A Bad Marketing Plan*Edited*
*****This post has been edited 12:41 Mountain Time. The patent holder's attorney has demanded that I remove the post. I have removed the offending statements, per the attorney's email to my attorney.****
There have been a lot of things going on in the world lately, and my problems seem quite small in comparison. However, I am being faced with some troubling challenges to the functional art that I create, potentially being forced to change how I decorate my work entirely. It’s not an organic evolution, but a jarring rip from my current path.
In mid-March I did a blog post and a Periscope broadcast about the process I was taught in 2007 and have used extensively in my work in the last four years. I was contacted via email by a woman who claimed that I was infringing on her patent by describing this process and telling my viewers and readers what products I used. This is the email I received (my ellipses):
“… I am contacting you because by promoting Bel decal paper in your periscope and online you are inadvertently encouraging infringement of my patent.
I am sure you were unaware that there is a patent on the laser decal process and that you would not intentionally infringe.
Bel decal is no longer including these infringing instructions in with their paper packs or online.
There are several ways we can rectify this issue. If you would like you can purchase decal paper from Fired-On Images and if you choose to promote any paper at all you mention just our product. Or if you are happy buying Bel decal paper and do not want to change over you can just remove references to Bel paper online and in your teaching and instead if you are mentioning any source info just say Fired-On Images Transfer paper as the one and only source. That way you will not be infringing and all will be well.
I also have a website which we are currently updating which will include a section promoting artists the laser decal process with links to their websites and stores…which I am happy to include you in.
If you would like a free sample of our product just send you address and I’ll be happy to send a sample pack.
I look forward to hearing from you…”
As you might imagine, I was quite astonished. I couldn’t imagine anyone (especially a potter) who would patent a process that tens if not hundreds of people use. After a bit of research, I discovered that, yes, indeed, she had a patent on the process. You can read it in full here: https://www.google.com/patents/US7622237 or here: http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=%2Fnetahtml%2FPTO%2Fsrchnum.htm&r=1&f=G&l=50&s1=7622237.PN.&OS=PN/7622237&RS=PN/7622237
This was the 3rd email:
“Please take instructions for laser toner decals off your blog. This is the last time I will warn you. If you look at Bel’s website you will see what they are allowed to say (after we settled our suit with them) No references to using iron oxide. I am the patented inventor of this process and sell products based on this invention. The fact that you use this process in your work makes you a direct infringer. I am not an ass and would not interfere with your own ability to sell your work. My objection is to posting instructions which encourages others to infringe. I do not want to have to spend money to sue you but if you leave me no choice.. I will get my lawyer involved.
If you want you can contact Bel and ask them about this.
If you do not think I am serious check this out.
***I have been told that it is not a marketing strategy, that the patent holder is enforcing her patent rights*** She sued her competitor, an artist that uses decals in his work, and the American Ceramic Society (the publishers of Ceramics Monthly and Pottery Making Illustrated) to force them to use her product and compensate her for infringing on this patent. I am unaware of what settlement came about due to this suit, though I do know that the source of waterslide decal paper that I use was forced to eliminate all instructions or implication of use on ceramics from their website and product. You can read the document she filed here: https://insight.rpxcorp.com/litigation_documents/11967428?fref=gc
I hired an attorney as it became obvious that she was stalking my blog, she had followed me on Periscope and she is also a member of many ceramics community forums on social media. At the behest of my attorney, I have withdrawn my blog post outlining the process and products that I use to create my decals along with the Periscope broadcast that I had also posted to my YouTube channel.
***You will find at the bottom of this post a list of artists and reference materials that used/described the process predating her patent application in 2005***.
I am limited now in how to proceed with the imagery in my work. As my attorney put it I have four options:
Endorse the patent holder’s product and feel free to use “her” method on my web site;
Comply with the patent holder’s demands and remove the offending information (which according to her attorney not only includes the paper, but the terms related to the material, the color of the decal once fired, and the printing process);
Face a patent infringement case in federal court…maybe $15K minimum…her patent expires in 7 years – and then “her” method is in the public domain; or;
Carefully restructure your web page to include only “her” patent information. That’s public information.
As perhaps you can imagine my responses are thus:
Ol’ Frosty the Snowman will be skating in Hell before I endorse her;
Yeah, okay, if I have to….
I would LOVE to take this woman to court to break her patent and prove she did not invent the process, but how the heck to I come up with $15-25K??
I am making the assumption that I am not the only potter this person has contacted with the threat of a lawsuit to ***enforce her patent*** I hope that anyone that has been contacted by her will know that according to her patent, “(s)tandard commercially available film coated water slide decal paper” will do.
***I've been told that the final statement in the unedited version of this blog post is 'False'. The patent holder's attorney is insisting that all contact made by the patent holder is in an effort to enforce her patent, not forcing people to purchase a product.***
Katherine Ross, “Prophylaxis/Hygene,” 1999, http://katherineross-artist.com/section/338316-Prophylaxis-Hygiene-1999.html
Paul Scott, “Ceramics and Print, second edition,” 2002, pgs 84-111, pgs 128 & 130
Paul Andrew Wandless, “Image Transfer on Clay,” 2006, various dated works, explanation of process pgs 40-41
Clay Arts forum thread, 2003, http://www.potters.org/subject61809.htm
These are the resources I was able to come up with in less than two hours of research with a little help from my friends. They all show that the now-patented process actually existed well before she filed her patent application.The person that I learned about this process from learned it in grad school at Indiana University in 2003-2004. You will not convince me this woman invented the process in 2005. I will add more resources as I discover them.