QUILES LAW
  • Home
  • attorneys
    • Roger R. Quiles
    • Patrick P. Hankins
  • Servicing
    • Players & Coaches
    • Teams & Organizations >
      • Ebook
    • Content Creators
    • Businesses
    • Investors
  • Featured In
  • Resources
  • Blog
  • Contact

Blog

Logo Ownership Issues in Endorsement and Sponsorship Deals

7/2/2019

0 Comments

 
Over the past month, Kawhi Leonard, one of the NBA’s most iconic players, has continuously been in the news for leading the Toronto Raptors its first ever NBA championship. However, Leonard has also made news for his actions off the court. On June 3rd, Leonard initiated a lawsuit against Nike for ownership rights to a logo (seen below) that he claims Nike stole, “fraudulently” filed a copyright application for, and threatened to sue him over. The case is a great example of why individuals (in the esports context, players and streamers) must make sure that the ownership rights in their intellectual property are clearly established, expressed, and protected to the fullest extent prior to entering into sponsorships, endorsements, or other types of licensing arrangements.
 
Leonard’s Lawsuit
In his complaint, Leonard begins by stating that he originally created his logo while in college, long before he entered into three-year endorsement deal with Nike. This is an important fact in the case because if true, under United States copyright law, Leonard would have obtained ownership rights to the logo upon its creation.
 
After making this assertion, Leonard explains that Nike started discussions with him about developing a unique logo to affix on its merchandise shortly after he signed his endorsement deal with the company. Since Leonard had already created a logo, he maintains that Nike repeatedly asked to revise his existing logo, and sent him multiple modified designs based upon the mark he created. After denying several mock-ups, Leonard finally approved a refined design, and authorized Nike to use it on its merchandise.
 
Throughout the term of their relationship, which had been extended to July 2018, Leonard believed that he retained ownership in the refined logo since it was based on his original design and he never expressly transferred any ownership rights in the mark to Nike – he only authorized Nike’s use of the mark. However, Nike also believed it was the true owner of the new refined mark, and the company even filed an application with the United States Copyright Office to register the mark. Nike’s application was granted in 2017 and its registration lists the company as the sole author and owner of the mark, and describes itself as an “employer for hire.”
 
Typically, these types of endorsement agreements will include language that provides the company with ownership rights in any intellectual property created by the company during the term of the agreement. This language defines the business as an “employer for hire,” which signifies that it will own any designs created by its employees or independent contractors, as these designs are considered works made for hire. Still, this type of provision would not apply to marks that were created by an individual prior to entering into agreement, which appears to be the case here. Generally, in those situations, the owner of the mark would either sell the mark outright, or agree to license it to the business at the outset of their partnership. In both situations, a written agreement would clearly define ownership rights in the intellectual property and any modifications to the mark.
 
Here, Nike may try to argue that the “refined mark” was completely different than Leonard’s original logo in hopes of establishing its own copyright in the mark. It may also contend that Leonard expressly transferred any ownership rights in the mark to the company once it made modifications. In either event, Nike will need to provide strong evidence corroborating its argument. While it appears the parties are approaching this matter cordially, executing a well-drafted licensing agreement at the inception of their relationship would have prevented this matter from escalating to this point.
 
How does this apply to esports?
As the profiles of many players and streamers in the esports industry continue to increase in popularity, these individuals need to be mindful of their intellectual property. They must take the appropriate steps to ensure that ownership of such property is clearly established in all agreements and protected to its fullest extent. This is especially necessary for players and streamers when entering into endorsement or sponsorship agreements with companies, as these businesses may look to use or further develop an individual’s existing intellectual property. As seen with the Leonard case, this is particularly critical with any associated logos or marks. Clearly establishing and expressing ownership rights in a mark will make it apparent to the business that an individual owns the mark it wishes to use.
 
In order to do so appropriately, individuals should first ensure that they legally own their mark. Oftentimes players and streamers hire parties to design their mark for them. In this case, individuals must make sure that they receive a written work-for-hire agreement from any party who designs their mark. This agreement will state that any rights to the design have been assigned from the artist to the streamer or player. Without this agreement in place, the designer may still have ownership interest in the mark.
 
Players and streamers should also look to register their mark with United States Copyright Office and United States Patent and Trademark Office. In most cases, proof of copyright and trademark registrations will provide a party with strong evidence of ownership rights in a mark, and also provide them with a number of other benefits.
 
Once these measure are taken and retention of ownership is firmly in place, individuals can express their ownership rights in mark to any company that wishes to enter into an endorsement deal and proceed to license their mark effectively.
 
Conclusion
Distinguishing ownership rights to intellectual property can become increasingly difficult when multiple parties begin to use such intellectual property, like a logo. Since companies executing endorsement or sponsorship deals may look to use or further develop a player or streamer’s mark in the activation of these agreements, individuals must make sure that their ownership rights in the mark are clearly defined and expressed to the company at the outset of their relationship. By doing so, companies will be aware of the individual’s rights in a mark and look to license the mark appropriately. Effectively executing this type of agreement should prevent any ownership confusion and/or subsequent litigation, saving both parties time and money.
0 Comments

Your comment will be posted after it is approved.


Leave a Reply.

    Author

    Quiles Law is an esports and content creator law firm headquartered in New York City, representing a global clientele.

      Newsletter sign up

    Subscribe

      Questions?

    Submit

    Archives

    June 2022
    October 2021
    July 2021
    June 2021
    November 2020
    March 2020
    February 2020
    November 2019
    August 2019
    July 2019
    June 2019
    May 2019
    March 2019
    November 2018
    October 2018
    September 2018
    August 2018
    July 2018
    June 2018
    May 2018
    November 2017
    October 2017
    September 2017
    July 2017
    June 2017
    March 2017
    February 2017
    November 2015
    October 2015
    August 2015
    July 2015
    June 2015
    May 2015
    April 2015
    March 2015
    February 2015
    January 2015
    December 2014
    November 2014
    October 2014
    September 2014
    August 2014
    July 2014
    June 2014
    May 2014

    Categories

    All
    Aereo
    Ambush
    Apps
    Athletes
    Athletes Rights
    Basics
    Betting
    Bitcoin
    Blizzard
    Blog
    Burnout
    Business
    Business Formation
    Business Law
    Business Policies
    Call Of Duty
    CBA
    C Corporations
    Checklist
    College
    Constitution And Bylaws
    Content Creators
    Contract
    Contracts
    Copyright
    Corporate Law
    Corporations
    Criminal
    Crowdfunding
    Defamation
    Department Of Labor
    Discipline
    DMCA
    Donald Sterling
    Do's And Don'ts
    Due Diligence
    Employment
    Endorsements
    Equity
    Escape Clause
    Esports
    Exclusivity
    Fines
    Ftc
    Gambling
    How To
    Immigration
    Independent Contractors
    Influencer
    Info
    Infringement
    Insurance
    Intellectual Property
    Internet
    Interns
    Investment
    Ipad
    Lawsuit
    Leagues
    Legislation
    Liability
    Libel
    Licensing
    Litigation
    LLC
    Loans
    M&a
    Marketing
    Media
    Minors
    Mlb
    MLG
    Morals Clause
    Nba
    Ncaa
    Nda
    Negotiation
    New York
    Nfl
    Nintendo
    Non-disclosure Agreement
    Owners
    PEDs
    Players
    Privacy
    Pro Gaming
    Quora
    Regulation
    Representation
    Rules
    Sales
    S Corporations
    Small Business
    Social Media
    Sole Proprietor
    Sponsorships
    Sports
    Sports Agents
    Sports Business
    Sports Law
    Startups
    Streamers
    Substance Abuse
    Sue
    Supreme Court
    Swatting
    Tax
    Teams
    Tech
    Tortious Interference
    Trademark
    UAAA
    UK
    Video
    Video Games
    Virtual Currency
    Visa
    Website
    Wellness
    Yelp
    Youtube

    RSS Feed

    Contact
1177 Avenue of the Americas
Fifth Floor
​New York, NY 10036

(P) (917) 477-7942
(F) (917) 791-9782
Attorney Advertising. The information presented in this site should not be construed to be formal legal advice nor  is it intended to form any attorney/client relationship. Our attorneys are licensed to practice law in the States of New York, New Jersey, Texas and Wisconsin. Copyright Quiles Law, 2022. All rights reserved.
  • Home
  • attorneys
    • Roger R. Quiles
    • Patrick P. Hankins
  • Servicing
    • Players & Coaches
    • Teams & Organizations >
      • Ebook
    • Content Creators
    • Businesses
    • Investors
  • Featured In
  • Resources
  • Blog
  • Contact