John Horan, publisher of the American edition of Sporting Goods Intelligence, won a complete victory a few days ago in a dispute against Formula4Media, a U.S. publishing company formed in 2005 that put out a controlled circulation magazine for the U.S. market, called SGI The Magazine and then renamed as Sports Insight. F4M continued publishing other similar magazines supported by advertising for the U.S. market: Textile Intelligence, Footwear Intelligence, Team Intelligence, Running Intelligence and Soccer Intelligence.
The whole exercise was based on a licensing agreement, but when the time came in 2006 for F4M to make its first royalty payments under the agreement and pay dividends on the 5 percent interest held by Horan’s company in F4M, it pointed out that a Buddhist organization, Soka Gakkai International, had registered the trademark "SGI" for consumer magazines. The details on this organization, which has nothing to do with us, props up sometimes when people "google up" the SGI name to get through to us.
Horan’s trademark counsel researched the issue and gave a formal opinion to F4M that Soka Gakkai’s rights did not interfere with his rights to use the "SGI" mark in the sporting goods industry and to license it out – for example to us for the European edition of his newsletter. F4M never paid its dues. Horan made 19 claims against F4M and all 19 of these were granted in a decision made by a U.S. arbitrator last week.
F4M made 18 claims against Horan and all 18 were denied. Among their claims were that the licensing agreement was unenforceable because of Soka Gakkai’s registration, the use of the letters "SGI" by an executive search firm, Sports Group International, and the use of the letters "SGI" in the logo of the World Federation of the Sporting Goods Industry. It also denied a most curious claim by F4M that the license agreement prevented Horan from using the boxed SGI logo with our "Sporting Goods Intelligence" lettering that we have used continuously on the American and European newsletters.
F4M was ordered to deposit all the minimum royalties due under the contract. F4M was ordered to comply with the terms of the licensing agreement and use the trademarks in the licensing agreement for the remainder of the contract term, namely SGI The Magazine, SGI Footwear Intelligence, SGI Team Intelligence, SGI Textile Intelligence, SGI Running Intelligence and SGI Soccer Intelligence on their publications. It was further enjoined from using any other marks in its activities during the term of the licensing agreement other than the ones in the licensing agreement.
