Friday, May 20, 2016

Some IP issues in the vehicle industry: from the Selden patent to the "Jake Brake"

Relevant to the topic of George Selden as a patent troll victimizing, among others, automaker Henry Ford, LBE wrote an article titled "Looking Backward" which appears at page 20 of Intellectual Property Today [IPT] in June 2001, which is about fifteen years prior to the present May 2016.

At the time of the litigation, the "Selden patent" had passed through the hands of electric car makers, and ended up in the control of an association of prior troll victims, who were competitors of Ford. Ford won on non-infringement grounds (not on invalidity of the "Selden patent") and at the time of Ford's victory, the Selden patent had about one year of life left. The Ford decision is reported at Columbia Motor Car Co. v. C. A. Duerr, 184 F. 893 (CA 2 1911).

Of relevance to other vehicles, the first Indianapolis 500 was in the year 1911. Ray Harroun’s Marmon Wasp was the winner, and a member of the pit crew was a man named Clessie Cummins. Indiana banker William Irwin was one of a Harroun’s backers and Irwin hired Cummins as a chaffeur and mechanic. In the year 1912, gasoline, in contrast to kerosene, was not readily available and Cummins began experimenting with kerosene as a fuel. By 1920, Cummins was producing a diesel engine, based on IP of Rasmus Martin Hvid. In 1931 a vehicle with a modified Cummins Model U engine, the Cummins-Duesenberg, finished the Indianapolis 500 with an average speed of 86.170 mph and is the only vehicle to complete the Indy 500 without a stop.

There is an interesting CURRENT ip issue related to Cummins, associated with the name "jake brake." Cummins developed the idea of the compression release engine brake in 1954, and tried to interest diesel makers, with little success. However, the Jacobs Manufacturing Company was interested. Some of these compression brakes may make loud noises and some communities have prohibitions of the form "no jake brakes." BUT, as wikipedia notes,
Jacobs claims that the use of the term "Jake Brakes" on signs prohibiting engine retarding brakes violates their trademark and discriminates against Jacobs brand products. IPBiz notes that Jacobs needs to fight uses of "Jake Brake" that would tend to make the term generic for all compression brake systems.

The website "business insurance" notes

The company's [Jacobs] success at enforcing its "Jake Brakes" trademark has gone beyond just challenging its use on highway signs. Mr. Stawski said Jacobs Vehicle Systems has raised the issue of inappropriate use in cases involving musical groups, race horses and snowboards, among others.

And, as it looks to protect its trademark, Mr. Stawski said his company has found the Internet to be a powerful tool in identifying possible violations.

In addition to explaining what Jake Brakes are and how they work, the Jacobs Vehicle Systems' Web site discusses the trademark infringement issue and asks visitors to the site to e-mail the company with information about any "brand-specific" street signs they've seen.

**A post at VLCT (Vermont League of Cities and Towns) highlights the issues involved:

“Jake brakes” are a type of engine compression brake used on heavy duty, diesel-powered trucks.

The term, “Jake brake” is actually a registered trademark for the brakes
made by the Jacobs Vehicle Systems Company. Therefore, posting signs that specifically
prohibit “Jake brakes” may be a violation of trademark law and/or may be considered
discriminatory since they would apply only to engine compression brakes made by
Jacobs and not to those made by other companies.

Some municipalities have a problem with noisy trucks, and have asked if they can post
signs prohibiting the use of engine brakes. The obvious problem with banning any type
of brake is the safety issue. Is it wise to prohibit the use of a safety system such as

The use of any engine compression brake without a muffler or with a defective or
“gutted” muffler will create excessive noise. Vermont prohibits the operation of a motor
vehicle on a public highway without a serviceable muffler. Any vehicle can be stopped
and inspected for a defective muffler. If there is a problem, the driver can be issued a
defective equipment ticket, just as he or she could for a missing taillight.

Federal regulations require that trucks emit less that 80 decibels of noise when they drive
by (as measured from 50 feet). Therefore, towns may also adopt noise ordinances with a
provision for noisy mufflers. The problem here would be the need for a decibel meter to
document actual noise levels.

So, the answer is not to ban “Jake brakes,” but instead to address the noise issue as
specifically as possible, without compromising safety.


All brakes made by Jacobs Vehicle (and trademarked as such) do not make noise, so a total
ban on "Jake Brakes" likely would exceed regulatory authority delegated to towns for health/safety issues
and would separately be constitutionally overbroad.

Apart from the trademark issue, is a ban on the use of compression brakes generally enforceable?
The use of compression brakes is not synonymous with the presence of noise.

[Purely for debate: does the Federal regulation on noise pre-empt local regulation, in view of the
safety issues? Likely not. Of trademarks, one notes that one can use a trademarked term in the context
of an accurate statement, such as "This perfume costs less than Chanel Number Five."]

Relevant links:


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