Well-known California-based bait designer Jerry Rago is suing tackle company Eco Pro Tungsten and Bassmaster Elite Series competitor Justin Lucas for patent infringement related to a soft-plastic swimbait Eco Pro introduced and Lucas helped promote last year.
According to a lawsuit filed Monday in the U.S. District Court for the Northern District of California, Rago alleges Eco Pro copied the design of his Rago Baits BV3D swimbait with its DUDE swimbait that it unveiled at the 2016 ICAST tradeshow.
“Instead of pursuing independent product development, EcoPRO chose to slavishly copy Rago’s innovative design, in violation of Rago’s patent rights,” the lawsuit reads.
The suit accuses Eco Pro and Lucas of infringing on two design patents held by Rago, one that dates back to 2010 and the other to 2012.
It also accuses Lucas of obtaining “a genuine Rago Bait marketed under the trademark “BV3D” and slavishly copying the Rago Bait and presenting the copy to EcoPRO as an original Lucas design to be used, made, and offered for sale at the at the ICAST 2016 trade show to compete with Rago’s BV3D.”
When reached by phone Monday, Lucas said he was unaware of the lawsuit filing and added it was his belief that the DUDE project was not going forward following conversations he had with Rago after ICAST last summer.
“Originally, Eco Pro thought there were enough differences that it wouldn’t be an issue, but after talking with Jerry, we were on the same page,” Lucas said. “I know they were talking about trying to work it out and buy the patent from him, but that’s the last I heard of it.”
Lucas does not believe Eco Pro proceeded with mass production of the DUDE and he has not received a commission payment as result of its sales. He also added that he did not have a written contract with Eco Pro Tungsten related to the DUDE and does not have a sponsorship contract with them for the 2017 fishing season either.
“Being a guy who is from California, I respect Jerry and had several conversations with him about this and I was under the impression it would not be produced,” Lucas said. “The lawsuit doesn’t make sense because it’s not being sold. I don’t even own one.”
When asked if he admitted to copying the design of the BV3D, Lucas said, “Obviously, the bait Is very similar, but there were differences with the line-through system and a magnet added to the bait and a difference in the plastic being used. I was under the impression that was enough changes. When Jerry and I spoke, he said it wasn’t and that’s when they started talking about working something out.”
On Tuesday, Rago told BassFan that his reasoning for filing the lawsuit was to discourage others from knowingly copying his or other designers’ work in the future. He said other bait designs of his have been copied in the past, but since the BV3D is among his most popular baits, he felt compelled to defend his patent.
“Bottom line, my hand was forced,” Rago said via phone from Los Angeles. “It’s like the wild West right now. I figured it was time to protect myself. It’s like I fell back in love with the bait if that makes sense.
“This is the first time I felt backed into a corner. It’s for my protection. This instance happened to snowball with the way the industry is right now.”
Rago said he was alerted shortly after ICAST last summer that Eco Pro had introduced a bait that bore a strikingly resemblance to his BV3D swimbait. Rago reached out to Lucas and Eco Pro’s representatives. Talks began about either a licensing deal or Eco Pro buying Rago’s patent outright. Rago said he holds about 10 design patents related to fishing lures, including the only U.S. patent related to a glide bait.
“Instead of getting mad, I figured maybe I could make a deal with these guys,” Rago said. “Justin was into it. I thought negotiations were going great, then they stopped answering the phone.”
Rago said he eventually heard back from Eco Pro at a later date and was presented with a lesser offer that didn’t meet his approval.
“It wasn’t close to what I was seeking,” Rago added.
As part of the original proposed deal, Rago said Eco Pro would have had to show proof the molds for its DUDE bait were destroyed or send the molds to Rago. Eventually, negotiations halted and after conferring with his attorneys, Rago decided to commence a legal action against Eco Pro and Lucas.
Rago said he is not aware how many DUDE baits Eco Pro produced, but now he wants to exercise his rights and deter future attempts to copy his work.
Rago also said the copycat nature of the fishing industry has made him hesitant to introduce new baits in recent years.
“These last two years, I have been really reluctant to send a bait out,” he said. “I always have something new that could give (pros) an edge, but I’ve been scared.”
He still has a hand in the creation of every bait that bears his name, either in the actual pouring of the plastic or the finishing touches. It’s a time-consuming process and he knows if other companies are able to duplicate his work, they’ll attempt to mass produce their version and sell it for a lower price than what Rago’s do.
“There are others out there that want to come out with a copy of this bait,” he said. “Everybody thinks that if they make it cheaper, it’ll be better.”
He’s committed to seeing this matter through to the end.
“I’m not interested in any more negotiations,” he said. “Maybe it makes people take notice and cleans things up. I can’t tell you what’s going to happen.”
Brian Wagenhoffer, who is a partner at Eco Pro Tungsten, said Tuesday the company has yet to receive a copy of the lawsuit so he had not reviewed it yet.
“At this point, the company will seek counsel when it’s served,” he said.
Wagenhoffer went on to say Eco Pro did not proceed with production of the DUDE after it entered into negotiations with Rago following ICAST last year.
“We made a prototype and shortly after ICAST in 2016, we were notified by Jerry that he had a patent on it,” Wagenhoffer said. “At that time, we told him the company was unaware there was a patent on the product and that we didn’t make anything other than a few prototypes.”
Wagenhoffer said Rago made his patent available for purchase and the two sides entered into negotiations.
“We didn’t reach an agreement and were never formally served a cease and desist nor did we proceed with manufacturing any of the baits,” Wagenhoffer added. “The project was dead after ICAST when we couldn’t get a deal done with Jerry.
“It’s unfortunate they’re taking a path like this. The intent was never to infringe on a patent.”
Rago is seeking an injunction against Eco Pro barring the company from continuing to infringe on his patents as well as undisclosed damages.
The lawsuit alleges Lucas was complicit in the patent infringement and cited packaging materials Eco Pro used for its bait that stated The DUDE was designed by Lucas. The lawsuit states that Rago approached Eco Pro representatives and Lucas after ICAST at which time he confronted them with his claims that the DUDE was not an original design.
“After being confronted with the truth,” the lawsuit reads, “Lucas admitted he copied the design from Rago’s BV3D. Rago demanded that EcoPRO and Lucas immediately stop all use, sales and offers for sale of the “DUDE” bait because the Rago BV3D design is protected by Rago’s design patents.”
Rago’s suit also claims that following ICAST, Eco Pro and Rago began negotiations for Eco Pro to buy Rago’s BV3D design, but talks broke down, prompting Rago to move forward with legal action.
Rago’s suit also alleges “EcoPRO and Lucas continue to make, use, offer for sale and sell the infringing ‘DUDE’ bait in 2017.” The court filing cited Eco Pro’s inclusion of the DUDE in its 2017 product catalog as evidence.
A BassFan review of Eco Pro’s website and several major outdoor retailers’ websites (Tackle Warehouse, Bass Pro Shops, Cabela’s, Gander Mountain, Hi’s Tackle Box) Monday morning revealed the DUDE is not available for purchase.
Below is a PDF of the court filing: