Norton trademark fght settled
April 21, 2003
Filed under Uncategorized
In March, Minneapolis-based Norton Motorcycle Company (NMC), previously operating as Freedom Motorcycles, announced that it had changed its name to Viper Motorcycle Company and released all trademark rights to the Norton brand in exchange for what company officials described as an undisclosed amount of cash and an end to all existing and pending litigation.
Freedom Motorcycles first acknowledged its plan to begin operations as NMC in August 2002. In explaining the recent decision to drop the Norton name, John Fiebelkorn, president and CEO of Viper Motorcycle Company, said ongoing federal court proceedings and related litigation made the status of the trademark too risky and uncertain to continue operations under the Norton brand.
So what happened to the Norton name and all of the associated trademark rights?
“Actually, I own the (Norton trademark) rights for the entire planet,” says Kenny Dreer, president and founder of Norton America, LLC, Gladstone, Ore. “It’s an extremely convoluted case, but Norton America, in February 2003, in court moderated negotiations, acquired the North American rights from five co-parties — including the group from Minnesota.”
In fact, following the recent deal for the North American rights, Dreer now owns the unencumbered Norton trademark rights for the U.S., Canada, England, France, Spain, Portugal, Italy, Germany, Poland, Czech Republic, Holland, Belgium, and what he calls a “slew of those ex Soviet Bloc countries.”
Dreer spent more than a decade restoring and customizing classic European sport motorcycles in Oregon under the name Vintage Rebuilds, Inc. In 1999, demand for his product appeared when Cycle World featured his custom-made Norton VR880 in a cover article. While the VR880 was simply a modified 30-year-old motorcycle, Dreer says numerous inquiries and 50 sold units bolstered his belief that the Norton brand could thrive.
“My involvement in the whole process initially started from a cease and desist order that was fired off to me following the Cycle World article in Sept. 1999,” Dreer says. “Little did anyone know that, four years later, we would own the marks.”
A tortured history
Dreer’s ownership of the Norton rights was a long and hard-fought battle. In fact, the federal court judge who presided over the case called it one with a “tortured history” that “involves a web of interconnected individuals, companies and transactions.”
In the late 1990s, a company called Norton Motors International (NMI) attempted to bring back the Norton brand. While there were a number of people involved — including, for a time, Fiebelkorn – court records show NMI was controlled by a Vancouver-based business named the Aquilini Investment group.
NMI’s bid to build a Norton motorcycle failed, however, and so, on April 7, 1999, NMI transferred all of its assets to a company called Norton Acquisition Corporation (of which Roberto Aquilini was a director).
On April 16, 1999, Norton Acquisition transferred all of its assets to Hallmark Properties, another Aquilini-controlled company. In exchange for the assets, Norton Acquisition acquired about 85% of the stock in Hallmark Properties and changed the firm’s name to Norton Motorcycles, Inc. Roberto Aquilini remained involved.
At that point, the story becomes a quagmire of court orders, motions, judgements and appeals involving Aquilini and his businesses, as well as a number of other former NMI shareholders and directors.
Then, in the middle of the ongoing court battle, on July 24, 2002, Vancouver-based Global Coin, Inc., a company owned and partly spearheaded by Roberto Aquilini, entered into a license and purchase agreement with Fiebelkorn’s Freedom Motorcycles. The deal would have allowed Freedom to obtain license rights to the Norton marks in North America and England with an option to purchase the marks for $2.5 million.
But who actually owned, and had the rights to sell, the Norton trademark rights following the failure of NMI?
“If you went to the U.S. patent office, you would have found that the Norton rights were filed with Global Coin,” says Terry Nesbitt, vice president of sales and marketing for Viper Motorcycle Company (formerly NMC). “So, we never had any doubt that what we purchased from the Aquilinis was real.
“But, because of a federal judge allowing yet another round of federal lawsuits, and although we purchased the trademark rights in a legitimate fashion, we decided it was no longer in our best interest to proceed with the matter.”
For the record, Nesbit says the Aquilini Group never had any management responsibilities in Freedom, NMC or Viper.
While Freedom Motorcycles, Global Coin, and others spent 2002 debating ownership of the Norton trademark rights, Norton America began development of what it named the Norton 952 Commando. Now, with the Norton name and associated worldwide rights firmly in place, Dreer’s goal, he says, is to have 100 of the completely proprietary Commandos for sale by early 2004.
“We have a five-year plan,” he told Powersports Business. “We are currently funding up, but we do plan to build a multiple model line-up off of a core platform. We are already starting to conceptualize additional, modern-based Norton, but they are still three or four years down the road.
“We’re not going to make any outlandish promises, but the Commando is up, it’s running, and it’s going through actual road testing and data acquisition analysis right now.”