Tenkara USA sues knock off company
- This topic has 8 replies, 5 voices, and was last updated Jun 7, 2013 at 8:22 pm by
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So this is very interesting:
Speaking with my attorney hat on for a moment: infringement is a hard thing to prove on a generic item like a fly rod. It’s not like there’s a special chemical formula that one rod company uses and no other company has access to (unlike, say, polyethylene fly lines made by Monic versus polyurethane by Airflo versus polyvinylchloride by everyone else).
With a fly rod, all of the materials are commonly available and the differentiating factor is the *form* of the rod, constituted by the shape of the original mandrel (the inside form) and the number of times the graphite flag is wound around it, with variations on the internal layout of things like reinforcing scrim sheets.
If you read that article you can see that really the only reason Tenkara USA was able to truly identify the knock off was due to the comments of the competitor. If the competitor had simply said, ‘We’ve analyzed the Tenkara market and determined the rod we like best, and we’ve worked with a supply partner to bring you a brand spanking new rod at a competitive price,’ well, then there’s only so much Tenkara USA can do. In order to really prove infringement in a situation like that you would need to fully educate the court on your own secret processes and the intricacies of what makes one fly rod different from another. Ultimately you might have to do that with a *jury.* Let me tell you, that is not easy. Juries do a good job of averaging human experience… but I would not want to have to explain everything about how a fly rod goes together to an average person with no interest whatsoever in what I am trying to tell them.
I am glad Tenkara USA decided to do this. In my own dealings with their owner I noticed he was pretty feisty. Good. This is something where a rod company might be able to put the brakes on the knock off market a little bit. Having overseas knock offs is great for consumers who want to buy a fly rod but bad for future innovation.
Zach
Zach, This is most interesting. I couldn’t agree more with your position on knockoffs and their impact on domestic production and innovation. In fact, I’ve pretty much refused to by foreign goos if their is a US-made alternative. The main exception being Patagonia clothing. I know I pay a premium price for Scott rods or Simms waders, but I simply feel better knowing I’m supporting folks’ jobs in Montana and Colorado.
I assume the Denver-based store used ‘Tenkara USA’ in their advertising? I assume that ‘Tenkara’ alone is not a treadmarkable term any more than ‘fly rod’ would be? I also question the accuracy of the article where it states that Mr. Galhardo ‘singlehandedly’ introduced Tenkara to the US. The guy in New York, aka Tenkara Bum, may argue with that! Certainly Tenkara USA is going a fine of marketing and public relations for the technique and their products and I admire this. However, one can buy a myriad of tenkara rods from all the big Japanese manufacturers and many at $100 or less. Just look at AllFishing.com (http://www.allfishingbuy.com/Tenkara-Gear.htm) The selection and information on tenkara is so extensive that it’s confusing.
My tenkara rods are from Tenkara USA and I think they are good products. But, I wonder if Mr. Galhardo isn’t a bit egotistical to think that he introduced tenkara to the US? Afterall, Yvon Chouinard has been fishing tenkara since before Daniel immigrated to the US.
We probably ought to note that Tenkara USA itself imports rods, but they did all the legwork to get them developed and at least according to the article, they have an ownership stake in their foreign manufacturing plants. So they’re more akin to a Patagonia than to a Scott. (Simms makes its waders here but imports most of its soft goods, so they’re a hybrid).
But the bottom line is there are all kinds of companies overseas that can and will knock off a fly rod, and it’s good to see someone trying to hold the American partners of those companies accountable. It just isn’t fair for one company to do all the legwork and then have someone else swoop in, knock off the product, and get it made overseas.
Again speaking as a lawyer, I’ve dealt with this at times with companies making things like skeet throwers. From a practical perspective, those overseas partners are totally unassailable in the U.S. courts system. The only people who have their ass on the line if someone is injured by a faulty foreign-made product are the U.S. front companies (which mostly just advertise and distribute) and those front companies’ insurers. A lot of times the front company will simply declare bankruptcy and disappear (if it did not have insurance), then pop up again under another name elsewhere.
Again that’s in a liability situation involving actual injuries as opposed to a trade infringement suit, but nevertheless it is a good thing for companies to have to be responsible for the product they sell and to be held to the spirit of the law, which is what Tenkara USA is trying to do here.
Zach
It happens to fly tyers every day of the week. Cheap copies ripped off and peddled on the internet or copied by tying factories and sold under a different name.
Best Regards,
Beechy
Chris, I understand your frustration but I wonder if anything can be done about it. Fly patterns have always been openly shared – first in books and now on the Internet. My son occasionally has patterned picked up by Montana Fly Company. I’m always amazed to see them in catalogs and in stores that do not buy from MFC. But how are you going to “protect” a Comparadun? No doubt Al Caucci would like to have a nickel for every one sold in the past twenty years.
Equipment is an entirely different matter. The engineering and investment that people like Simms, Scott, and others put into product design, manufacturing, and just as importantly quality control should be protected. I hope Tenkara USA is success in their litagation.
Tenkara USA have done a stellar job of promoting Tenkara fishing with the videos ect.
The knock off crowd are scabs on the back of that work IMHO and don’t contribute to anything other than their own greed.To hell with them.
www.dsaphoto.com
A picture is thousand words that takes less than a second while a thousand words is a picture that takes a month.
<cite> @michael phillippe said:</cite>
Chris, I understand your frustration but I wonder if anything can be done about it. Fly patterns have always been openly shared – first in books and now on the Internet. My son occasionally has patterned picked up by Montana Fly Company. I’m always amazed to see them in catalogs and in stores that do not buy from MFC. But how are you going to “protect” a Comparadun? No doubt Al Caucci would like to have a nickel for every one sold in the past twenty years.Equipment is an entirely different matter. The engineering and investment that people like Simms, Scott, and others put into product design, manufacturing, and just as importantly quality control should be protected. I hope Tenkara USA is success in their litagation.
I agree – equipment and flies are entirely different. Each raises its own set of legal issues.
First, flies. There is little legal protection that one can practically have for fly patterns. In general, useful portions of a design cannot be subject to copyright protection (copyright generally covers independently developed creative expressions – like writings, photographs, music scores, music lyrics, sound recordings, etc., NOT portions of a design that are useful – there has been a lot of bickering over this in the fashion industry). Instead, those functional portions of a pattern would be within the scope of patent protection – however, given the volumes and economics of fly tying, pursuing patent protection is probably not feasible. To boot, many patterns may not even be patentable since they would fail the nonobviousness and novelty tests.
End result is, there is no practical protection for fly patterns. One caveat is that if someone copies the actual text of a flypattern or your photograph of a fly , you would have a copyright claim against them, but you would need to make sure the copyright was registered to make sure you are in the best position possible.
Second, rods. Know that reverse-engineering a product itself does generally NOT give rise to civil or criminal action. By reverse-engineering, I mean buying a product, taking it apart and figuring out how to replicate it (for instance, with a fly rod, that would be buying a rod, sawing it in pieces and measuring thickness of the walls at various points, diameter of the rod, and determining (if possible) the modulus layup of the rod). If you can do that, you should be free to replicate and sell the rod. However, you would not be able to do that if the replicated rods you are selling embodied patents of the original manufacturer (that would be patent infringement). The reverse engineering process is basically what chipmakers used to duplicate Intel chips way back when.
That said, if individuals in the supply chain such as contract manufacturers misappropriate the designs, trade secrets or know-how, then big problems can arise for both the contract manufacturer and the end-seller of the goods. There are various theories of misappropriation, breach of contract, unfair competition, etc. that one could throw out there (perhaps effectively). In addition, if the sales of the goods also use the same name or mark (or a substantially similar name or mark), there can be claims for trademark infringement and dilution as well.
Of course, as Zach says, most of the overseas manufacturers operate outside of the US legal system and, even if you have a good contract that clearly restricts the manufacturer from using your information or data, it will be difficult to police, not to mention enforce.
Scott does this stuff for a living–you guys can take it to the bank.
Poor fly tyers; they wouldn’t appreciate being told their inventions are obvious and non-novel. Unfortunately, it’s true. Even a creation as patently useful as the dumbbell eye created by Bob Clouser and then duplicated in practically every streamer ever since was more or less lifted directly from conventional fishing and repurposed.
Misappropriation of IP reportedly happens every day. I’ve talked to a LOT of rod manufacturers who expressed either their concerns about or their completely unwillingness to deal with Asian, especially Chinese, rod makers, even for low-end lines, due to the reality that their partner would be turning around and selling their special tech out the back door as a “knock off” or even as a different name brand.
We’ve talked before about the weird design-by-committee effect that can have, which a lot of people think is the reason the Chinese rods went from dog beaters to world beaters in basically the five years from 2003-2008. Suddenly all these different Chinese firms are working with these great international rod designers, then stealing, selling, collaborating, and generally engaging in an orgy of cross-pollination of rod building ideas, until you get re-badges coming in on shipping containers that can handle a 100′ cast in the Denver pool. All of that happened.
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