An interesting case that demonstrates the potential reach of copyright.
According to a press release issued by Huddleston Deluxe, Inc., the famed bass fishing swimbait company filed a patent infringement, copyright infringement, and unfair competition lawsuit April 10, 2018 in the U.S. District Court for the Northern District of California against Bass Pro Shops.
Huddleston Deluxe has asserted U.S. Patent No. 7,627,979 (“the ‘979 Patent”) titled “Fish Lure with Vortex Tail,” against the XPS brand “SLO-MO” swimmer product of Bass Pro Shops.
. . . .
(Continuing with the Huddleston press release)
The lawsuit alleges that certain Bass Pro products sold under the XPS brand, which are distributed online and in Bass Pro Shops retail stores throughout the nation, incorporate Huddleston’s patented swimbait invention and copy Huddleston’s distinctive design, which was made from a hand-carved fish prototype.
. . . .
Huddleston Deluxe has also asserted claims for copyright infringement and unfair competition in violation of California Business and Professional Code §§ 17200, et seq. Huddleston is seeking a preliminary and permanent injunction, damages, including treble damages, and attorney’s fees in the litigation.
Huddleston’s CEO, and the inventor of the ‘979 Patent, Samuel “Ken” Huddleston, expressed disappointment with the situation:
“Bass Pro Shops once sold Huddleston swimbaits in their stores. It is unfortunate to see that they now appear to be infringing my patent and even copying the unique, detailed shape of our lures. We attempted to address our concerns without litigation, but received no response. Unfortunately, that left us no option but to take legal action to enforce our rights. We respect and value intellectual property rights, and expect the same of others. We remain disappointed that Bass Pro Shops has failed to respect our legal rights, and we plan to vigorously defend our rights and to succeed in our claims against Bass Pro Shops.”
Link to the rest at Scout
The two fishing lures in question
Without having read the complaint, PG has significant concerns about the copyright claims. If you make a lure that looks like a small bait fish, isn’t it going to look like lures that everyone else makes that mimic the appearance of a small bait fish.
Additionally, patents, not copyrights are typically used to protect devices.
From The United States Patent Office, Circular 1:
Copyright is a form of protection provided by the laws of the United Statesto the authors of “original works of authorship” that are fixed in a tangible form of expression.
. . . .
What Works Are Protected?
Examples of copyrightable works include
• Literary works
• Musical works, including any accompanying words
• Dramatic works, including any accompanying music
• Pantomimes and choreographic works
• Pictorial, graphic, and sculptural works
• Motion pictures and other audiovisual works
• Sound recordings, which are works that result from the
fixation of a series of musical, spoken, or other sounds
• Architectural works
These categories should be viewed broadly for the purpose of registering your work. For example, computer programs and certain “compilations” can be registered as “literary works”; maps and technical drawings can be registered as “pictorial, graphic, and sculptural works.”
. . . .
Copyright does not protect
• Ideas, procedures, methods, systems, processes, concepts, principles, or discoveries
• Works that are not fixed in a tangible form (such as a choreographic work that has not been
notated or recorded or an improvisational speech that has not been written down)
• Titles, names, short phrases, and slogans
• Familiar symbols or designs
• Mere variations of typographic ornamentation, lettering, or coloring
• Mere listings of ingredients or contents
Link to the rest at The United States Patent Office
For further information on what cannot be protected by copyright, see Circular 33 from the USPTO
With respect to the practical aspects of protecting the design of fishing lures, here is a discussion from Alabama.com:
In 27 years of outdoors writing for The News, I’ve probably been approached no fewer than 50 times by fishermen who are convinced that they invented a lure that will revolutionize fishing.
A couple of those lures were indeed impressive but most were anything but revolutionary. Some were even contraptions that made me wonder what in the world was going on in that person’s head.
I was fishing a few weeks ago with Lee Sisson, the long-time lure designer for Bagley Baits. I was laughing and telling him about a lure a man had once shown me that was made from a small carbon dioxide cannister. It spewed air bubbles when retrieved and weighed way too much to be a lure. I tried not to laugh when the man assured me it was good for at least two or three casts before the canister ran out of air and had to be replaced. And, oh, yeah, you had to carry a small device that would drill the perfect-sized hole in the canister to make it work properly.
I asked Sisson what the options would be if some basement inventor actually come up with a great, marketable lure. His answer surprised me.
“There’s not really anything they can do,” he said.
I asked for an explanation.
He said none of the major lures companies will even talk to outside lure inventors these days. When he gets a call from someone who says he has invented a lure, Sisson stops the caller in mid-sentence and tells him to say no more. He tells the caller that the company is not interested.
What happens, he explained, is that lure companies are always working on lures that they may introduce someday. If the inventor’s lure idea is credible, a lure company has probably been working on something similar. If the lure company introduces that lure one day, the inventor is always convinced that he showed the company his idea and the lure company stole it. Troublesome lawsuits can follow.
Sisson said most basement lure inventors wrongly believe the first step once they have come up with an idea for a fishing lure is to have it patented. Patents on fishing lures are pretty much a joke, he said.
First, it is near impossible to get a patent on a lure unless it has an extraordinary design. Second, patents are expensive and pretty much worthless when it comes to fishing lures. Should the lure be a hit with fishermen, the typical inventor doesn’t have the time or the money to fight lawsuits against every small lure-maker that might copy it and sell it.
. . . .
The reality is that the vast majority of lures have a short life span. Sales may last only a year until interest wanes. The inventor may invest his life savings to have the lure produced and by the time it finally hits the market, the fishermen who at first were so excited about it have found something else. Sisson said he has seen cases where amateur lure inventors who believe they are going to get wealthy invest their life savings and eventually lose most everything else they own.
Link to the rest at Alabama.com
In this case, the patent was actually issued in 2009 which provides the invention with the rebuttable presumption of validity.
Additionally, the validity of the patent was challenged by another fishing lure manufacturer in a lawsuit filed in the Eastern District of Texas.
PG has quickly reviewed the docket entries from this lawsuit. As background, during this time period, the Eastern District of Texas attracted a lot of patent litigation. Part of the attraction was the District’s adoption of “rocket docket” rules which had the effect of moving suits to trial or other disposition substantially faster than in many other district courts.
A second part of the attraction was that, due in part to the rocket docket, the Eastern District judges developed a reputation for expertise in handling patent lawsuits because lots of patent infringement cases were filed there. Federal District judges tend to be generalists because they handle a wide range of litigation ranging from criminal drug cases to auto accident claims. These judges can complete a long career without ever taking a patent infringement case to trial.
The docket in the earlier case reflected quite a bit of churn among counsel for both sides. PG also found a number of entries that may have reflected a lack of understanding on the part of some counsel about how the rocket docket worked in Texas and the necessity of moving fast. Based on this third-hand evidence, PG suspects attorneys on each side may have made a few non-prejudicial errors in their filings.
Eventually, the case was dismissed at a preliminary stage with no resolution. So, the fishing lure patent and copyright claims of Huddleston Deluxe were never tested.
Huddleston, a self-described “small fish lure manufacturer located in Las Vegas Nevada” may find its suit against Bass Pro is a different experience than its earlier suit.
Bass Pro is privately held and had estimated revenues of over $4 billion in 2016. In late 2017, Bass Pro acquired its largest rival, Cabellas, another $4 billion sporting goods giant.
Suffice to say, Bass Pro has the money to hire excellent patent litigation counsel. This case is filed in the Northern District of California, San Jose Division, within easy driving distance from the offices of some of the best intellectual property trial lawyers on the planet.
Huddleston has hired a medium-sized law firm which has several practice areas other than intellectual property law and has, according to its website, a unique firm structure with few associates, which may or may not work well in patent litigation against a much larger company.