By Daniel G. Chung[1] and Dara Emami[2]
Mountaineering, camping, and rock climbing popularity is ascending to new heights, and with this rise brings new innovations. In large part due to the pandemic, participation in outdoor activities climbed from 148 million participants in 2017 to over 160 million in 2020—the sharpest increase on record.[3] Revenue is also up and is expected to grow to from 4.5 to 7.4 billion dollars by 2027.[4] Many in the industry shared a concern that people would lose interest in the outdoors when returning to pre-Covid life. This does not appear to be the case.[5] According to a 2022 report conducted by the Outdoor Foundation, outdoor participation retained its popularity and had a record participation of 166 million with hiking and camping being among the most popular activities.[6] Moreover, rock climbing’s growing popularity was demonstrated by its incorporation into the Olympics.[7] This increased participation has added consumers to a relatively mature market, requiring industry players to compete more fiercely for the growing customer base.[8]
REI, or more formally known as Recreational Equipment Inc., is a major retailer in this industry, and they enjoyed a 36% increase in revenue — even larger than pre-pandemic levels.[9] Also enjoying higher revenues is V.F. Corporation (“VFC”).[10] VFC carries several highly recognized outdoor brands (e.g., The North Face, Timberland, etc.).[11] As an industry leader, VFC recognize the important role that intellectual property (IP) plays.[12] In their 2022 shareholder letter, VFC expressed that patents provide substantial value in the development of products and are important to continued success.[13]
In an environment where retailers are competing to gain share in the expanding market, intellectual property plays a vital role. This article presents a snapshot of the technology and IP trends and provides a number of considerations as outdoor companies continue to innovate and keep pace with competition.
Since 2015, various entities have filed over 1,700 U.S. patent applications in an effort to protect outdoor recreation innovations.[14] And investments in these efforts have steadily grown over the years.[15] That growth is demonstrated below, which indicates, among other things, that the number of U.S. patents and U.S. patent application publications from the U.S. Patent and Trademark Office (“PTO”) increased 196% from 2012 to 2019.[16]
For camping and mountaineering, important to participants are preparation and traveling lightly.[17] At times, however, these two objectives may be in tension with each other. The industry seeks to develop innovative solutions for its consumers, and a large majority of the technologies for which companies pursue patent protection address this concern. For example, the technical categories that many of these patent filings fall under include: (1) tents or canopies, (2) articles which may be converted into other articles for other use (e.g., backpack changing to sleeping mat, mat that can convert to shaded tent), and (3) devices for lowering people from a height (e.g., belay device, harness, fall prevention equipment).[18]
As shown below, while many different entities in the outdoor recreation space are active in seeking U.S. patent protection, one of the leading players is Petzl.[19]
Petzl has a history of engaging in product innovation and advancing IP efforts, which is illustrated by their “GriGri”, an assisted braking belay device patented in 1991.[20] This device became so popular that the term GriGri is now used to generally describe this category of belay devices – much like Velcro describing hook and loop.[21] To this day, Petzl continues to innovate and demonstrate the importance of IP. For example, over the past five years, 17 U.S. patents have issued to Petzl related to a wide range of climbing technologies.[22] More recently, in 2020, Petzl patented an improved full body harness for recreational climbing by children.[23]
In addition to traditional technologies in the outdoor recreation space, industry players are incorporating other technologies to meet evolving consumer fads and demands. One such example seeks to enhance the outdoor experience by adapting wearable sensors and drone technologies.[24] Specifically, Drone Control LLC was issued a U.S. patent directed to a method that utilizes drones to track a climber and display climbing information to the belayer on the ground.[25] Such technology purportedly addresses the traditional approach of when a climber is out of sight, which requires a belayer to anticipate a fall by feel of the rope or verbal communication with the climber. Other recent technologies include a jacket that can turn into a tent, an improved method for adding a waterproof membrane to clothing articles, and an auto-erecting tent.[26]
Snapshot of IP Disputes
Much like other tightly competitive industries, the outdoor recreation industry has seen its share of IP disputes. One of the most litigated technologies within the industry is camping furniture.[27]
Filing data indicates that The Caravan Company International Inc. is one of the more active entities in enforcing its IP rights.[28] In 2019, Caravan filed six patent infringement suits against various companies.[29] Among them is a complaint against Walmart for alleged patent infringement relating to “collapsible tent frames.”[30] According to the asserted patent, the disclosed collapsible tents include a plurality of scissor type ribs attached to telescoping poles that purportedly allow for easy setup and takedown while improving structural rigidity.[31] Following the complaint, Walmart and other distributors sought to challenge the validity of the asserted patent in Inter Partes Review proceedings at the PTO.[32] The Patent Trials and Appeals Board of the PTO issued a decision in 2022, invalidating all of the asserted patent claims, and Caravan has since appealed to the Federal Circuit.[33]
As another example, Eagle Nest Outfitters (“ENO”) has shown that they will enforce their IP rights if needed, true to the warning on their website.[34] Since 2010, ENO has asserted its IP rights in five separate lawsuits.[35] More recently, in September 2022, ENO filed a complaint against Taomere Inc., alleging trademark and patent infringement, relating to hammocks.[36]
Moreover, like other industries, non-practicing entities (NPEs) have initiated a number of the IP disputes in the outdoor recreation space. Recently, for example, in August 2021, IP Power Holdings, which appears to be an NPE, filed a complaint against Hitorhike Outdoor Co., alleging patent infringement relating to a collapsible chair with a tensioned seat.[37] And since 2012, IP Holdings has settled or voluntarily dismissed seven patent infringement suits, and one suit resulted in a permanent injunction following a default judgment.[38]
While outdoor participation has increased in size and diversity in recent years, business analysts still consider the outdoor recreation industry a mature market. It is therefore critical that industry players continue to innovate and differentiate themselves to capture the new and growing consumer base and dislodge existing consumers from competitors. Leveraging IP rights is a key tool in gaining this competitive advantage. As the sharply rising U.S. patent filing trends demonstrate, the industry as a whole has utilized and acknowledged the value of IP to address the evolving consumer demand and competitive makeup of the outdoor recreation space.[39] Whether a company is continuing to improve upon their traditional, bread-and-butter technology, like climbing equipment, or incorporating non-traditional technologies, like drones or wearables, to advance existing outdoor recreation equipment or techniques, a key strategy is continuing to innovate and protecting those commercially valuable innovations.
Although companies may focus their efforts on the upsides of a robust product development and innovation program, the risks must also be assessed. Industry players (as well as external, non-practicing entities) have demonstrated their willingness to enforce IP rights, and some, like VFC, even warn that they “vigorously monitor and enforce [their] intellectual property.”[40] Therefore, innovation and product development strategies should be complemented and weighed in view of the scope of any relevant IP of others, as well as the characteristics of the third party holding the IP, including its business, IP practices, and any existing or future relationships.
[1] Daniel is a partner at Finnegan LLP and co-leads the firm’s Sports, Fitness, and Outdoor Recreation industry group. He represents both domestic and international clients, from startups to larger companies, in complex IP litigation and strategic IP counseling.
[2] Dara is an avid climber and a law clerk at Finnegan LLP.
[3] Outdoor Foundation, 2021 Outdoor Participation Trends Report, June 22, 2021, at 6, https://ip0o6y1ji424m0641msgjlfy-wpengine.netdna-ssl.com/wp-content/uploads/2015/03/2021-Outdoor-Participation-Trends-Report.pdf
[4] Id.
[5] Outdoor Foundation, 2022 Outdoor Participation Trends Report, September 19, 2022, at 2, https://outdoorindustry.org/wp-content/uploads/2015/03/2022-Outdoor-Participation-Trends-Report-1.pdf
[7] See Send Edition, What You Need To Know About Climbing In The 2021 Tokyo Olympics, https://sendedition.com/will-rock-climbing-be-in-the-2020-2021-olympics/#:~:text=Rock%20climbing%20will%20finally%20debut,sports%20climbing%20and%20speed%20climbing.
[8] See Jonathan Burns, Industry Report: Hiking and Outdoor Equipment Stores, IBISWorld, https://www.ibisworld.com/united-states/market-research-reports/hiking-outdoor-equipment-stores-industry/
[9] See REI Co-Op News Room, REI Co-op Reports Strong Growth in 2021, Setting Co-op Record in Membership, https://www.rei.com/newsroom/article/rei-co-op-reports-strong-growth-in-2021-setting-co-op-record-in-membership; REI Co-Op News Room, REI Co-op publishes 2019 full-year financial results, https://www.rei.com/newsroom/article/rei-co-op-publishes-2019-full-year-financial-results
[10] See Google Finance, VF Corp., https://www.google.com/finance/quote/VFC:NYSE?sa=X&ved=2ahUKEwiEtJ6r1Pf6AhUvj4kEHRsYCxwQ3ecFegQIHBAa
[11] V.F. Corporation, Form 10-K, at 2, https://www.vfc.com/investors/financial-information/sec-filings/content/0000103379-21-000006/0000103379-21-000006.pdf
[12] Id. at 8.
[13] Id.
[14] U.S. patent statistics come from reports generated by Innography (Innography is a trademark of Clarivate and its affiliated companies). Innography: keyword search for “mountain,” “hik,” “belay,” “backpack,” “outdoor,” “hammock,” “tent,” “rock climbing,” and excluding “solar,” “battery,” “robot,” “cooking,” “conditioner” in the abstract of U.S. patents and patent applications published since January 1, 2015, and organizing results by Cooperative Patent Classifications (CPCs). Results included CPCs of Apparatus for physical training, gymnastics, swimming, climbing, or fencing; Ball games; Training equipment (A63B), Furniture; Domestic articles or appliances; Coffee mills; Spice mills; Suction Cleaners in general (A47), Buildings or like structures for particular purposes; Swimming or splash baths or pools; Masts; Fencing; Tents or canopies, in general (E04H), Devices, apparatus, or methods for life-saving (A62B), Travelling or camp equipment: Sacks or packs carried on the body (A45F), Walking sticks; Umbrellas; Ladie’s or like fans (A45B), Apparatus for climbing poles, trees, or the like (A63B 27/00), Non-skid devices or attachments (A43C 15/00), Footwear for sporting purposes (A43B 5/00), Tents or canopies, in general (E04H 15/00), Characteristic features of footwear; Parts of footwear (A43B).
[15] Id. (publish date filter changed from January 1, 2015 to January 1, 2004) (Information organized by number of grants and applications published per year)
[16] Id.
[17] Beckworth & Co., How To Pack Light For Your Camping Trip, https://beckworthandco.com/blogs/news/how-pack-light-camping-trip
[18] Innography, supra note 12 (organized by filings per CPC code).
[19] Id. (Organizing results by organization).
[20] Maya Jaffe, Innovations in Climbing: The GRIGRI, https://momentumclimbing.com/innovations-in-climbing-the-grigri/
[21] SeeGrigri (climbing),https://en.wikipedia.org/wiki/Grigri_(climbing).
[22] See, e.g.,U.S. Patent No. 11,097,160 (issued Aug. 2, 2022) (Carabiner with internal confinement element); U.S. Patent No. 10,512,821 (issued Dec. 24, 2019) (Belaying lanyard equipped with improved swivel connection); U.S. Patent No. 10,850,142 (issued Dec. 1, 2020) (Full body climbing harness).
[23] U.S. Patent No. 10,850,142 (issued Dec. 1, 2020) (Full body climbing harness).
[24] U.S. Patent No. 10,250,792 (issued Dec. 1, 2020) (Unmanned aerial vehicles, videography, and control methods).
[25] Id.
[26] U.S. Patent No. 10,661,543 (issued May. 26, 2020) (Membrane lamination of three-dimensional article); U.S. Patent No. 10,687,571 (issued Jun. 23, 2020) (Convertible jacket); U.S. Patent No. 8,919,364 (issued Dec. 30, 2014) (Auto-erecting tent).
[27] Complaint, Caravan Canopy Int’l, Inc. v. Walmart Inc., Case No. 2:19-cv-06978 (C.D. Cal. 2019); Complaint, Eagle Nest Outfitters, Inc. v. Taomore, Inc., Case No. 1:22-cv-00198 (W.D.N.C. 2022); Complaint, IP Power Holdings Limited v. Ningbo Hitorhike Outdoor Co., Ltd., Case No. 1:21-cv-06640 (S.D.N.Y 2021).
[28] Complaint, Caravan Canopy Int’l, Inc. v. Walmart Inc., Case No. 2:19-cv-06978 (C.D. Cal. 2019); Complaint, Caravan Canopy Int’l Inc v. The Home Depot USA, Inc. et al., Case No. 8:19-cv-01072 (C.D. Cal. 2019); Complaint, Caravan Canopy Int’l Inc. v. ShelterLogic Corporation et al. Case No.: 5:19-cv-01224 (C.D. Cal. 2019); Complaint, Caravan Canopy Intl, Inc. v. Bravo Sports et al., Case No. 2:19-cv-06031 (C.D. Cal. 2019); Complaint, Caravan Canopy Intl, Inc. v. Z-Shade Co. Ltd. et al., Case No. 2:19-cv-06224 (C.D. Cal. 2019); Complaint, Caravan Canopy Int’l Inc v. Lowe’s Home Centers, LLC et al., Case No. 2:19-cv-06952 (C.D. Cal. 2019); Complaint, Caravan Canopy Int’l, Inc. v. Northern Tool & Equipment Company, Inc.,Case No. 2:20-cv-00140 (E.D. Tex. 2020).
[29] Id.
[30] Complaint, Caravan Canopy Int’l, Inc. v. Walmart Inc., Case No. 2:19-cv-06978 (C.D. Cal. 2019).
[31] U.S. Patent No. 5,944,040 (issued Aug. 31, 1999).
[32] Z-Shade Co., Ltd. v. Caravan Canopy Int’l, Inc., Case No. IPR2020-01026 (P.T.A.B. May 17, 2021)
[33] Walmart Inc. v. Caravan Canopy Int’l, Inc., Case No. IPR2020-01026 (P.T.A.B. February 15, 2022).
[34]ENO INTELLECTUAL PROPERTY, https://eaglesnestoutfittersinc.com/pages/intellectual-property, (“Eagles Nest Outfitters, Inc. will take appropriate action to enforce its intellectual property rights when necessary.)
[35] Complaint, Eagle Nest Outfitters, Inc. v. Taomore, Inc., Case No. 1:22-cv-00198 (W.D.N.C. 2022); Complaint, Eagles Nest Outfitters, Inc. v. Hewlett d/b/a Bear Butt, Case No. 1:16-cv-00165 (W.D.N.C. 2016); Complaint, Eagles Nest Outfitters, Inc. v. Harden d/b/a Nature’s Hangout, Case No. 1:16-cv-00261 (W.D.N.C. 2016); Complaint, Eagles Nest Outfitters, Inc. v. Hussein d/b/a MalloMe, Case No. 1:16-cv-00381 (W.D.N.C. 2016); Complaint, Eagles Nest Outfitters, Inc. v. Dick’s Sporting Goods, Inc., Case No. 1:18-cv-00082) (W.D.N.C. 2018).
[36] Complaint, Eagle Nest Outfitters, Inc. v. Taomore, Inc., Case No. 1:22-cv-00198 (W.D.N.C. 2022).
[37] Complaint, IP Power Holdings Limited v. Ningbo Hitorhike Outdoor Co., Ltd., Case No. 1:21-cv-06640 (S.D.N.Y 2021).
[38] Complaint, IP Power Holdings Limited v. West Marine Inc., Case No. 1:21-cv-01388 (D. Del. 2021); Complaint, IP Power Holdings Limited v. Ningbo Hitorhike Outdoor Co., Ltd., Case No. :21-CV-06640 (S.D.N.Y 2021); Complaint, IP Power Holdings Limited v. Westfield Outdoor, Inc., Case No. 2:19-cv-01878 (D.N.V. 2019); Complaint, IP Power Holdings Limited v. Kamp-Rite Tent Cot, Inc., Case No. 2:19-cv-00634 (E.D. Cal. 2019); Complaint, IP Power Holdings Limited v. Wal-Mart Stores Inc. et al., Case No. 1:16-cv-05168 (S.D.N.Y. 2016); Complaint, IP Power Holdings Limited v. Sears Holdings Corp. et al., Case No. 1:13-cv-06081 (S.D.N.Y. 2013).
[39] See Innography, supra note 16.
[40] V.F. Corporation, Form 10-K, at 8 https://www.vfc.com/investors/financial-information/sec-filings/content/0000103379-21-000006/0000103379-21-000006.pdf
