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Beauts trademark dispute developing

The NWHL - PSE saga continues

Pat McCarthy

As Kirsten Whelan of Victory Press first reported, the NWHL has escalated its dispute with Buffalo Beauts Hockey (BBH) over the Buffalo Beauts trademarks. Buffalo Beauts Hockey is the subsidiary Pegula Sports and Entertainment used to run the Beauts after taking over the team in December 2017

According to the court documents The Victory Press hosted on their article, the league received a letter from the firm representing BBH to cease and desist all use of the Beauts marks, including on social media, merchandise, and marketing, on June 25. They had until June 27 to do so and provide proof that all merchandise had been destroyed, or BBH would take further legal action. The NWHL’s filing was received on June 30.

Might we see a NWHL team in Buffalo without the Beauts logo next season?
Pat McCarthy

The Legal Stuff

Disclaimer: this section was written by a rising third-year law student. I am not a barred attorney and nothing in this article is intended to be legal advice or to represent the opinions or advice of my employer or school. I have experience reading, drafting and analyzing intellectual property licensing agreements for artists and professional sports teams and classroom experience in U.S. trademark and copyright law.

First and foremost, this isn’t what the average reader would understand to be a lawsuit—yet. The NWHL has filed a ‘declaratory judgment’ against the PSE-Beauts entity. A request for a declaratory judgment is not a traditional adversarial lawsuit— it is a formal request for a court to find an answer. That being said, a party filing for a declaratory judgment often happens before a full lawsuit is filed. The question being asked here is whether or not the NWHL is entitled to continue the use of the Buffalo Beauts trademarks, and save both parties the money and time that a full lawsuit would require.

What even is a trademark?

Any design, word, name or symbol that is used to indicate the source of a good or service in commerce is a trademark. The Nike swoosh, for example, serves as an indicator that the shoes I’m wearing come from the Nike company—which makes it a trademark. There are different kinds, but for this situation what’s important to note is that there is a Buffalo Beauts word mark—meaning the words “Buffalo Beauts”, used in commerce to identify entertainment services (hockey)—and a design mark—meaning the buffalo logo with the crown and stars.

What is infringement?

Trademark registration and rights can be confusing, but to understand this situation it’s only really necessary to know that the person who ‘owns’ the trademark rights to a particular mark is the one who gets to use that mark to identify their goods and services. So, going back to the Nike example, if I started making shoes and used the Nike swoosh on my products, I would be infringing their trademark rights because only they have the right to use the mark to identify their goods. One reason this exists is to avoid consumer confusion. You want to be able to know who’s selling you what, and the companies behind the brands want to make sure you know, too.

Who’s infringing on who here?

This is the core of the dispute between the NWHL and PSE. On June 23, the Beauts’ social media accounts disappeared. According to the complaint filed by the NWHL, on June 25 PSE sent the NWHL a cease and desist letter, essentially asserting that the NWHL was infringing PSE’s trademark rights by continuing to use the Beauts marks in commerce. The NWHL insists that its use of the marks is consistent with a Licensing Agreement the two parties executed in August of 2018.

These kinds of agreements are extremely common, particularly in sports and entertainment. They are executed between parties who own trademarks or copyrights and parties who want to use them.

According to the NWHL, the Licensing Agreement was not mentioned at all in the cease and desist letter that PSE sent to the NWHL a few days ago. This makes sense, because the Agreement is the only documented claim the NWHL has to those trademarks. PSE also allegedly gave the NWHL only two days to respond to the cease and desist letter. It’s clear that PSE intends to retain the use of the Buffalo Beauts marks—but it’s also clear they don’t want to use them if the NWHL is involved. It’s not clear whether that refusal is #ForTheGame-related.

Parts of the Licensing Agreement itself are included in the complaint, which you can find on the Victory Press’ site. It’s worth a read if you’re curious, but the judge will have to review the NWHL’s complaint and the Licensing Agreement and decide whether or not the Licensing Agreement means the NWHL should be able to continue using the Beauts marks. It appears that, when the Agreement was signed, PSE purchased the marks from the NWHL. Currently, the trademarks on the U.S. Patent and Trademark Office website list the owner of the Beauts word mark as PSE, not the NWHL. However, the NWHL is arguing that the language of their agreement reserved their ability to use the marks regardless of who owns them.

It’s certainly possible to interpret what excerpts we have of the agreement that way. It might also be possible for the judge to read that agreement and decide that PSE is within their rights to refuse to let the NWHL use the Beauts marks. The third possibility is that a judge will read the NWHL’s complaint and decide they would rather not make a decision based on that information alone—at which point this dispute might escalate to an actual lawsuit.

If a judge decides the NWHL can no longer use the Beauts marks, almost everything about the team’s presentation would probably have to change.
Pat McCarthy

What does this mean for the Beauts?

This marks another chapter in the winding story of the NWHL and Pegula Sports and Entertainment. In December 2017, PSE bought the Beauts, making them the first NWHL team under private ownership.

The relationship came to an end less than a year and a half later as PSE formally ended the relationship on May 8, 2019. The announcement came on the heels of the #ForTheGame movement, in which more than 200 players said they would not play in any North American professional women’s hockey league this fall. All of the Beauts players from the 2018-19 season had tweeted the pledge initially, with star goaltender Shannon Szabados being credited as a leader in the movement. The Beauts also had gone through significant staffing changes in the second half of the season, meaning the organization was most likely in the market for a new general manager and a new coaching staff.

The NWHL has begun to fill those vacancies. Already, they have named Mandy Cronin as as General Manager and Pete Perram as head coach. Corinne Buie has re-signed with the team for her fourth year in Buffalo, after initially coming out in support of the #ForTheGame pledge. The team has also added former CWHL goaltender Mariah Fujimagari and rookie Brooke Stacey joining the team as well.

However, on June 23, the Beauts’ social media handles went dark. According to Lydnsey D’Arcangelo, the issue was “minor,” with no rebranding or move out of Buffalo planned. At the time, the Buffalo News reported the NWHL had not signed the paperwork to take control back over of the team — and the trademarks. The Buffalo News also reported that the NWHL made additional financial demands, though the initially 2017 agreement involved no franchise fee.

As of now, the Beauts’ social media accounts are not active. The outcome of this dispute will very likely affect the branding of a Buffalo-based NWHL team rather than anything else about the team or league’s operations. If they can sign enough players to fill a roster, the NWHL will still probably have a team in Buffalo. What that team is called might very well depend on what happens with this filing.