Counterfeit Crisis

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Troy Lee Designs (TLD), Corona, Calif., recently reached an agreement to settle a patent and trademark infringement lawsuit against Viva Motor Sports Inc., Vernon, Calif., relating to TLD's Speed Equipment (SE) helmet.

But the story doesn't end there. The Troy Lee Designs conflict may have been just the first round in what could prove to be more lawsuits against Viva Motor, according to vehicle manufacturers that recently spoke with Dealernews.

According to the settlement with Troy Lee Designs, Viva Motor agreed to cease all sales and advertising of its QLB112, QL112 and KYB112 model helmets. Troy Lee maintained that the three helmet models were confusingly similar to the distinctive design of its SE helmet. Also part of the agreement, Viva Motor agreed to pay an undisclosed penalty to Troy Lee Designs.

How'd Troy Lee do it? It flexed its ownership of U.S. Design Patent No. D499,213, "Helmet with Visor," issued on Nov. 30, 2004.

TLD product development manager Jeff David says the suit against Viva was filed to protect the integrity of the SE helmet's unique design.

"We work exceptionally hard at creating leading-edge designs for our products, and we will continue to enforce our trade dress rights pertaining to our helmets and apparel products," David says.

It's not a pleasant undertaking. "I just hate this whole process, but I feel that these measures were absolutely necessary as more and more individuals have placed knock-off products in the marketplace," David says.

Viva Motor does business on the Internet via its website, www.viva-motors.com. Viva has been in business for eight years, delivering product to consumers and dealers from its warehouse in Vernon.

On its website, Viva Motor claims to be "the largest distributors and importers of electric and gas scooters, ATVs, dirtbikes, ride-on toys, mopeds, 50cc Harleys/choppers, and pocket bikes for both kids and adults on the West Coast."

Viva's product names, which are marketed online, may sound somewhat familiar:

  • Viva 70cc Jesse James Chopper Style;
  • 110cc Orange County Style Chopper;
  • Moped Vespa Design 50cc;
  • GSXR Style 200cc Motorcycle;
  • Kawasaki New Design 125cc Dirt Bike;
  • 200cc Racing Dirt Bike Kawasaki Design;
  • Predator 100cc, 150cc and 200cc ATVs;
  • and the Raptor Style 110cc, 300cc and 400cc ATVs.

Viva did not respond to Dealernews' several attempts to interview the company regarding these allegations and issues.

Trade Groups Wary

The Federation of Asian Motorcycle Industries (FAMI) estimates that 5 percent to 7 percent of all motorcycle spare parts traded on the open market are counterfeit, and that 94 percent of those fake items were manufactured in Asian nations.

"Counterfeit goods not only impact the legal and rightful intellectual property owners, but also harm the American public who purchase fake, low-quality, and potentially dangerous products," says Motorcycle Industry Council (MIC) spokeswoman Jennifer Dreis. "When the ideas — the intellectual property — of one are replicated, it is not only unfair for a company to take a shortcut by an act of thievery, but it is harmful to the future growth of the industry as a whole," says Dreis.

OEMs Respond

Polaris says it's legally after a "number of copiers," according to the OEM's external relations manager Marlys Knutson.

"We vigorously defend our patents and trademarks," Knutson says. "This is becoming a bigger and bigger problem for the ATV industry, particularly with copiers from China. Not only do the copiers infringe on our patents and trademarks, but many times they are marketing ATVs in violation of federal safety standards."

Knutson points to the Viva website: "[It] shows 100cc ATVs being marketed as 'kid' ATVs," she says. "In accordance with federal safety standards, only young people over 16 years of age should be riding ATVs in excess of 90cc."

"We have forwarded this on to our legal department," responds Russ Brenan, trade/enthusiast media supervisor for Kawasaki Motors Corp. USA.

Custom icon Jesse James tells Dealernews that he was angry at first. "The one model [on the Viva website] is a straight pinch of one of our El Diablo models," he says. But he says he's since thought about it, and because Viva's unit doesn't seem to be affecting sales of James' Exotica, he doesn't believe that it's a big threat to his business.

"It's stuff we've had patented and trademarked and all of that, but sometimes it's a judgment call for us," James says. "We could go after them, but is it affecting El Diablo sales? No."

James points out that because the use of trademark-protected names on vehicles occurs so infrequently right now, the issue of protected intellectual property with apparel is an even bigger problem.

"The stuff I worry about is [such things like] a company called Nolmont in China that's sending container loads of bootleg clothing to Australia," says James. "We've been fighting them for, like, a year."

Nolmont Pty Ltd. is also in a trademark dispute with Los Angeles-based fashion company Von Dutch Originals LLC.

Is it worth going after the alleged counterfeiters?

"It's scary to get a $300,000 bill from a trademark and patent attorney, but I'm pretty diligent about defending my trademark, and there's a few people sitting in prison that didn't listen to 'cease and desists' until a federal marshal showed up at their door and took them to jail," says James.

Rocket Fires Back

Randy Robison, president of Robison's Inc., is no stranger to IPR crimes. Robison's Joe Rocket brand has been targeted by counterfeiters on numerous occasions ("News," February 2006).

The first instance occurred in late 2005, when U.S. marshals, attorneys, a locksmith, and a representative of the Joe Rocket apparel brand converged on a San Diego storage facility and seized counterfeit products. The second instance occurred in November 2006, when a U.S. Customs agent (and motorcycle rider) reviewing a shipment of jackets noticed that they had been shipped from Pakistan to Alabama, and didn't appear to be genuine.

Because of these instances, Robison has signed Harness Dickey, a law firm specializing in patent and trademark litigation to scan for online retailers and others who would attempt to sell counterfeit Joe Rocket products.