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In this article, Daniel G. Chung1 and Dara
Emami2 discuss IP considerations for the growing
innovations in the outdoor activity industry.
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.
U.S. Patent Filing Trends
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.27Filing 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
Takeaways
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.
Footnotes
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
6. Id. at 2, 5.
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
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