Nike v Kawhi play-off

Basketball star Kawhi Leonard is taking on Nike, his former sponsor, in a trade mark dispute over his personal logo.

Kawhi originally designed his signature logo, “KLAW”, in his college years, a design which consists of his initials ‘KL’ and his jersey number ‘2’ stylised into the shape of his famously large hands which, spectators say, have contributed to his success as a basketball player.

According to the lawsuit, Kawhi gave Nike permission to use his logo in respect of merchandising for the period of his sponsorship deal between October 2011 and September 2014, with the recognition that the logo ultimately belonged to him. Essentially Nike had only ‘borrowed’ the logo from Kawhi and were using it under licence. However, unbeknownst to Kawhi, Nike filed for a copyright registration for the logo (copyright is a registered right in the US, unlike in the UK and Europe), in which they named themselves as the sole owners of the logo. A very sneaky move from Nike which only came to light as a result of Kawhi being prohibited by Nike from using his logo on his own merchandise!

Kawhi claims Nike fraudulently misrepresented themselves as the owners of the logo in front of the US Copyright Office, as the rights to the logo were never assigned, and is seeking a revocation of the copyright registration. Now that may indeed be foul play!

Nike have only a couple of weeks now to respond to the complaint by settling with Kawhi or filing a motion to have the case dismissed. Either way we can be sure that Kawhi will not back down without a fight to regain possession; let’s a hope the NBA win for his team can be replicated off the court!

Briffa Comment

This case highlights the importance of making sure all the boxes are ticked when entering into an agreement that allows third parties use of your brand. A comprehensive licence agreement is key in ensuring you still get the recognition as the owner or author of your work whilst allowing someone else to use it in return for an agreed fee and certain commercial restrictions.

Furthermore, before entering into a licence agreement it’s important to ensure that you have registered your brand name or logo as a trade mark thereby ensuring that you are the outright owner of the monopoly rights. Trade mark registrations grant you the right to use your brand name or logo in your specified goods/services for as long as you wish (subject to continuing use and regular renewals). In this case, Kawhi Leonard had not gone to the lengths of securing trade mark protection for his logo before entering into his sponsorship deal with Nike. If he had, Nike would have struggled to register the copyright in the first place. So the moral of the story… guard your brand!

Briffa’s solicitors are experts in all aspects of trade mark law and practice. If you would like to book a free consultation to discuss any trade mark or other intellectual property issues, please do not hesitate to contact us on 020 7096 2779 or info@briffa.com.

Written by Joshuanne Amachie, Paralegal