LI manufacturers of LifeVac, Canon, D'Addario fight back against flood of counterfeit goods
LifeVac LLC, a medical device company in Nesconset, was flying high three years ago.
Its choking-rescue tool had been confirmed as saving 250 lives and the small business would be ranked No. 443 on Inc. magazine’s 2022 list of the 5,000 fastest-growing private firms in America, based on revenue growth in the past three years.
But LifeVac was soon shaken by the proliferation of knockoffs of its namesake device for sale on Amazon.com. Between 300 and 350 entities were selling up to 800 counterfeit devices per day — some of them bearing the LifeVac logo and claiming to be a lifesaver for choking victims.
With revenue dropping, LifeVac scrambled to respond to this threat to its continued existence.
“People shouldn’t be allowed to take other people’s ideas that they’ve worked on for a good portion of their lives,” said Mike Plunkett, company president. “We couldn’t find the counterfeiters. It was the closest thing to organized crime that I had ever seen.”
LifeVac, with sales of $75 million last year and about 60 employees, is among thousands of individuals and businesses with patents that are trying to stop thieves from copying their ideas and then making money selling imitations. On Long Island, the list of companies that are fighting counterfeits includes the camera and photocopying giant Canon U.S.A. Inc. in Melville and musical instrument accessories manufacturer D'Addario & Company Inc. in East Farmingdale.
Patent holders file about 4,600 lawsuits each year in federal district courts across the country, seeking to stop the sale of counterfeit goods. More than 36 suits are filed locally, based on a Newsday analysis of court filings in Central Islip and Brooklyn during the past 10 years.
U.S. Customs and Border Protection seized 102,646 counterfeit product lines in the year ended Sept. 30, 2023, which would’ve been valued at $2.8 billion had they been genuine. That’s up from 64,330 product lines valued at $1.6 billion five years earlier, according to agency data.
“As the economy has become a little more global and goods are crossing borders much more easily, patent infringement has become more of an issue,” said patent attorney James Harrington, a senior partner in the Long Island office of Hoffmann & Baron LLP, a law firm focused on intellectual property.
“I also think a lot of internet shopping has contributed to the problem because you no longer need to set up a brick-and-mortar store. You can put your counterfeit goods on a platform, such as Amazon.com, and you’re off and running,” he said.
Harrington and others said patent infringers often look for bestselling products with a simple design that can be easily replicated, such as the choking-rescue tool from LifeVac.
“If you’re not making money, the counterfeiters care less about your product,” Harrington said. “But if your product is making a good amount of money and the technology is relatively simple, it’s more likely to be stolen.”
LifeVac executives reported that the company’s sales took off in 2021, four years after it first turned a profit. The choking-rescue tool has now been certified as saving more than 2,300 lives around the world since going on the market in August 2014.
“The number of saves and the publicity surrounding them attracted the counterfeiters … They buy the product from us on lifevac.net, copy it and then sell the counterfeits on Amazon,” said Plunkett, who owns the business with three others.
LifeVac goes back more than a decade to inventor and CEO Arthur Lih, who was inspired to develop the choking-rescue tool after accompanying a friend to Franklin General Hospital in Valley Stream (now called Long Island Jewish Valley Stream Hospital) while the friend’s mother was undergoing tests.
“[The friend] pointed across the room and said the last time he was there, a 7-year-old child had choked to death on a grape. He mentioned that the mom was wailing. My daughter was 7 at the time and I couldn’t let that happen to her,” Lih recalled in a 2016 Newsday interview.
Lih’s invention is designed to suction foreign objects from the throats of choking victims when procedures such as the Heimlich maneuver don’t work.
The plunger-like device uses gravity and a one-way valve to create the positive pressure necessary to pull objects from the throat. It can be used on adults and children who weigh at least 22 pounds, according to Michael Singer, the company’s chief operating officer.
He said it took a couple of years to perfect the choking-rescue tool, including tests on manikins and a cadaver in Hicksville. Obtaining the patent from the U.S. Patent and Trademark Office took another two years.
“You cannot have a 90% success rate when lives are involved,” Singer said.
The company is addressing the infringement of its patent in multiple ways, including purchasing hundreds of knockoffs to convince Amazon to remove them from its site and filing 10 lawsuits in federal courts across the country.
The latter strategy has resulted in a temporary restraining order, preliminary injunction and $25 million in penalties against 167 counterfeiters issued in February by a federal judge in Illinois, according to court documents. However, LifeVac executives said they didn’t expect to receive the penalty payment because most of the fake choking-rescue tools were made in China for thieves based in that country and Pakistan.
To Singer, the most effective weapon against counterfeiting is the stickers with unique codes printed on them that are affixed to the LifeVac device before it leaves the company's Nesconset factory. Amazon supplies the stickers and scans them at its warehouses to verify each unit’s authenticity.
The stickers are part of Amazon Transparency, a program launched in 2016 that now has 1.6 billion products enrolled. Another initiative, Project Zero, allows companies to directly remove listings for counterfeit goods from the retailer’s site, among other things.
“We have proactive measures in place to prevent counterfeit products from being listed and continuously monitor our store,” said Amazon spokesman Tim Gillman. “If we identify an issue, we act quickly to protect customers and brands, including removing counterfeit listings and blocking accounts.”
Last year, the behemoth retailer seized more than 7 million fake products and destroyed them, stopped 700,000-plus attempts by “bad actors” to create sales accounts, and removed more than 99% of the sale listings for knockoffs before receiving a complaint, according to a company report.
Amazon also has an investigations and enforcement team, the Counterfeit Crimes Unit, that helps companies, such as LifeVac, track down patent infringers, shut down their selling accounts, seize inventory of bogus products and obtain legal sanctions. The unit has pursued more than 21,000 individuals and businesses since it was founded in 2020, based on the company report.
A year ago, the crimes unit and Canon U.S.A. filed a federal lawsuit in Washington State, where Amazon has its headquarters, against 29 entities for allegedly selling fake camera batteries and chargers bearing the Canon name. Documents show the defendants’ Amazon accounts have since been shut down.
Canon U.S.A. sells cameras, photocopiers and imaging equipment in the Americas and employs 1,100 people at its Melville headquarters. The company’s Japanese parent ranks No. 5 among all the holders of U.S. patents, with 2,890 as of last year, based on a list from the research firm IFI Claims Patent Services.
In April, Canon donated 328 verification tools to help customs agents in stopping knockoffs of the company’s products from entering the United States.
Seymour Liebman, Canon’s general counsel, chief administrative officer and executive vice president, said the donation was part of a larger response to “individuals and companies who seek to unlawfully profit from Canon’s outstanding reputation by infringing its intellectual property rights and covertly put U.S. citizens at risk” of injury from unsafe products.
In addition, Canon places a unique hologram on the packaging for its replacement batteries, battery chargers, camera grips, and ink and toner cartridges. The hologram helps customers verify the products’ authenticity, according to Canon.
At D’Addario & Company, a different 19-digit serial number is printed on each package of guitar strings, the company’s signature product. Customers can type in the serial number on the Play Real page of daddario.com to check the authenticity.
Protecting its patents “is a constant battle” for the company, which has 850 employees in Suffolk County, said CEO John D’Addario III.
“It’s a whack-a-mole type of scenario, but at least we have measures in place that give us some intelligence to pursue the counterfeiters, to take down their websites, to remove the inventory from stores,” he said.
D’Addario & Company spends about $350,000 per year on lawyers and computer software to take down online listings of fake products.
Executives blamed counterfeiters for depressing international sales of D'Addario guitar strings, which have only increased 5% in the past decade, while domestic sales have doubled.
“We’ve been able to control counterfeiting here, but internationally counterfeiters are depriving us of between $5 million and $10 million in sales every year,” with the problem being most severe in Asia, said D’Addario. The company sells products in more than 110 countries, he said, and had total revenue of $230 million last year.
More damaging than the revenue loss is the sullying of the D’Addario brand with musicians.
“We work so hard to elevate our brand to give consumers confidence that they’re getting a high quality, consistent product, and when that doesn’t happen because of counterfeiting — it’s devastating for us. It keeps me up at night,” he said.
Discovering your invention has been stolen is upsetting and bewildering no matter the size of your business. After the fury has subsided, patent holders have a variety of options to address the issue.
William Salas, who runs the U.S. Patent & Trademark Resource Center in the Smithtown Library, said a patent holder could request that the counterfeiter stop infringing on the patent and pay compensation for the past infringement. The patent holder also could request royalty payments from the counterfeiter and ask if the counterfeiter wants to buy the patent.
“If none of that works then you can sue them in federal district court,” he said.
LifeVac has had a couple of legal victories against those selling knockoffs of its choking-rescue device. But when one group of counterfeiters is shut down another appears.
“We’re in a better spot today than we were a couple of years ago, but I don’t think this is ever going to end,” said Plunkett, company president. “You’re trying to keep the pirates away from your business.”
LifeVac LLC, a medical device company in Nesconset, was flying high three years ago.
Its choking-rescue tool had been confirmed as saving 250 lives and the small business would be ranked No. 443 on Inc. magazine’s 2022 list of the 5,000 fastest-growing private firms in America, based on revenue growth in the past three years.
But LifeVac was soon shaken by the proliferation of knockoffs of its namesake device for sale on Amazon.com. Between 300 and 350 entities were selling up to 800 counterfeit devices per day — some of them bearing the LifeVac logo and claiming to be a lifesaver for choking victims.
With revenue dropping, LifeVac scrambled to respond to this threat to its continued existence.
WHAT TO KNOW
Long Island manufacturers, such as LifeVac LLC, Canon U.S.A., and D'Addario & Company, are among thousands of businesses nationwide contending with thieves who steal their ideas.
Patent infringement has gotten worse as more U.S. companies sell their products overseas and the rise of online shopping has made it easier for counterfeiters to sell knockoffs, experts said.
Patent holders are fighting back by filing federal lawsuit, putting unique codes on their products to verify authenticity and working with Amazon.com to take down sale listings of knockoffs.
“People shouldn’t be allowed to take other people’s ideas that they’ve worked on for a good portion of their lives,” said Mike Plunkett, company president. “We couldn’t find the counterfeiters. It was the closest thing to organized crime that I had ever seen.”
LifeVac, with sales of $75 million last year and about 60 employees, is among thousands of individuals and businesses with patents that are trying to stop thieves from copying their ideas and then making money selling imitations. On Long Island, the list of companies that are fighting counterfeits includes the camera and photocopying giant Canon U.S.A. Inc. in Melville and musical instrument accessories manufacturer D'Addario & Company Inc. in East Farmingdale.
Patent holders file about 4,600 lawsuits each year in federal district courts across the country, seeking to stop the sale of counterfeit goods. More than 36 suits are filed locally, based on a Newsday analysis of court filings in Central Islip and Brooklyn during the past 10 years.
U.S. Customs and Border Protection seized 102,646 counterfeit product lines in the year ended Sept. 30, 2023, which would’ve been valued at $2.8 billion had they been genuine. That’s up from 64,330 product lines valued at $1.6 billion five years earlier, according to agency data.
“As the economy has become a little more global and goods are crossing borders much more easily, patent infringement has become more of an issue,” said patent attorney James Harrington, a senior partner in the Long Island office of Hoffmann & Baron LLP, a law firm focused on intellectual property.
“I also think a lot of internet shopping has contributed to the problem because you no longer need to set up a brick-and-mortar store. You can put your counterfeit goods on a platform, such as Amazon.com, and you’re off and running,” he said.
Looking for bestsellers
Harrington and others said patent infringers often look for bestselling products with a simple design that can be easily replicated, such as the choking-rescue tool from LifeVac.
“If you’re not making money, the counterfeiters care less about your product,” Harrington said. “But if your product is making a good amount of money and the technology is relatively simple, it’s more likely to be stolen.”
LifeVac LLC executives at the compamy's Nesconset facility on April 18. They are, from left, CEO and inventor Arthur Lih, president Mike Plunkett and chief operating officer Michael Singer. Credit: Newsday/John Paraskevas
LifeVac executives reported that the company’s sales took off in 2021, four years after it first turned a profit. The choking-rescue tool has now been certified as saving more than 2,300 lives around the world since going on the market in August 2014.
“The number of saves and the publicity surrounding them attracted the counterfeiters … They buy the product from us on lifevac.net, copy it and then sell the counterfeits on Amazon,” said Plunkett, who owns the business with three others.
LifeVac goes back more than a decade to inventor and CEO Arthur Lih, who was inspired to develop the choking-rescue tool after accompanying a friend to Franklin General Hospital in Valley Stream (now called Long Island Jewish Valley Stream Hospital) while the friend’s mother was undergoing tests.
“[The friend] pointed across the room and said the last time he was there, a 7-year-old child had choked to death on a grape. He mentioned that the mom was wailing. My daughter was 7 at the time and I couldn’t let that happen to her,” Lih recalled in a 2016 Newsday interview.
Lih’s invention is designed to suction foreign objects from the throats of choking victims when procedures such as the Heimlich maneuver don’t work.
The plunger-like device uses gravity and a one-way valve to create the positive pressure necessary to pull objects from the throat. It can be used on adults and children who weigh at least 22 pounds, according to Michael Singer, the company’s chief operating officer.
Tested on manikins, cadaver
He said it took a couple of years to perfect the choking-rescue tool, including tests on manikins and a cadaver in Hicksville. Obtaining the patent from the U.S. Patent and Trademark Office took another two years.
“You cannot have a 90% success rate when lives are involved,” Singer said.
The company is addressing the infringement of its patent in multiple ways, including purchasing hundreds of knockoffs to convince Amazon to remove them from its site and filing 10 lawsuits in federal courts across the country.
The latter strategy has resulted in a temporary restraining order, preliminary injunction and $25 million in penalties against 167 counterfeiters issued in February by a federal judge in Illinois, according to court documents. However, LifeVac executives said they didn’t expect to receive the penalty payment because most of the fake choking-rescue tools were made in China for thieves based in that country and Pakistan.
To Singer, the most effective weapon against counterfeiting is the stickers with unique codes printed on them that are affixed to the LifeVac device before it leaves the company's Nesconset factory. Amazon supplies the stickers and scans them at its warehouses to verify each unit’s authenticity.
The stickers are part of Amazon Transparency, a program launched in 2016 that now has 1.6 billion products enrolled. Another initiative, Project Zero, allows companies to directly remove listings for counterfeit goods from the retailer’s site, among other things.
“We have proactive measures in place to prevent counterfeit products from being listed and continuously monitor our store,” said Amazon spokesman Tim Gillman. “If we identify an issue, we act quickly to protect customers and brands, including removing counterfeit listings and blocking accounts.”
Fake products seized
Last year, the behemoth retailer seized more than 7 million fake products and destroyed them, stopped 700,000-plus attempts by “bad actors” to create sales accounts, and removed more than 99% of the sale listings for knockoffs before receiving a complaint, according to a company report.
Amazon also has an investigations and enforcement team, the Counterfeit Crimes Unit, that helps companies, such as LifeVac, track down patent infringers, shut down their selling accounts, seize inventory of bogus products and obtain legal sanctions. The unit has pursued more than 21,000 individuals and businesses since it was founded in 2020, based on the company report.
A year ago, the crimes unit and Canon U.S.A. filed a federal lawsuit in Washington State, where Amazon has its headquarters, against 29 entities for allegedly selling fake camera batteries and chargers bearing the Canon name. Documents show the defendants’ Amazon accounts have since been shut down.
D'Addario & Company Inc. is taking steps to combat counterfeiting of its guitar strings. John D'Addario III, the company’s CEO, shows a package of guitar strings with a special identification code printed on the label at its headquarters in East Farmingdale on April 24. Credit: Newsday/John Paraskevas
Canon U.S.A. sells cameras, photocopiers and imaging equipment in the Americas and employs 1,100 people at its Melville headquarters. The company’s Japanese parent ranks No. 5 among all the holders of U.S. patents, with 2,890 as of last year, based on a list from the research firm IFI Claims Patent Services.
In April, Canon donated 328 verification tools to help customs agents in stopping knockoffs of the company’s products from entering the United States.
Seymour Liebman, Canon’s general counsel, chief administrative officer and executive vice president, said the donation was part of a larger response to “individuals and companies who seek to unlawfully profit from Canon’s outstanding reputation by infringing its intellectual property rights and covertly put U.S. citizens at risk” of injury from unsafe products.
In addition, Canon places a unique hologram on the packaging for its replacement batteries, battery chargers, camera grips, and ink and toner cartridges. The hologram helps customers verify the products’ authenticity, according to Canon.
At D’Addario & Company, a different 19-digit serial number is printed on each package of guitar strings, the company’s signature product. Customers can type in the serial number on the Play Real page of daddario.com to check the authenticity.
Protecting its patents “is a constant battle” for the company, which has 850 employees in Suffolk County, said CEO John D’Addario III.
“It’s a whack-a-mole type of scenario, but at least we have measures in place that give us some intelligence to pursue the counterfeiters, to take down their websites, to remove the inventory from stores,” he said.
D’Addario & Company spends about $350,000 per year on lawyers and computer software to take down online listings of fake products.
Executives blamed counterfeiters for depressing international sales of D'Addario guitar strings, which have only increased 5% in the past decade, while domestic sales have doubled.
“We’ve been able to control counterfeiting here, but internationally counterfeiters are depriving us of between $5 million and $10 million in sales every year,” with the problem being most severe in Asia, said D’Addario. The company sells products in more than 110 countries, he said, and had total revenue of $230 million last year.
More damaging than the revenue loss is the sullying of the D’Addario brand with musicians.
“We work so hard to elevate our brand to give consumers confidence that they’re getting a high quality, consistent product, and when that doesn’t happen because of counterfeiting — it’s devastating for us. It keeps me up at night,” he said.
Discovering your invention has been stolen is upsetting and bewildering no matter the size of your business. After the fury has subsided, patent holders have a variety of options to address the issue.
William Salas, who runs the U.S. Patent & Trademark Resource Center in the Smithtown Library, said a patent holder could request that the counterfeiter stop infringing on the patent and pay compensation for the past infringement. The patent holder also could request royalty payments from the counterfeiter and ask if the counterfeiter wants to buy the patent.
“If none of that works then you can sue them in federal district court,” he said.
LifeVac has had a couple of legal victories against those selling knockoffs of its choking-rescue device. But when one group of counterfeiters is shut down another appears.
“We’re in a better spot today than we were a couple of years ago, but I don’t think this is ever going to end,” said Plunkett, company president. “You’re trying to keep the pirates away from your business.”
James T. Madore writes about Long Island business news including the economy, development, and the relationship between government and business. He previously served as Albany bureau chief.
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