March 31, 2021 Feature

TaylorMade GC Bill Reimus, on Running an In-House Legal Department

Pervin R. Taleyarkhan and Kari P. Kammel

©2021. Published in Landslide, Vol. 13, No. 4, March/April 2021, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Many attorneys aspire to lead a legal team at some point in their careers, and some may even have ambitions of leading an entire in-house legal team or department. Such career ambitions require a wealth of legal experiences, which can come from anywhere. We sat down with Bill Reimus, general counsel (GC) of TaylorMade Golf Company, Inc., to hear about his story and words of advice for legal counsels seeking to better connect with their business clients.

Can you tell us a little about yourself, and particularly how you ended up as GC of a golf equipment manufacturer?

Different experiences in life can lead you to places you’d never imagined.

After graduating college, I went to medical school. I went to the University of California San Diego School of Medicine. In medical school, the first two years are focused on the “science of medicine,” and the second two years are spent developing clinical experience. While I enjoyed my time in both aspects of medical school, I enjoyed the “science of medicine” the most. Toward the end of medical school, I was trying to make the decision of whether to go the traditional route (i.e., internship, residency, specialization, etc.) or take my medical degree and “specialize” in a less conventional way.

In the end, I decided to go to law school after graduating medical school. My goal was to become a patent attorney. That would give me the opportunity to apply what I was most passionate about (i.e., the “science of medicine”) with legal training.

So I went to the University of California, Hastings College of Law, graduated, and went to work for an intellectual property (IP) law firm (Knobbe Martens), where I had the opportunity to do all kinds of IP work. I passed the patent bar and focused my practice on medical device patents. I was living my goal of combining my medical background with my legal background. I enjoyed working with inventors and seeking patent protection for the latest innovations in the medical device area, as well as other areas. I was very happy with my choice.

Then out of the blue, I got a call from the GC of TaylorMade Golf Co., Inc., regarding a potential job opportunity there. I knew him from law school days as we were both doing the same summer associate program for an IP firm. We both have a passion for sports and stayed in touch after the summer associate program. We eventually went into practice in different firms, but he left his firm to become TaylorMade’s GC. He started the legal department at TaylorMade and needed an in-house patent attorney, and he asked if either I was interested or I knew of someone who was interested in the position. I was indeed interested in the possibility of combining my personal passion for sports with my professional training as a patent attorney, but I was also very happy in my law firm job. I ultimately decided to apply for the in-house role, figuring that even if I left private practice, there would be job opportunities in law firms in the future, whereas this type of in-house opportunity at TaylorMade doesn’t come around every day.

After interviewing for the position, the in-house job opportunity came through and I got an offer from TaylorMade. As a result, my wife and I had to make a tough decision between a great law firm I really enjoyed working at and a fantastic in-house opportunity at TaylorMade. We ultimately chose TaylorMade, considering the uniqueness of the role and knowing that a similar opportunity might not come around again.

I started out at TaylorMade in December 1997 as an in-house patent attorney/manager of IP. As expected, this role really gave me the ability to combine my professional qualifications with my passion for sports. Combining those two disciplines was just something I couldn’t pass up.

Over the course of 23 years, my responsibilities at TaylorMade grew, and the size of the department grew as well. In 2004, I was made GC. It’s hard to believe how many years have passed. Time has flown, and it’s been a blast.

What advice would you give to lawyers to help them better position themselves for becoming GC someday?

I wouldn’t say that becoming GC was something I was ever striving to do. I just tried to do a good job in every role I was in, and things worked out.

I’ve never been someone who has a specific job title in mind. I just try to find things I love doing, and continually learn and grow. My experience has been that when you do that, things tend to work out. One of the most valuable things I’ve learned, though, is the importance of developing relationships and trust with the people you work with (and in my case, this includes our great people at TaylorMade).

One way as an attorney in which you can build trust is by being very proactive rather than just sitting in your office and waiting for people to ask you questions. I think this tendency to be proactive goes back to my medical school training in preventative medicine: work to stop the problems before they become problems. Work with people proactively rather than reactively.

Being proactive rather than reactive sounds good, but it requires a lot of effort in building these relationships. The people we work with in the business are all very busy. They need to be comfortable coming to you seeking your ideas, and on the flip side, they shouldn’t mind you knocking on their doors and asking, “how’s the latest prototype coming along?” This level of comfort is so important to building those relationships.

And it’s not just the relationships in the building that matter. It’s also social development with your business clients. For example, this social development can start with some time on the golf course or going out to lunch. In fact, we had a program that we titled “legal buys lunch,” wherein we met with all our different client groups, had lunch in a conference room, and brainstormed about what was working and what wasn’t working. That exercise helped tremendously in creating trust.

Another way to help encourage clients wanting to meet with you proactively is by developing experiences where you help them solve problems, as opposed to being a roadblock. For example, don’t tell them “you can’t launch that product,” or “you can’t run that ad.” That’s not your job as the in-house counsel. Your response should instead be along the lines of “I don’t think we’ll be able to approve doing X specifically, but you may be able to do it in Y way.” The more people see you as a trusted ally rather than a checkbox at the end of the process where they need legal’s approval, that makes all the difference.

Also important is your willingness to step outside your comfort zone. Don’t take yourself too seriously. Have fun with yourself. At TaylorMade, we have a great culture where there are opportunities to step outside our comfort zone, whether in an annual Halloween contest, an annual company picnic, a pie-throwing contest, or even a dunk tank. The key is to get into it and have fun with the group. Go all in, and you will find most of your colleagues love seeing the attorney stepping outside their comfort zone.

Also, even though we’re hired to be attorneys in the company, take advantage of cross-functional opportunities that come your way (whether cultural opportunities or other initiatives). Raise your hand to volunteer to work with people who you don’t always work with. Look for those opportunities to be more relatable and meet people you may not normally have occasion to meet. Be a team player.

And the last thing: I can’t stress enough the importance of taking a position and making a recommendation instead of just identifying issues. Too often, attorneys tend to focus on naming the potential problems but don’t give a recommendation that’s helpful to the business in making decisions. So take a stance and make a recommendation, as opposed to just highlighting issues. This can be especially powerful in those meetings with the business where things are not always clear cut. But still go through the process of identifying issues and making recommendations, and explain why you made those recommendations. Then listen again: if there is disagreement, work through it.

It’s easy for attorneys to be adversarial (we often love to debate), but there’s a difference between debating for sport versus in a business meeting where coming across as adversarial may not lead to productivity. Make sure you’re actively listening. Be curious. Make sure you fully understand your client’s position. Explain the rationale underlying your position rather than just rebutting. Again, be a team player.

Has any particular area of law been of major focus in your role as GC? And where would IP law (patents, copyrights, trademarks, trade secrets, and perhaps right of publicity) fit into that?

One thing I love about my job at TaylorMade is working with great people on a wide variety of topics. As my responsibilities grew over the years, I advised on other things in addition to IP law. Our legal department is divided into two main functions: IP law (i.e., patents, copyrights, trademarks, trade secrets) and commercial law (e.g., reviewing marketing materials, sales programs, drafting contracts, consulting, etc.). As GC, my responsibilities are over both main functions. During my 23 years with TaylorMade, it’s safe to say I’ve pretty much done all those things as I navigated from being focused on patent law to doing other things in the company as well.

When I started at TaylorMade, it was the GC and me. Just us two attorneys: he was primarily doing commercial law, and I was primarily doing IP law. Our department has grown over the years, and I now have the pleasure of working with five other in-house attorneys (two patent attorneys, one trademark attorney, and two commercial attorneys), a paralegal, and a legal assistant. I’m grateful to work with such a fantastic team. And because we are a relatively small department, I’m fortunate to have the opportunity to work with everyone on the team.

It’s clear that patents are very important to the sport of golf. Can you tell us how you’ve seen the approach at TaylorMade?

We have over 800 active patents and applications globally. Consistent with what we talked about earlier: We in our legal department value being a close partner to the business and working together toward our shared goal for TaylorMade to be the most innovative golf brand in the world. We make sure our key technologies are patented. Our R&D department has a number of teams broken down by product category (e.g., metal wood, iron, golf ball, etc.). We work with all these teams and meet with them on a regular basis to proactively assess what we should be working on from a patent perspective as well as due diligence on the patent clearance side.

How do you strategize global patent portfolios?

We take a commonsense approach to global strategy: once we identify the key area(s) of investment, we try to make sure major markets are covered with appropriate IP.

Any particular emphasis or value for utility patents over design patents (or vice versa)?

We are innovating at such a fast pace that we tend to focus on utility patents on functions that may last several life cycles as opposed to designs that are more product-specific. Certain features have been in our products for many years due to being such breakthrough technologies. Trying to find technologies that have more than a one- to two-year lifetime is key.

We will also file design patent applications to protect certain product designs. This gives us an additional tool to combat those trying to copy us.

How do trademarks factor into your strategy to protect the company and your brand? Is it on a global scale?

Alongside patents, trademarks are another one of our most valuable assets since they are key to brand reputation, consumer recognition, and public goodwill. Our trademark portfolio covers a vast array of products, services, and designs, including product names, features, and configurations; service offerings; logos; taglines; and slogans. We own over 1,000 registered marks. We also make use of common-law trademarks that are still valuable to our company even though they are not registered. We approach our global filing strategy with a focus on key markets. We also monitor and enforce against alleged infringers globally.

What have been some proactive brand protection strategies that TaylorMade has employed? And what are the biggest challenges to the TaylorMade brand from counterfeiters?

Currently, it is estimated that there are about two million counterfeit golf products produced annually. There are a number of ways to address this situation, including monitoring to track online counterfeits worldwide (an increasingly large percentage out of Asia, but also other regions). We also have a consumer education initiative regarding the prevalence of counterfeits and how to recognize counterfeits. For example, if you go to our website (https://www.taylormadegolf.com), there is a link titled “Counterfeit” at the bottom of the home page that provides useful information regarding the fight against counterfeit products.

There are certain things competitors can legally come together to work on, and the fight against counterfeit products is one of them. A useful website in this regard is https://www.keepgolfreal.com. This is a website and initiative of the U.S. Golf Manufacturers Anti-Counterfeiting Working Group. We, along with some of our top competitors, are part of this working group. If there’s a counterfeiting ring detected for one of our products, the ring typically counterfeits products from other working group members as well. And depending on the popularity of the brand, there may be more than one counterfeit. By working with our competitors, we are able to pool resources and efforts to detect and help stop counterfeiters and combat this challenging problem.

Consumer education is key to helping combat counterfeiters. We spread the word about how if the product sounds too good to be true, it likely is. And as part of the endeavor, we encourage customers to purchase from authorized retailers, and we help by listing on our website which are authorized.

We want to be proactive in shutting down operations that illegally make or sell counterfeit products. We want to find out both upstream and downstream methods of these crime syndicates, and try to use whatever enforcement methods we can to stop them. We’re also able to legally share intelligence regarding counterfeit targets and work with authorities to shut down illegal counterfeiting operations. One example was a big raid in the spring of 2020 that our working group worked together with authorities in China to stop. This involved simultaneously raiding 10 locations in China, and as a result the working group seized over 120,000 counterfeit pieces. The case value is upwards of $2 million (in seized goods and counterfeit sales records). Both civil and criminal charges were pursued, including 15 arrests, and further investigation of upstream and downstream members of the crime syndicate is ongoing.

Such efforts can serve as a deterrent effect to others thinking about similar acts of counterfeiting. It’s great to be able to work with our competitors collaboratively to pool resources and lessen the cost of conducting these raids, etc. The result is a win for us all, including the consumer.

In addition to consumer education and working with authorities to address counterfeiters, we also register our trademarks with customs and participate in customs training programs globally to train agents to spot counterfeits and hold them, pending our approval, before they can be imported or exported.

What brand protection strategies are beneficial to those in your industry as a whole?

In addition to the methods and strategies mentioned above, copyrights have a place as well. For example, sometimes we find unauthorized sellers using our copyrighted images to try to sell their products. Asserting our copyrights in such instances gives us additional ammunition from a brand protection perspective. We also monitor our brick-and-mortar stores to see if any counterfeit activities are happening there, in addition to online monitoring.

From a brand protection perspective, we’re constantly looking at our supply chain activity as well. In this digital age, while making products at a factory, if someone wrongfully takes a picture of a future product and posts it online before it is publicly launched, the product or future design can quickly become universally known. So making sure our supply chain has policies and procedures in place to minimize the risk of products being leaked before launch is also key to protecting our brand. The more allies that are fighting the fight against counterfeiters and unauthorized disclosures, the better.

When developing your products, how (if at all) do the sports lawyers and any other applicable legal areas of expertise factor into product development?

This goes back to what I said about being proactive versus reactive and the trust we have in each other. We as lawyers are not just a checkbox at the end of the process. We’re an integral part of the development process in all kinds of positions. For example, is it cleared from a patent and trademark perspective? Is the product in compliance with USGA rules? We in legal are involved in those decisions. When marketing campaigns are developed, we’re involved there too, not just at the end where you need to approach legal for our blessings. Our whole goal is to be an integral part of the process as opposed to the end of the product development process.

And we look for those opportunities to build that trust. Whether going out for golf, having lunch, etc., all these efforts help build trust throughout the process, not just at the end.

From your experience working with TaylorMade and in prior roles outside of the company, are there any highlights that showcased the value of IP to a company?

A lot of the opportunities to see the power of IP or legal analyses is typically behind closed doors (e.g., in disputes). Our goal is to avoid costly and time-consuming litigation if possible. While we won’t hesitate to enforce our rights if needed, our goal is to resolve disputes amicably whenever possible. And our ability to resolve disputes amicably is much easier to do with the power of our IP. But these discussions typically happen behind closed doors and usually never see the light of day.

In addition to enforcing our rights, we will also defend ourselves vigorously if we are wrongfully accused of infringement. We respect the IP of others and put tremendous emphasis on that. It’s a two-way street, however, and we expect others to respect our IP as well.

Are there any “best practice tips” you can share for companies in building and maintaining their IP portfolios?

One thing we firmly believe in is quality over quantity: when we’re sitting down collaboratively with R&D, product creation, and marketing, figuring out what to file on (both patents and trademarks), we prioritize quality over quantity. We don’t let things go unprotected that need to be protected. A lot of times, it’s tempting to go out and try to protect everything, but that all costs a lot of money and takes a lot of time. So we work with the business to figure out what the right balance is by meeting on a periodic basis to assess that sweet spot of quality versus quantity.

One comment we often receive that makes us really proud is unsolicited feedback from outside counsel (who we know work with many different companies) that they’ve never seen a legal department so integrated with R&D and their other business partners as TaylorMade’s. A common theme we’ve seen in this interview is how much time we invest in building these relationships. But it doesn’t happen overnight. It’s about building trust over time, whether on the “fun” side (e.g., company get-togethers, golf outings, pie-throwing, etc.) or the trust you build over time solving complex legal issues. We’re one company, working together as one team.

And it is not just about internal relationships. It’s about the external relationships too. We strategically maintain relationships both within our four walls and externally with our key competitors. We don’t always agree, but when we work through disputes with competitors and do so in a fashion that is logical, fair, and principled, that takes us a long way. Remember that we’re all people in the end. We have families; we have lives outside of work. Adding that personal touch to your relationships makes a world of difference and gives you a better chance of amicably resolving disputes or disagreements.

And even if litigation cannot be avoided, those relationships still help in the long run. For example, being part of the Golf Manufacturers Anti-Counterfeiting Working Group gives us the opportunity to legally collaborate to help each other in the fight against counterfeit products. Behind that backdrop of relationship building, if you do find yourself unavoidably on the other side of the table in litigation with one of those parties, they know and respect you. And even if you disagree, that respect gives you a chance to nip further disputes in the bud amicably rather than unnecessarily spiraling into costly and time-consuming litigation.

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Pervin R. Taleyarkhan is a legal counsel at Whirlpool Corporation in Benton Harbor, Michigan.

Kari P. Kammel is the assistant director of education and outreach at Michigan State University’s Center for Anti-Counterfeiting and Product Protection and an adjunct professor of law at Michigan State University College of Law.