The Club, the red batonlike automotive anti-theft device, has beaten a path to extraordinary success despite a collection of similar products now crowding the market.
But Kryptonite Corp. of Canton, Mass., says the Club has unfairly wielded the threat of lawsuits to force its "Steering Wheel Lock" off the market.Winner International Corp., the Sharon, Pa., company that produces the Club, threatened legal action because Kryptonite's red steering-wheel device allegedly infringes on the Club's distinctive look - or "trade dress," in legal terms.
But Kryptonite sued Winner International instead, asking a federal judge in Boston to rule that the Steering Wheel Lock does no such thing.
The court action, filed last month, also accuses Winner International of trying to interfere with the relationship between the Canton company and one of its sellers by threatening the distributor with legal action if it continued to market the device.
Kryptonite wants "to be able to compete in the marketplace in a straightforward way without a giant coming in and intimidating its advertisers or sellers," said Robert D. Kozol, a lawyer representing the company.
Winner International declined to comment Wednesday. "Because the matter is in litigation at this point, we are not able to comment on the case," said David C. Casey, a Boston lawyer representing the company.
Kryptonite is a newcomer to the Club's turf. Winner International's product can be found on 10 million steering wheels across the country and has been touted by such pitchmen as Paul Harvey and Rush Limbaugh.
While there are dozens of similar devices on the market, the Club is said to command up to 75 percent of steering-wheel-lock sales with gross revenues of more than $100 million.
It's no wonder that Winner International, a privately held company, has aggressively pursued competitors over the issue of "trade dress," which covers not only the product's appearance but its packaging, advertising and promotion.
Enter Kryptonite, a success story in its own right. Named the Small Business of the Year in 1991 by the Greater Boston Chamber of Commerce, the company's bicycle U-Lock has won various design awards and, ironically, has inspired its own imitators. With success in the bicycle and motorcycle security device market, the company seeks similar results with its steering wheel security device, introduced last fall.
"This is not a Johnny-come-lately company trying to ride the coattails of other companies," said President Peter Zane. "We would not have brought this suit had we not felt aggrieved by Winner contacting a customer of ours and declaring war on us," he said.
Last November Winner International wrote a letter to Beverly Hills Motoring Accessories, which markets the Kryptonite device in catalogs and stores to affluent motorists, to halt all sales of the product. Kryptonite had received a similar letter a year earlier.
Zane says his product and its packaging are markedly different from the Club's. The Kryptonite product, for example, has "handcuffs," or closed loops, around the steering wheel, compared with the Club's open-ended "hooks." The Kryptonite product, made in Canton, uses better materials than the Club, which is made in Taiwan, he said, adding that such differences justify Kryptonite's higher price, ranging from $69.95 to $89.95, compared with the Club's $59 and less.
At the moment, the heat over the devices has subsided somewhat. Winner International has agreed to take no further steps to dissuade Kryptonite's distributors, sellers or buyers, until a U.S. district judge can hear arguments in the case. No court date has been set.
"It's also within the realm of possibility that we may resolve this matter, hopefully," said Kozol, Kryptonite's attorney.