We’re in the middle of the NBA Finals but Toronto Raptors forward, Kawhi Leonard is multi-tasking as he is in the midst of battles on and off the court.
Leonard is currently challenging the reigning NBA Champions Golden State Warriors for the Larry O’Brien Trophy, but he is also going up against athletic wear giant, Nike, Inc to dispute their copyright registration of his “Klaw” logo.
In a lawsuit against Nike, Leonard is asserting that he created the logo himself and therefore he is the copyright owner. Under Section 201 of the United States Copyright Law, copyright in a work vests initially in the author of the work. Simply, the creator of the work is generally the owner of that work. With this rule considered, Leonard is the creator of the logo and therefore, the holder of the copyright interest in that logo.
In 2011, Leonard entered into an endorsement agreement with Nike. The purpose of the agreement was for Leonard “to provide personal services and expertise in the sport of professional basketball, and endorsement of the Nike brand and use of Nike products.” In the legal documents, Leonard states that he granted Nike permission to use the logo “for their mutual benefit” but, he did not assign ownership rights to them.
Generally, a copyright owner may allow another person or entity to use their copyrighted work without giving up ownership rights via a licensing agreement. Considering that Leonard continued use of the logo for non-Nike products, it may be safe to assume that he believed he granted Nike a non-exclusive license to use it. This means that Leonard granted Nike permission to use the logo while retaining the ability to exploit it as he sees fit. However, it is unclear whether there is a particular clause in the written agreement which speaks to the grant of a non-exclusive license.
If Leonard did not assign ownership rights to Nike and instead merely granted them permission to use the logo via a non-exclusive license, then Nike may not have had the standing to seek copyright registration of the logo.
Section 409 of the Copyright Act requires a copyright claimant to provide in an application for copyright registration the claimant’s name and address, and if claimant is not the author, a brief statement of how the claimant obtained ownership of the copyright. Under Chapter 37 of the Code of Federal Regulations, a copyright claimant is either: (i) the author of a work; or (ii) a person or organization that has obtained ownership of all rights under the copyright initially belonging to the author.
On their copyright application, Nike claimed that they are the authors (creators) of the logo and achieved copyright registration on May 11, 2017. Since Leonard claims he is the actual author of the logo, he has asserted that “Nike’s claim of ownership is premised on false representations of its authorship to the U.S Copyright Office
Leonard wants the court to declare that:
1) Leonard is the sole author of the logo
2) Leonard’s logo does not infringe any rights of Nike
3) Nike committed fraud on the U.S. Copyright Office in registering Leonard’s logo
There is a valuable lesson in all of this. Be proactive in protecting your intellectual property. If Leonard sought copyright protection for his logo upfront, this dispute wouldn’t exist. It costs a couple hundred dollars to hire an attorney to secure copyright protection for your work. It costs tens of thousands to fight someone who may have falsely registered your work. Pick your battles wisely.
I’ll be monitoring this case. I look forward to the outcome.
DISCLAIMER: This blog post is for educational purposes only and should not be construed as legal advice.