I just learned that Kerry Culpepper of Culpepper IP just filed the RARBG trademark — probably with the intent of suing the 10+ year old RARBG website for trademark infringement. How do I *NOT* comment on an underhanded action like this?!?

I have been speaking about “copyright trolls” for over 10 years — Kerry Culpepper of Culpepper IP certainly has been the subject of our articles for many years now.

…Whether Kerry Culpepper is suing internet users who use bittorrent on their computers to view, stream, or download copyrighted movies belonging to his movie clients… or

whether his Culpepper IP law firm is suing CELL PHONE USERS for streaming movies using piracy apps…

or whether Kerry Culpepper is using Hawaii’s Rule 512(h) to skirt the Federal Rules of Civil Procedure’s expedited discovery rules and expose the identities of ISP subscribers…

or whether his Culpepper IP is suing YTS / 133x.to bittorrent trackers and/or piracy websites…

or whether Culpepper is sending subpoenas to Cloudfront to determine which IP addresses viewed his movie clients’ films without a license (because like Google Analytics, Cloudfront tracks which IP addresses visit which sites)…

Culpepper IP is the Hawaii-based law firm which is sending letters to internet users accused of VISITING a particular website, and downloading a movie which is copyrighted by his clients.

* 9/16/2020 UPDATE *: Joshua Lee of Culpepper IP is a first year associate working under Kerry Culpepper’s direction. Joshua Lee is also the name which is appearing on many of the Culpepper IP settlement demand letters, so I am mentioning him here.

CULPEPPER IP TRADEMARKS NOW FILED IN THE NAMES OF PIRACY WEBSITES

Now Kerry Culpepper is filing Culpepper IP trademarks which directly conflict with the names of piracy-based websites, companies, and bittorrent trackers.

To accomplish these new Culpepper IP trademarks, Culpepper is claiming that the piracy websites are not using the trademarked named in a way that can be recognized by the US Patent and Trademark Office (“USPTO”) as lawful use.

“Culpepper IP Trademark Claim: [The trademarked name] is not lawful use in commerce because the use of RARBG by the piracy websites is unlawful under federal law.”

MY THOUGHTS ON CULPEPPER IP TRADEMARKS:

As a registered patent attorney who has followed the rulings of the USPTO’s Patent Trial and Appeal Board (“PTAB”) my entire law career, I absolutely MUST have faith that the USPTO’s Trademark Application examiners will see that Culpepper IP trademarks are merely an attempt to engage in a settlement negotiations against accused internet users in the federal courts.

*9/17 UPDATE* – Alternatively, it has recently occurred to me that the Culpepper IP trademarks of the piracy website names will be used by Culpepper to take over the DOMAIN NAMES of the piracy-based websites. With millions of visitors each day, that kind of traffic can be worth millions of dollars to Culpepper and his clients, if only considering ad revenue.

If he takes over the websites and diverts the traffic to begin PAYING for lawful copies of the copyrighted content, e.g., in a movie subscription-based service, again, this could be worth millions of dollars to Culpepper and his clients.

“A TRADEMARK APPLICANT STILL CAN REGISTER AN APPLE TRADEMARK AS LONG AS IT IS NOT IN AN AREA OF PRACTICE COVERED BY APPLE, INC.”

I’ll say that again. A trademark applicant can still register the APPLE trademark name, even though Apple, Inc. already owns the APPLE trademark.

How is this possible, you might ask? All trademark applications must include “Trademark Classes.” These trademark classes identify in what area the business or trade intending to use the trademark will be using the mark (trademark).

Thus, if you are starting an “Apple” cleaning business where you intend to send your maid cleaning services to clean people’s homes, well, you are allowed to use the APPLE trade name.

LIKELIHOOD OF CONFUSION

To determine whether the applied-for trademark conflicts with (or “infringes upon”) an already trademarked name, the USPTO trademark application examiner will ask whether there is a “likelihood of confusion” between the already trademarked mark and the newly applied for trademark.

In other words, if someone buying your APPLE cleaning services might think that you are affiliated with Apple, Inc. — the APPLE trademark holder who sells APPLE COMPUTER PRODUCTS, PHONES, …and the expanding list of everything else they do, well then your APPLE trademark application will be rejected.

WHY CULPEPPER IP TRADEMARKS MIGHT FAIL

Kerry Culpepper of Culpepper IP is also a patent attorney, meaning by definition that he likely also knows the “soft intellectual property” laws and rules cold. Thus, his Culpepper IP trademarks no doubt are following the trademark rules.

If I were in Kerry Culpepper’s shoes and I was a “crafty” attorney, I would make sure that my Culpepper IP trademarks will claim to be a business PRACTICING IN AN AREA THAT IS DIFFERENT FROM and CANNOT BE CONFUSED WITH the piracy-based websites I intend on using for whatever profit motive Culpepper IP trademarks have in mind. Thus, I would use TRADEMARK CLASSES in my Culpepper IP trademarks that have nothing to do with what the piracy-based bittorrent websites are using.

But Kerry Culpepper is brazen. Thus his Culpepper IP trademarks approach is also brazen.

His Culpepper IP Trademarks list the TRADEMARK CLASS as “Downloadable computer software for downloading and streaming multimedia content images, videos and audio.” …EXACTLY what the piracy-based websites are doing.

KERRY CULPEPPER IS ENGAGING IN A TAKEOVER OF THE PIRACY TRADE NAMES.

In other words, his Culpepper IP trademarks campaign is engaging in a “legal takeover” of the RARBG TRADE NAME.

Instead of claiming a different TRADEMARK CLASS, Kerry Culpepper is claiming the IDENTICAL business as the piracy websites are using. He is doing so by claiming that these piracy-based websites have absolutely no trademark rights because by definition, their operations are illegal (because they engage in copyright infringement).

In other words, the anti-theft anti-piracy lawyer is “stealing” the trade names of piracy based websites and bittorrent trackers.

WHAT CULPEPPER LIKELY PLANS TO DO IF HE SUCEEDS WITH HIS TRADEMARK FILINGS.

Again, Kerry Culpepper is crafty, wicked smart (in a bad way), and is always many chess moves ahead of his opponents. I have no doubt that he is doing this for a very specific set of purposes.

WHETHER KERRY CULPEPPER SUCCEEDS OR WHETHER HE FAILS, THIS AND THIS (SUCCESS *AND* FAILURE) ARE LIKELY BOTH HIS PLAN.

IF CULPEPPER SUCCEEDS:

IF CULPEPPER SUCCEEDS: If Kerry Culpepper and his Culpepper IP trademarks succeed in getting the piracy-based trademarks awarded to him, he will no doubt try to take over the RARBG domain names (along with the YTS and 133x.to domain names) claiming that he is the rightful trademark owner of them.

By taking over the domain names, he will automatically gain the viewership of MILLIONS of internet users WHO WANT TO SEE THE MOVIE CONTENT his RARBG replacement website will happily provide them… legitimate lawful movie content for a per-title-fee or a monthly subscription.

In other words, his Culpepper IP trademarks mission would be to convert MILLIONS OF PIRATES INTO PAYING CUSTOMERS. Is it no surprise that 42 Ventures lists Kerry Culpepper as the Director of this enterprise?

WHEN HE WINS, THE REAL PAIN WILL BEGIN

Once Kerry Culpepper wins the rights to the trademark, then the real enforcement will no doubt begin. [Can a scorpion change its nature to sting?]

I have no doubt that if his Culpepper IP trademarks campaign succeeds in getting awarded the trademarks, he will then approach the piracy-based website owners [who will likely be ignorant of the laws and will continue to use their trade name] and he will have them settle his claims against them for millions of dollars.

He will then go after their internet users. He will obtain subpoenas to determine who the ISP internet subscribers are who were assigned that IP address visiting the piracy-based website [to which he now owns the trademark for], and he will assert copyright infringement and trademark infringement claims against each-and-every internet user who uses his newly-trademarked name.

He could then ask for thousands of dollars from each internet user, and he could sue the ones who do not settle (or purchase his new services) in federal courts across the US.

IF CULPEPPER FAILS:

IF CULPEPPER FAILS: If Kerry Culpepper fails in getting the piracy-based Culpepper IP trademarks awarded to him, he will either change his approach [e.g., by claiming a DIFFERENT TRADE CLASS] and he will re-submit his trademark application and try again.

Or, he will continue to go after internet users who visit the piracy-based websites. He will obtain subpoenas to ask Google Analytics or Cloudfront to share the IP address of the various users who visited the sites where his client’s movies were downloaded. He will then obtain their identity by determining who the ISP internet subscribers are who were assigned that IP address visiting the piracy-based website.

Once he applies this two-step solution, he will assert copyright infringement against each-and-every internet user who visits the piracy page of his client’s copyrighted movie titles.

ALTERNATIVELY:

ALTERNATIVELY: Honestly, I do not know. When I wrote the article in 2017 explaining that a copyright troll can obtain the IP address of those internet users who visit their client’s copyrighted site using Google Analytics (or now, Cloudfront), I did not anticipate that an attorney would actually do this.

There are so many thousands of users that STILL use bittorrent to download pirated movies, and the federal courts across the US are still happily entertaining bittorrent-based copyright infringement lawsuits (well, if I recall, not necessarily in Hawaii where Culpepper is located).

Thus, the whole two-step approach [of 1) obtaining the IP address of the internet user who visited the piracy-based website by sending a subpoena to Google Analytics or Cloudfront, and then 2) sending a subpoena to the ISP to determine the identity of the IP address account holder who was assigned the IP address on that particular time] seemed extremely inconvenient. I actually thought it was prohibitive at the time, so I did not think it would be done.

But Kerry Culpepper’s focus has not been only the end-users who viewed his client’s copyrighted titles without a license, but if I understand correctly, his focus is on soliciting multi-million dollar settlements from the piracy website owners, the seeders/uploaders of the copyrighted content, and those hosting the bittorrent trackers on their websites. In other words, the deep pockets. End-user internet users are merely a secondary “dessert.”

THE UNKNOWN:

THE UNKNOWN: I must also make mention that I honestly do not know what Kerry Culpepper is ever up to. As I mentioned above, he is wicked smart, and while he is brazen and makes no secrets as to what he intends to do, I can never figure out what the next FIVE OR TEN STEPS ARE that he has in mind. Because again, like a chess player, my experience in watching him over the years is that he is always thinking many steps ahead of his opponent.

Thus, I *must* assume that his most recent trademark filings have plans for both IF HE SUCCEEDS and IF HE FAILS.

I must assume that Culpepper has a plan why he wants to be rejected by the USPTO trademark examiner, e.g., so that he can USE that rejection AGAINST SOMEONE for some purpose he has already thought of (but that I cannot figure out).

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