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Sunday, Jun 4, 2023

Piracy Shields Raised in Defense of Sports Inventions

Patent attorney James Cleary was riding in a limousine with a group of snowboarding pros when he had an epiphany. The group was looking over a new invention, a plastic snowboard binder strap significantly different from its competition. It had a molded-in wire that held the strap in place to make it easier for snowboarders to get in and out of their bindings when riding chairlifts.

The snowboarders saw the device as a way to help them solve an annoying problem on the slopes. A wave of enthusiasm washed through the limo.

“Wow,” Cleary recalled telling himself. “He’s really got something.”

The experience validated the work that Cleary, an attorney at the San Diego office of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, had already done on the patent held by Wire Core Strap of Carlsbad.

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Cleary is one of the local professionals who works in the nexus between sporting goods and the law.

At its most extreme, the nexus involves going to court to defend one’s intellectual property against patent infringement , or challenging other companies’ patents.

La Jolla resident Dana Robinson, for example, is the attorney representing San Diego-based L1 Technologies. L1 is the parent company of iGolf, which makes devices that help golfers determine distances, and play a better golf game, by tapping into the global positioning satellite system.

Dallas-based GPS Industries, which also makes a GPS aid for golfers, sued L1 Technologies and nine other companies in May 2007, alleging that the 10 infringed its patent titled, “Golf distance measuring and method.”

Now L1 and the nine companies have mounted a challenge to the Dallas company’s 1994 patent. The U.S. Patent and Trademark Office said in late November that it would reexamine GPS Industries’ patent. The review could take as long as two years, according to an L1 publicist.

Going Swimmingly

Cleary heads the action sports practice at Mintz Levin. He took credit for more than half of the $200,000 in action sports legal work its San Diego office generated during 2008.

It’s really a sideline for him. Cleary spends the bulk of his time working with computer technology. Software makers SAP of Germany and Minneapolis’ Fair Isaac are major clients.

Still, the action sports practice lets Cleary draw on mind, body and experience.

Cleary is in love with sports, from skateboarding to snowboarding. He credits talent as a swimmer for getting him into the Air Force Academy, where he studied electrical engineering.

He says that using cutting-edge action sports gear helps him write patent applications.

Work for Poway-based Revolution Enterprises had him at the business end of a kite at La Jolla Cove. The wind was so strong that the kite tugged him bodily across the grass. Cleary was there to test Revolution’s product that changes the shape of the kite to brake it.

Tad Stout credits Cleary for turning his single sporting goods patent into five.

Stout is the founder of AquaLogix, a local company that makes a line of bell-shaped devices worn on the hands. The devices create resistance when a person drags them through the water. They’re used in the pool to improve a swimmer’s workout.

Stout estimates he’s spent more than $100,000 on patent protection. In addition to his five patents, he has three others pending.

The inventor said Cleary was especially helpful in getting the patent office to reexamine a rejected patent. “I am very lucky to have him,” says Stout.

Cleary, who spent his youth on skateboards in the streets of San Diego, has also helped San Diego-based Sector 9 patent a variety of skateboard trucks. Another local client is Neptunic Sharksuits, which makes sharksuits for divers and cut-resistant clothing worn for underwater sports. The latter company may have items of interest to the military, Cleary says.

Mintz Levin’s action sports segment is growing, says Cleary, who reports that the recession has not stifled inventors’ creativity.

In 2008, Mintz Levin did about $1 million in business from action sports and related business. That includes apparel, which is handled out of its Boston office. Work in action sports and apparel is growing at 20 percent to 30 percent annually, Cleary said.

The Look

It’s not just invention that demands legal protection. In the realm of sporting goods and related apparel, the look of the merchandise is also a big, big deal.

Kenneth Fitzgerald, an intellectual property partner in the local office of Latham & Watkins, points to Oakley, the Orange County-based sunglasses maker, as a company that takes the look of its competitors to court. “Oakley is very aggressive in protecting the Oakley look in glasses,” Fitzgerald says.

The company may allege trademark infringement or trade dress infringement. Trade dress refers to a product’s packaging and presentation. The classic example of trade dress, Fitzgerald says, is the distinctive shape of the Coca-Cola bottle.

The legal landscape for sporting-related apparel, not to mention designer clothing, could change if the new Congress is inclined to do it. Fitzgerald says there has been a move to extend three-year copyright protection to clothing designs. Bills calling for such protection have been introduced during the last two sessions of Congress but have not survived. Rep. William Delahunt, D-Mass., introduced the latest version of the bill, H.R. 2033, in 2007.

Mintz Levin’s Cleary maintains all aspects of taking a sporting goods product to market , from securing patents and trademarks to finding financial backing, from sourcing to introducing it to the public , flow together.

Knowledge of one informs the other. Nothing, the attorney says, exists in a vacuum.


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