M16 rifle with advances in technology.

Come on, now, give me a break - the M4 is just the latest in a long line of chopped M16s - not all of which originated at Colt's. Short barreled carbine variations of the M16 platform have been showing up for DECADES - unless they can show clear patent coverage for their variation - a valid patent that Bushmaster is clearly infringing - for Colt's to claim that ONLY THEY can make rifles with the M4's "look and feel" is absurd.

Bushmaster intentionally misrepresents to its non-military customers that Bushmaster parts are interchangeable with Colt's

I was under the impression that Colt's deliberately changed some things on the rifles it sells to non-military customers so that parts would NOT interchange easily - things like pin diameters and such. All I've seen from Bushmaster is that some models of rifle they sell to non-military customers are as close to "mil-spec" as they can sell to civilians. (To be truly "mil-spec" an M16 variant has to be a machine gun.) IIRC, some Bushmaster parts - such as uppers - may interchange with Colt's military lowers more easily than some of Colt's own uppers as sold to non-military customers.

Bushmaster, which has no legal right or authority to sell to the U.S. military

I'll bet this just means Bushmaster has no current contract, and if the military wanted to buy, Bushmaster would be ready, willing, and able, to sell. Colt's language makes it sound almost as if there's some injunction which would prohibit Bushmaster from selling to the military.

Heckler & Koch, whose principal place of business is Oberndorf, Germany, falsely states that it will manufacture firearms in a plant in Georgia that does not yet exist.

So when H&K states that they WILL manufacture here, they're lying, and have no intention of building a plant or rifles here? Colt's better have proof of this.

This kind of garbage from Colt's makes me want one of their products even less . . .

 

[treeprof]

Buncha crybabies. First the Italian SA clone makers, and now this. If Colt would get on with making quality arms at competitive (and by that I do NOT necessarily mean cheap) prices in sufficient quantities for the non-Gov't/LEO market, they would have little to complain about. Most of their problems are of their own making.

 

[Phantom Warrior]

The complaint alleges that Bushmaster... has intentionally and illegally incorporated the look and feel of the Colt M4 into its "M4 type" carbine. By duplicating the appearance of a real M4 weapon, and employing calculated marketing that blurs the distinction between Colt's products and their own, Bushmaster deceptively markets its "M4 type" carbine to the civilian market and foreign governments, hoping that consumers will confuse the goodwill associated with the Colt brand with Bushmaster, according to the complaint.

Soooo, if I make a gun that looks like another company's gun I'm guilty of "trademark infringement, trade dress infringement, trademark dilution, false designation of origin, false advertising, patent infringement, unfair competition, and deceptive trade practices"? You lay down five different hunting rifles and they are all going to look pretty similar (assuming same furniture and finish). If they look the same, so what? That just means someone recognized a good idea. As long as no trademarked names or proprietary designs are used copies are legal. Bushmaster is marketing their rifles as "M4 Type ."

Type: qualities common to a number of individuals that distinguish them as an identifiable class

Bushmaster is saying that their rifles have common qualities, not that they are identical. Here is the relevant webpage if anyone is interested. Colt's lawsuit is childish, definitely childish.

 

[Bobarino]

sounds to me like they're pretty ticked that the XM-8 will likely replace the M16/M4 and they want to squeeze a few bucks out of their competitors while they can. and wasn't the M16 developed by Eugene Stoner and later sold to Colt? Either way, if this is the case, how coem they're not suing every 1911 clone maker out there? there's probably more money to be had from that than going after HK that so far has only developed a few prototypes and hasn't actually even sold an M4 copy yet. whiners.

Bobby

 

[Jeff White]

It's just a straightforward trademark infringement case

That's right. Colt's owns the M4 name. They also have a sole source agreement as an addendum to Contract Number DAAF03-67-C-0108 which is the original 1967 Technical Data Sales and Patent License Agreement with the Army. This sole source addendum expires on June 30, 2009. Colt's has already successfully defended this in court against FNMI.

I don't think any of the other AR makers use the term M4 when referring to their product. That's probably why they weren't included in the current lawsuit.

I don't understand why so many of you think a company shouldn't have any right to to protect it's trademark and patents. That's all that's going on here. There were no AR15 clones sold in the US until after the initial patent Colt's had on the AR15 expired.

Jeff

 

[Wildalaska]

Whether or not a cause of action is frivolous is different from whether or not a cause of action is triable, and both of those questions are diffent from whether or not a casue of action will be proven.

Until one reads the pleadings AND undersatnds the law gverning the case, name calling and making judgements about the case are silly

WildreservingjudgementAlaska

 

[GigaBuist]

Don't worry guys, this has to be a joke.

The M4 carbine evolved from the most combat-proven family of weapons, the Colt-developed M16 rifle.

Now... 'cmon.

Intellectual Property (IP) law is rather confusing. Colt's got a TRADEMARK on their name and probably something on "M4" also. So, if Bushmaster makes references to the Colt M4 or some such thing in their marketing Colt actually does have a logical leg to stand on. It's infringing on their trademark.

It's not a patent issue at all -- a patent on the design would have expired years ago and there's not enough technological difference in an M16 and M4 that I'm aware of to warrant new patents. Can't be done -- it'd be like getting a new patent for every model of Glock. You don't get a new patent just for shrinking the thing down unless it takes some engineering to get that done.

I think think copyright comes into the discussion at all.

FWIW, I'm not a lawyer of any kind -- but I play with computers all the time (and get paid for it) so I've absorbed some of this stuff over the years.

 

[Henry Bowman]

Dear Bushmaster and H&K,

I am an available and qualified IP attorney/litigator. I will barter for my services. (Will work for guns.) Please PM me if interested.

 

[Mikul]

To develop this carbine, Colt at its own expense integrated 40 years of combat experience

and a purchase of the entire design from Armalite.

 

[Mac Attack]

The M4 carbine evolved from the most combat-proven family of weapons, the Colt-developed M16 rifle.

I thought the M16 design was made by Armalite. If Colt is suing the others for patient infringements shouldn't Armalite do the same thing to Colt?

Mac

 

[BigG]

Hey, I think the Colt trademark is worth something and should be defended. AR15 and M4 are also registered trademarks of Colt. The same is true for the S&W logo. Guys who make clones of weapons made famous by others are pirates, imho. I will not buy inferior trash that looks like a trademarked original just because it's cheaper. If it's toilet paper or Kleenex, or chewing gum, fine. If it's a piece of hardware, you can forget it I don't buy that many and can't afford a cheap knockoff. YMMV.

 

[AZ Jeff]

Armalite sold the entire IP assoicated with the "AR-15" brand of rifle back in 1959 to Colt. Thus, Armalite (whose IP was bought by Eagle Arms a few years ago, has no legal grounds upon which to go after Colt now.

JEFF WHITE--I am surprised that the term "M4" is a trademark of Colt. The term "M16" is most certainly NOT a trademark of theirs, as it was a nomenclature assigned by the DOD. Likewise, I though "M4" was a designation assigned by the DOD, and hence cannot be considered a trademark.

 

[Justin]

In other news, Armalite is set to sue Colt for 'trademark dilution' due to their use of the term AR15*.



This is really quite assinine.


*For those not in the know, the AR15/M16 was originally designed by Armalite. The AR in AR15 stands for the namesake of the company that developed it.

 

[BigG]

Boy, the stuff is really getting deep. ArmaLite was how the old company spelled its name. The whole ArmaLite AR15 shebang was sold at firesale prices to Colt back before many of you disinformed were born. The Armalite manufactured now has no connection with ArmaLite.

ArmaLite could not give the AR15 to anybody, believe me they tried. The USA had adopted the ill conceived 7.62mm M14 product improved M1 rifle. Everybody else had adopted the FAL. Colt took 5 years to iron out the bugs and get it into the US inventory. At least give them some credit.

 

[Jeff White]

Gigabust said;

It's not a patent issue at all -- a patent on the design would have expired years ago and there's not enough technological difference in an M16 and M4 that I'm aware of to warrant new patents. Can't be done -- it'd be like getting a new patent for every model of Glock. You don't get a new patent just for shrinking the thing down unless it takes some engineering to get that done.

Colt's has already fought the patent issue with the Army and won. The Army naturally thought what you stated, that there wasn't enough difference in the two designs to give Colt's the sole source deal. The following is from Black Rifle II The M16 into the 21st Century by Christopher R. Bartocci and just released from Collector Grade Publications. The following is on pages 85 through 87:

As of this writing, the M4 carbine is produced for the US government solely by Colt Defense LLC as an item proprietary to Colt. This sole source award resulted from an earlier dispute between Colt's and the US Army over whose technical data had been used to develop the M4. As discussed above, although the M4 shares considerable parts commonality with the M16 and M16A2 rifle ("M16"), it also contains many critical and unique parts which were developed by Colt using it's own private resources.

The government originally contended that the M4 was nothing but a variant of the M16, and that therefore it should fall under the 1967 Technical Data Sales and Patent License Agreement, Contract no. DAAF03-67-C-0108 (1967 Licence). Since the royalties under the 1967 Licence had already been paid in full, the Army argued that no royalties were payable on the M4, and that it could bid out the procurement of the M4 to third parties. Colt proved otherwise, and therefore the Army in settlement agreed to recognize that the M4 was not part of the "Family of M16 Weapons" but was actually part of a new "Family of M4 Weapons". Colt's and the Army formalized this recognition via a so-called "M4 Addendum" to the 1967 Licence.

However due to the number of non-standard M4 components, Colt has provided the M4 Technical Data Package (TDP) to the government, with the stipulation that they are not allowed to use it for the purpose of solicitation for competitive bidding until the sole-source agreement with Colt is fulfilled on June 30, 2009.

FNMI Challenges Colt's Sole-Source M4 Production Contract

Not withstanding the above, FNMI (FN Manufacturing, Inc.) commenced an action against the government in the US Federal Court of Claims in 1998 to challange the sole-source contract awarding production of the M4/M4A1 carbine ("M4") to Colt's Manufacturing Company Inc.

FNMI had soon found that the Army had granted the "M4 Addendum" to Colt, and that the "critical and unique" portion of the M4 technical data was proprietary to Colt. This came to light when, on March 19, 1998, the Army, through ACALA (US Army Armament and Chemical Aquisition and Logistics Activity), published an electronic CBD (Commerce Business Daily) announcment on the Internet of it's intent to make a sole-source award to Colt's for the M4, and stating that the sole-source award was being made due to the government's "lack of data rights". A footnote to this announcement stated that "while this notice of intent is not a request for competitive proposals", a third party could submit a capability statement or a proposal within 45 days after publication of the CDB notice. Four days later , ACLA published the same announcement in a hard-copy CDB.

On May 5, 1998, the Army published another electronic notice to the effect that the award had been made to Colt's. The following day, FNMI delivered a proposal to the Army claiming that it was capable of producing the M4 for the Army. The Army rejected the proposal as untimely, since it had not been submitted until 47 days after the Internet posting, although only 43 days had elapsed since publication of the hard copy notice. Thereupon, FNMI filed a protest with the US Court of Federal Claims, seeking to enjoin the government from awarding the sole-source contract to Colt's.

FNMI cited the following three grounds for it's protest:

1. The Army had failed to consider FNMI's "timely expression of interest";

2. The sole-source award "failed to consider alternative competitive procedures";

3. The award to Colt's was based on "unenforceable data rights restrictions", and therefore the M4 Addendum was an improper "giveaway" of the government's rights and as such was invalid.

In turn, Colt's entered the litigation as an intervenor and filed a motion to dismiss on the grounds that FNMI as the offeror lacked standing to protest, and that the protest was untimely. Both the government and Colt's argued that there was nothing improper in using the Internet date to calculate the 45-day submission period. The court disagreed, concluding that FNMI's bid had been received in a timely fashion, since there could only be one publication date applying to all offerors and the applicable date was properly the date that the paper version was published, not the date of the internet posting.

The court next considered the adequacy of FNMI's unsolicited proposal. The government argued and the court agreed that FNMI did not supply the government with sufficient information to justify a decision to stop the sole-source procurement in favor of putting the M4 out for competitive bid. The court noted that, while FNMI had experience in the production of the M16A2 rifle, it had no experience in manufacturing the M4, and that it's familiarity with the M4 carbine was confined to "technical information FNMI has been able to obtain through public documents (marketing brochures, data sheets, and field involvement)".

The most important issue raised and settled in this litigation concerned the technical data rights to the M4. The question was whether the government's agreement with Colt's to enter into the M4 Addendum was an improper attempt to "evade" the Competition in Contracting Act, 10 U.S.C. 2304, et seq. (CICA). FNMI sought a declaration from the court to void the award of the sole-source contract to Colt's, on the ground that the government had no authority to agree to a contract which established a contractor's exclusive ownership of the technical data rights.

FNMI also contended that in relinquishing any technical data rights, it might have negotiated for the M4, the government was in violation of the CICA, in particular 10 U.S.C.S. 2320(a)(2)(A), which states that if an item or process is developed by a contractor or subcontractor exclusively with federal funds, the the government possesses unlimited rights to use technical data pertaining to that item or process, and retains the right to release or disclose the technical data to persons outside the government, or permit it's use by such persons.

Vindication for Colt's M4 "Family"

The court allowed that if the M4 had indeed been developed using a mix of government and private funding, the government clearly would have the right to relinquish any rights it might have otherwise negotiated. FNMI contended that the M4 Addendum , which limits competition until July 1, 2009 at the earliest, ran afoul of the CICA and was therefore illegal. Under the M4 Addendum, if Colt's were to lose the sole-source contract, royalties would still have to be paid by the government on it's M4 aquisitions until December 31, 2050, at which time such royalties would be paid up but it's licensed rights to the M4 would continue.

However the court found that there was compelling evidence to the effect that the M4 had been developed exclusively at Colt's expense. Moreover, it concluded that the development of the M4 technical data did not involve mixed funding, and therefore the M4 technical data was not an enhancement of the M16 data under the 1967 License. Consequently, the court held that proprietary rights to the M4 belonged to Colt's, and furthermore the court upheld Colt's contention that the M4 was not merely a deriviative of the M16, but in fact and entirely new weapon system.

The court's final decision came in three parts as folows:

1. The government had the right to recognize that the M4 technical data belonged to Colt's outside of the 1967 License.

2. In settling it's dispute with Colt's the government had properly entered into the M4 Addendum; and therefore,

3. The M4 Addendum did not violate the CICA and was fully valid and enforceable.

Based on the foregoing, FNMI's action for injuctive relief was denied, and it's complaint dismissed. FNMI did not appeal.

The M4 is not just a cut down M16. There are lot of small components that had to be changed to get the weapon to function right in burst mode.

Jeff

 

[AZ Jeff]

Well slap me silly. I gotta get that second volume from Collector Grade. That's some interesting new stuff.

Thanks, JEFF WHITE!

 

[voilsb]

The M4 is not just a cut down M16. There are lot of small components that had to be changed to get the weapon to function right in burst mode.

Jeff

So, other than the extended feedramps, what were they? Are these only necessary for burst mode, or also for full-auto? In other words, if the Army dumped a 14.5 inch barrel and a flat-top upper on an M16A1, would it work? What about an M16A2? A full-auto M16A3? If not, what's the problem? Feeding issues necessitating the extended feedramps? Gas tube timing issues? Buffer spring problems?

 

[Glock-A-Roo]

And in other news, Honda is suing Toyota for making midsized, affordable, reliable sedans...

What a bunch of crapola. We all know Bushmaster never said they made M4s, and the rest of Colt's claims are mularkey to those who know the AR15 platform.

Legal nitpicking aside, why has HK's M4 improvement program worked at all? Because the M4 has plenty of room for improvement. Why has Bushmaster made money on its AR15 clones? Because in general they perform as well as any Colt, at a fraction of the price, and with 1000% (yes, that's one thousand percent) better customer service. Sure, some secret squirrels (tm) say they prefer Colt, but they're spending taxpayer money, not their own.

Anyone who says that Bushmaster is a cheap, unreliable knockoff of Colt is full of shiite. Either they are outright lying or they are remarkably ignorant... or both.

Colt has sat on their butt for too long, catering only to Uncle Sam, and they are now desperate.

 

[Jeff White]

The M4 uses a different buffer then the standard carbine. The M4A1 (full auto) uses a heavier buffer then the M4. The upper receiver has the feed ramp cuts in it. There is a different extractor spring with a black nylon insert. The semi-automatic disconnector uses a different spring then on the full size rifles. The burst cam has been changed and is now nickle plated to differenitate it from the one used in the M16A2/M16A4.

Then there are the obvious changes, stock, handguards, barrel length etc.

Jeff