Not only does Lindland now ask the California federal court to dismiss Henderson’s complaint altogether, but in his answer to Henderson’s complaint, he also countersues the Strikeforce light heavyweight champion for claims including trademark and copyright infringement, unfair competition, deceptive advertising, breach of contract, and interference with Lindland’s future business relationships.
Henderson fired the first shot in this legal dispute by filing the lawsuit on Feb. 14, alleging trademark infringement, copyright infringement, and unfair competition against Lindland and his company, Team Quest Fight Club, LLC.
First, another brief installment of Sherdog’s crash course in copyright and trademark law: At the basic level, copyrights and trademarks each protect different types of intellectual property that can be bought, sold, and loaned or “licensed” away. Copyrights are intellectual property rights that protect the holder’s interest in original works of art -- like a picture, book, song, or film.
Trademarks (called “marks”), on the other hand, are customarily rights that protect the holder’s interest in things such as a name and/or a logo -- a hallmark of their brand or business. Copyrights can be registered with the U.S. Copyright Office, while trademarks and logos are registered with the U.S. Patent and Trademark Office. States also usually have their own methods of registering both types of intellectual property (often referred to in legal circles as “IP”), and registration is not necessarily the only way that a holder can attain IP rights.
According to his complaint, Henderson has been using the Team Quest name and “fist” logo -- the same logo that continues to be stamped on Team Quest merchandise today -- since 1999, when he and Randy Couture had the artwork designed. Then, according to Henderson, they copyrighted the artwork with the U.S. Copyright office. Despite the “fist” copyright, no one registered the Team Quest name and logo with the U.S. Patent and Trademark Office until Lindland.
In fact, according to USPTO records, Henderson has never filed a USPTO trademark application for either the logo or the name, including the application for Team Quest MMA Fitness, one of Henderson’s own companies. (The application for that name was filed by Lindland.) In short, Henderson’s leading argument is that even though Lindland and TQFC may technically own the federal trademarks, Henderson was using them long before Lindland, and therefore Henderson is the true owner -- or “senior user” -- of the marks.
As expected, Lindland’s story is somewhat different. The main argument Lindland hangs his hat on is this: not only was he the first one to truly use the “Team Quest” logo and name Â¬as part of a business in the U.S., he was the first and only one to take it to the USPTO -- and Henderson knew it for years before he ever protested.
Lindland alleges in his motion to dismiss that around the time when he returned to Oregon from his silver medal run in the 2000 Olympics, Henderson and Couture were closing down their “Performance Quest” gym. Lindland further alleges that despite Henderson’s move to Southern California, the three decided to keep assisting each other in preparing for their MMA fights, dubbing themselves “Team Quest.” (Lindland states that during the six year period after Henderson’s exit from Oregon, the current Strikeforce champion wore “Team Quest” shirts mostly in connection with his Rings and Pride fights in Japan -- not in the U.S.)
Meanwhile, in 2001, Lindland claims in court paperwork that he decided to start his “Team Quest Wrestling” program for children, followed that same year by the Team Quest Fight Club MMA gym, owned by him, Couture, and trainer Robert Follis. Down the road, Lindland (and TQFC) registered the trademarks with the USPTO. And at some point, Couture and Follis both allegedly ended up transferring and/or selling off their interests in TQFC to Lindland.
Henderson was well aware of all these ventures, Lindland alleges in the motion, but he simply preferred not to take part. In Lindland’s countersuit, he states that he eventually “licensed” Henderson to open a Team Quest gym in California. According to the countersuit, not only did Henderson get that gym up and running with TQFC’s help, Henderson later authorized gyms in Encino and San Jacinto to use the Team Quest logo and name, despite Lindland’s alleged refusal to let him do so. Lindland and TQFC’s attorneys claim to have even sent those gyms “cease and desist” letters warning them that they did not have permission to use the marks. Henderson allegedly received a similar one earlier this year.
With this version of events, Lindland is asking the court to dismiss Henderson’s side of the lawsuit. There is simply no dispute, he claims, that Lindland and TQFC are the “senior users” in this equation because they own the federal trademarks. But even if the court places great weight on use of the marks before any of the USPTO registrations, argues Lindland, Couture’s longstanding interest -- starting around the same time as Henderson’s -- was transferred to Lindland, and he thus gets to “stand in his shoes” as if he were Couture himself, cutting against Henderson’s argument that he and Couture are the most senior users (since 1999).
On top of all this, Lindland alleges that Henderson knew about Lindland’s use of the marks and registration of them, but never complained until recently, and so is now barred from reaping any benefit from waiting so long.
In addition to asking the court to dismiss Henderson’s claims, Lindland countersues Henderson for many of the very same claims in Henderson’s initial complaint. And he asks the court to make Henderson permanently refrain from using the Team Quest marks, immediately destroy or retract all of his Team Quest materials, issue “corrective advertising” and press releases addressing the “confusion” among Team Quest marks, and also pay TQFC all profits he made from improperly using the marks. Furthermore, Lindland wants the court to award him millions in damages plus attorneys’ fees and costs of the lawsuit.
Trademark and copyright law is by no means black and white, so there is no way to predict what the court will do. But there are certainly arguments on both sides in this case. If the court dismisses Henderson’s claims, Lindland’s countersuit will be the only one standing and it will be up to him whether to keep the lawsuit going. If the court denies Lindland’s motion to dismiss, both sets of claims will still be in the game. Stay tuned.
Tracey Lesetar is an attorney at the global law firm of Orrick, Herrington & Sutcliffe, and is experienced in matters related to the business of MMA. More background regarding Lesetar’s experience can be found at her lawyer profile here. This article does not provide legal advice, and any opinions expressed in this article are solely those of the author and do not reflect the views of her law firm. J.R. Riddell also contributed to this article. Information on his experience can be found here. Lesetar can be reached at [email protected] and Riddell can be reached at [email protected]view original article >>
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