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Goldberg Segalla’s Joseph M. Hanna Drives the Conversation on Counterfeit Golf Clubs


Goldberg Segalla’s Joseph M. Hanna Drives the Conversation on Counterfeit Golf Clubs

September 2017
Joseph M. Hanna

In two articles for DRI’s For the Defense and USLAW, Goldberg Segalla’s Joseph M. Hanna tees up emerging intellectual property issues in the golf industry, explaining how the industry’s top brands are struggling with the increasing prevalence of counterfeit golf equipment in a market worth approximately $70 billion annually.

“Today’s increasingly global market poses a major challenge to the golf industry as counterfeiters target online shoppers, offering too-good-to-be-true deals to unwitting buyers who have no opportunity to inspect the product before the purchase,” Joe writes in For the Defense. Furthermore, “when counterfeiters operate beyond our borders, protecting patents and trademarks is nearly impossible, and comes at a great expense.”

In the U.S., golf equipment manufacturers use three types of intellectual property protection: design patents, utility patents, and trademarks. Design patents protect the exact shape of the club head and additional features, while utility patents protect “specific playability features” that the club may “evoke.” Trademarks protect brand names, any names of specific products (such as clubs), lettering and style, packaging, and other aspects of overall appearance. However, “although U.S. law provides the legal framework for protecting intellectual property rights, ambiguity and subjectivity embedded in the law poses a challenge to golf companies seeking recourse against counterfeiters.”

Joe goes on to explain golf equipment manufacturers’ difficulties prosecuting under the Lanham Act, marshalling sufficient evidence to navigate litigation involving the Federal Patent Act, and enforcing patents and trademarks overseas.

Countries that have become hotbeds for golf’s “black market” have far less significant intellectual property protections than the U.S., and many use “first to file” rather than “first to use” as the standard for awarding trademarks. “Under the right circumstances,” Joe explains, “foreign counterfeiters can file papers to own the trademarks of U.S. golf manufacturers.”

In his article for USLAW, Joe identifies two avenues for golf manufacturers looking to protect their intellectual property.

  1. Build a dedicated intellectual property team — comprising lawyers who can travel the world conducting raids, seizing counterfeit clubs, and commencing aggressive litigation: “While this sort of in-house enforcement may offer modest results, it clarifies trademark confusion and identifies knockoffs, increasing disruption in counterfeit operations.”
  2. Participate in buyer protection programs — like those built into many web commerce platforms, such as eBay’s Verified Rights Owner program, which has helped to earn that site a reputation for combating counterfeiting, particularly in the world of golf.

However, Joe writes, “many remedies for infringement will remain moot unless the tests for infringement become clearer globally.” To combat infringement in the long term, “golf companies must continue to build their intellectual property enforcement teams, encourage stronger e-commerce protection, and push for stricter enforcement abroad.”

An avid golfer as well as a highly successful litigator, Joe is chair of the firm’s Sports and Entertainment Practice Group. He is also co-founder and president of Bunkers in Baghdad, a charity that has sent 8 million golf balls, 600,000 clubs, and messages of thanks from “Bunkers Buddies” — students in 500 schools — to U.S. soldiers and veterans in 65 countries.

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