10-year license agreement in place for Asia, Africa, Europe, and Australia/Oceana
Las Vegas, Nevada Jan 21, 2022 (Issuewire.com) – Professional Fighter’s League (“PFL”) was served a “Cease and Desist” notice by WSOF Global in conjunction with their joint 10-year license agreement. The 10-year license agreement was originally inked and approved in February 2016 by World Series of Fighting majority owner Bruce Deifik. The license agreement was assumed in full force and effect by PFL when the assets of WSOF were transferred to PFL in 2017.
The 10-year license agreement provides WSOF Global the sole and exclusive rights to all of the company’s “Licensed Marks” outside of North and South America. Licensed Marks are defined as any and all trademarks, service marks, logos, insignias, designs, and all other commercial symbols which the Licensor now uses or hereafter adopts, including any marks owned or registered in the future. Those contractual rights also prohibit Licensor (PFL) with the ability to conduct no more than three (3) events per year outside of North and South America.
“We have attempted to communicate in good faith to resolve our issues with PFL,” states WSOF Global President, Shawn Wright. “We have previously put PFL on notice of their many violations and breaches of our joint licensing agreement, especially after PFL continues to publicly announce plans to conduct events in Europe, Asia, and Africa. These are exclusive territories granted to our company, and PFL may not conduct more than three events per year in our territories, and must provide us at least 90 days prior written notice.”
“Don Davis, Chairman of PFL, signed off on the documents listing the license agreement as being assumed by the new PFL company and we were notified as such by the corporate attorney”, Wright added. “PFL now refuses to communicate with us and is in violation of our joint agreement. We have no other choice at this point but to enforce our contractual rights.”
Since PFL refuses to communicate with WSOF Global, Wright is worried there may be a deeper concern at the organization. Wright continues, “At first, we were excited at the opportunity to work with the new PFL executives with the additional funding coming into the company in 2017. PFL has now raised over $150M by their own account and they appear to have burned through most of this money; continuing to operate at a massive year-on-year loss. Were these investors made aware that PFL did not have the rights to its own trademarks in the majority of the world? Was the 10-year license agreement disclosed prior to accepting these investments? Did PFL make claims to the investors it was expanding into territories it had already licensed to WSOF Global? We may never get the answers to these questions and it is deeply concerning.”
It further appears PFL was accused of engaging in “naked licensing” by refusing to communicate with WSOF Global. In general, if the trademark owner fails to exercise control over a licensee, a court will find that the trademark has been abandoned because it is a naked license. In addition, even if you just fail to monitor the licensee, this is also considered a naked license. A trademark owner may lose the rights to their trademark when engaging in naked licensing, meaning that the trademark owner loses its ability to prevent others from using that trademark.
Wright went on, “Why PFL just refuses to discuss these issues with us is just mind-boggling. Our company and staff have spent years supporting the organization, and that hard work will be in vain if PFL loses the right to protect these trademarks. Hemorrhaging money year after year is not a good operating business model, especially since after wasting that enormous amount of money, PFL viewership is still only half of what WSOF got on NBC Sports.”
WSOF Global is the sole and exclusive licensee of all trademarks, service marks, logos, insignias, designs, and all other commercial symbols used by PFL and WSOF outside of North and South America. Media inquiries should be sent to [email protected].
Source :WSOF Global
This article was originally published by IssueWire. Read the original article here.
Disclaimer: The views, suggestions, and opinions expressed here are the sole responsibility of the experts. No Exact Observer journalist was involved in the writing and production of this article.