When a lawsuit threat arrives in the mail

Photo provided by ULTIMATE BUBBLE SPORTS LLC

BOSSABALL IS BACK: Ultimate Bubble Sports is again offering bossaball after a legal threat.

Luke Rogers was well on his way to quitting his day job. He and his wife, Dayna, had run their startup, Ultimate Bubble Sports LLC, for nearly three years and business was steady.

About a year ago, they launched a new product: a full-size inflatable volleyball court. Their active customers were taking to it well.

Suddenly, though, a mysterious email arrived in their inbox.

“They wanted all my contacts, all of the information on how I got the court and they wanted me to send them the court,” Luke Rogers said. “They wanted all this stuff.”

The letter was from Spain-based Bossaball Sports SL, a company that has rented inflatable volleyball-style “bossaball” courts since 2005, according to its website.

“They’re a company in nine other countries – Brazil, South Africa, Dubai,” Rogers said.

Ultimate Bubble Sports offers similar services.

In the states, for $300-$1,000 per hour, customers of Ultimate Bubble Sports can rent games of Ultimate Archery, Bubble Soccer or Ultimate Bossaball – think of a giant, inflatable volleyball court, with two trampolines that allow hitters the chance at Olympic-like spikes. Rogers said Ultimate Bubble Sports targets college, high school and middle school-aged students, and they’ll travel with the equipment anywhere in the United States.

The target market of Bossaball Sports is very similar, according to the company’s website. At one point, Rogers even considered becoming an exclusive licensee.

“To start a company with them, you need to buy into their franchise, and it was too much money for me to do that,” he said. “So I thought, ‘I don’t need their help – let me just do it myself.’”

Rogers began adding a third game to his business by designing a bossaball court but stopped short of patenting the idea. Rogers said he found a company in Beijing to manufacture the court, though he can’t remember its name. He declined to disclose how much he paid to have the inflatable made but said the retail value is roughly $20,000.

“It came in and I started renting it out,” Rogers said.

But what happened next led to a major freak-out for the entrepreneurs.

“After I put it on social media, the company overseas found that I was, quote-unquote, infringing on their copyrights and their trademark,” Luke Rogers said.

That was when the letter arrived.

“You do not have the right to represent Bossaball or to undertake any Bossaball action at all,” reads the letter, asserting it’s from Bossaball Sports’ legal department.

Bossaball Sports officials claimed Ultimate Bubble Sports violated its international copyright, trademark and design patent rights held by the Spanish company.

“You use a nonauthorized counterfeit Bossaball playfield,” the letter goes on. “Bossaball hasn’t been officially launched yet in the USA, so our image has been damaged and the market has been corrupted by this illegal act of unfair competition.”

The letter, signed by Flemming Sorensen, who the website identifies as handling marketing and events for the company, concludes by demanding Rogers confirm in writing he’ll cease and desist promoting and renting his court, remove all related content from his website and social media accounts, agree he wouldn’t “buy, rent or use an illegal Bossaball court” and furnish the “full details of the manufacturer, owner or lessor of the court(s) you use in your promotion.”

“We immediately stopped renting the court out,” Rogers said. “I was very compliant. The biggest thing was being respectful until I could prove they were wrong.”

The couple hired licensed patent attorney Joe Johnson of Lathrop Gage LLP. His intellectual property law practice includes litigation of trade secret theft, infringement of patents, trademarks and other proprietary rights.

“He looked into trademarks and copyrights and all that, and they didn’t have anything in the United States, whatsoever,” Luke Rogers said.

Johnson penned a response to Bossaball Sports with his findings.

“I find no such patent in the U.S. registry,” Johnson wrote. “Regardless, my client is not using the trademark Bossaball, so there cannot be an infringement issue. As you should know, being from the Bossaball legal department, a trademark does not prevent others from using a product, only a unique product name.”

But Bossaball officials claim their rights were protected worldwide.

“Bossaball Sports SL is protected through international copyright and additional trademark and design patents worldwide,” a statement reads on BossaballSports.com. “Bossaball courts that have not been produced by our official manufacturers and have not been sold through Bossaball Sports SL and/or its licensed partners are counterfeit bossaball courts. … We will track down copycats.”

Again, Johnson asserted the relevant law.

“There is no such thing as ‘worldwide’ intellectual property rights,” he wrote. “You either have filed for rights in the United States or you have not. Assuming you have not done so, please stop falsely asserting intellectual property rights you do not own.”

Rogers said Bossaball Sports responded with a polite “thanks for letting us know.”

“They had nothing to stand on,” he said. “What I did after that was I trademarked the name.”

The trademark for Ultimate Bossaball belongs to the Rogerses and their business.

Estimating legal fees of $4,000, Luke Rogers said he’s thankful they hired an attorney.

“Worst case scenario would have been I could not run the inflatable,” he said. “After we invested so much money, at the time you’re praying and you’re freaking out.”

Now Ultimate Bubble Sports is looking into expanding its territory, as Luke Rogers gave up his assistant management job with Hy-Vee Inc.

“We’ve been focusing on some major fairs,” he said of potential state fairs in Iowa and Florida. “That way, people can see how cool it is. I want to travel to get the word out.”

Last year, Rogers said the company generated roughly $50,000 in revenue, and this year, he’s targeting $80,000.

He plans to buy the U.S. trademark rights to “Bossaball” and “Bossaball USA,” which he said costs about $2,500 apiece. Rogers also is exploring the idea of franchising his inflatable rental business.

Now, the Rogerses encourage other new businesses to identify potential legal kinks early on.

“I really believe it was a real risk to create it and build everything without doing a total, in-depth research on the situation,” Luke Rogers said. “Not all the time does your hard work and tenacity and taking a chance work out like this. It could have gone the opposite way.”

He’s glad to have the strange – and tense – situation behind him.

“It’s like going from a lion to a kitten,” Rogers said.

“You go from a totally threatening situation, then you have a lawyer look into it and then there’s nothing.”