Sports

Fox Sports' USFL Wins A Trademark Battle, But Loses Ground In The War Over Rights

The ongoing case is pending in the Southern District of California.

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FootballA new spring football league called the USFL is set to launch on April 16, but it was not completely clear that it would come to life on that scheduled date until a judge made a key ruling on April 14. That is because Fox Sports, which is behind the startup, was sued by former owners of a football league that did business under the same exact name — USFL — decades ago, and claimed that it deserved damages, including injunctive relief, based on trademark infringement.

The Real USFL LLC, in its complaint, argued that “Fox has no claim to this legacy and no right to capitalize on the goodwill of the league” and that “Fox’s USFL franchise is an unabashed counterfeit.” While the case remains in its infancy, Judge John F. Walter, presiding over the matter, issued a very important decision for both sides of the dispute.

On April 14, Walter ruled, without oral argument, that The Real USFL LLC’s motion for a preliminary injunction, to prevent Fox Sports from using its marks in connection with the league, is denied. The Real USFL LLC certainly lost the battle, but the 15-page decision should provide the plaintiff comfort in knowing that it possesses more ammo to win the war.

The Real USFL LLC has not disputed that its original trademark registrations lapsed and, instead, has argued that its ownership derives from continuous use of the marks that began in 2006. While Judge Walter found that Fox Sports is entitled to a presumption of ownership in certain trademarks going back to 2011, due to the possession of registrations, the plaintiff was able to overcome the presumption by showing use in commerce prior to Fox Sports’ use.

The key language for The Real USFL LLC moving forward is found at the bottom of page 9 of the decision. Walter wrote that The Real USFL LLC has met its burden of showing that it is likely to prevail on its trademark infringement claim with respect to the league and team marks. The Real USFL LLC was able to effectively point to the use of marks at a 25th USDL reunion in 2007, an interview for an ESPN documentary in 2008, consultation and releases for use in various book and film projects from 2006 to 2016, and managing royalties from 2011 through December 2021. Taken as a whole, and in combination with apparel sales, Walter was convinced that this activity showed an intent to use the trademarks in commerce and to maintain an association of the USFL trademark with the prior league.

The reason why The Real USFL LLC’s motion for a preliminary injunction failed is that the other required factors for such relief could not be established. This includes showing a likelihood of irreparable harm if a preliminary injunction is not granted, that the balance of equities tips in the plaintiff’s favor, and that a preliminary injunction is in the public interest. First, any damage suffered by The Real USFL LLC can be addressed by monetary compensation and thus irreparable harm was not a convincing claim. Second, Walter decided that ordering a preliminary injunction would be extremely prejudicial to Fox Sports, which would need to reproduce footballs, sideline gear, hats, signage, etc., with the league about to launch. Finally, it was determined that the plaintiff’s delay in bringing its lawsuit and filing its motion for a preliminary injunction could significantly impact the interests of the public if granted, particularly for those business partners of the new league.

The ongoing case between The Real USFL LLC and Fox Sports Inc. is pending in the Southern District of California (Los Angeles) and has a case number 2:22-cv-01350.

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Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at heitner@gmail.com and follow him on Twitter at @DarrenHeitner.

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