HALO Keyswitch: who owns and can sell them?

[WMGroomAK]

So, it's a little bit grey as to who has control over the use and sale of the HALO keyswitches based on an article on Tom's Hardware, where basically the Input Club is in a dispute with Massdrop on being able to use the Halo switches on their latest keyboards being offered on Kickstarter. 

 

http://www.tomshardware.com/news/massdrop-input-club-halo-switches,35468.html

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Input Club, a small collective that’s produced several popular keyboards, including the WhiteFox and K-Type, has worked with Massdrop on group buys in the past. The two companies also collaborated to create the Halo series of switches. (Previously, we were not aware that Massdrop was involved in that process.)

Because of some undisclosed issues between the two, Input Club opted to use Kickstarter for its latest group buy, for the latest generation of the WhiteFox. In that Kickstarter, the switch options were limited to Kailh Blue or the Input Club-designed and Kaihua-made Halo True or Halo Clear switches.

However, Massdrop asserted that by offering the Halo switches, Input Club was in violation of the patent and licensing agreement they’d made. That launched a drama that is currently unfolding.

In an update on its WhiteFox Kickstarter page on Thursday, September 14, Input Club stated in part:

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We (Input Club) developed and invented the Halo switches, and worked with Massdrop to finance the physical tooling that allows them to go to mass production. We assigned Massdrop the patent rights in exchange for a royalty and a “license-back” that we believe allows us to source the switches for use in keyboards. But when we tried to order switches for the WhiteFox/NightFox, Massdrop would not let us source them. They then claimed to own the “Halo” name and asked us to give up the license-back altogether, so we would essentially lose all access to our own invention.

This morning, September 15, Massdrop posted an official response, which reads in part:

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As you may know, for some time Input Club has collaborated with Massdrop in the design of Massdrop's HALO switch. Throughout our relationship, Input Club has acknowledged they are the "Designer" of the HALO switch, with Massdrop as the "Manufacturer and Distributor" of the HALO switch.

Along the way, Massdrop spent tens of thousands of dollars, dozens of hours, and many domestic and international flights to help bring this concept to life. In our agreement, in exchange for this effort, Input Club agreed to receive a royalty from Massdrop from the sale of the HALO switch and Massdrop would be able to exclusively manufacture and distribute the switch.

In our agreement for the HALO switch, Input Club requested an exception to our exclusive distribution rights to allow them to offer switches directly to end customers as replacement parts and as standalone switches via their website. This was a reasonable request, so we agreed and wrote it into the agreement.

 

Basically, Massdrop is saying that Input Club can only sell key switches outside of Massdrop as replacement parts, standalone switches or from the Input Club's website.  What makes this interesting is that I would presume that the Input Club would eventually make any Kickstarter boards available through their website and therefore be meeting the sale from Input Club site...  Sounds like both sides could have an argument on this and maybe they just need a mediator.

[Notional]

How incompetent do you have to be as a manufacturer, to give away your patent to your own invention? Sorry Input Club, it's not your invention anymore, it's Massdrop's. 

[HalGameGuru]

Wait is the problem that they are trying to sell through kickstarter or that they are trying to have them made by Kaihua rather than through Massdrop? Or is Kaihua the manufacturer anyway and massdrop merely a distributor? But, they cannot make any product that incorporates those switches outside of massdrop? What lawyer let them sign that deal?

[WMGroomAK]

Just now, HalGameGuru said:

Wait is the problem that they are trying to sell through kickstarter or that they are trying to have them made by Kaihua rather than through Massdrop?

It would appear that the issue is that they are trying to sell the keyboards with HALO switches through Kickstarter as opposed to being a Massdrop.