NBA star Kawhi Leonard’s lawsuit asking a court to invalidate Nike Inc.'s copyright on a logo that he said he created highlights interlocking legal questions that can arise in such intellectual property fights.
Leonard, a Toronto Raptors forward, claims Nike stole a trademarked logo he designed around his hand, initials and jersey number, and fraudulently registered it with the U.S. Copyright Office. He asked the U.S. District Court for the District of Southern California to rule he owns the “Klaw” logo and that Nike defrauded the agency.
The case will hinge on the language in Leonard’s expired contract with Nike, attorney Jeffrey Jacobson of The Jacobson Firm PC, who represents professional athletes on intellectual property issues, said. Companies typically retain ownership of the intellectual property when athletes collaborate with companies on logos, he said, but circumstances can vary. And while trademarks require use in commerce to maintain, copyright grants a creator rights for several decades.
“A novel issue here is that Nike claims rights to a particular logo because of copyright, while Kawhi claims a registered trademark on hats, T-shirts and other stuff,” Jacobson said.
Nike, who had Leonard under contact from 2011 to 2018, had sent him a cease-and-desist letter demanding he stop using the copyrighted logo, Leonard said in his lawsuit. The company declined to comment on the lawsuit.
Leonard said in his complaint his trademarked logo is “vital” to his “ability to continue to grow his brand and expand both his commercial reach and influence with charities with which he is involved.” He also said he wants to use the logo—which he registered as a trademark in 2018—on footwear he’s developing. Nike rival New Balance is currently selling a Leonard-inspired game shoe.
Nike began discussions with Leonard to develop a logo to be used on merchandise sold under their agreement, Leonard said in his complaint. He said he rejected several design alterations Nike proposed before agreeing to one modified version in 2014. Leonard said he granted Nike permission to use that modified version while he continued to use it on non-Nike merchandise.
Leonard applied for his trademark in 2017. He alleged in his complaint that Nike had applied for a copyright earlier that year without his knowledge, falsely claiming that it created the logo in 2014. According to Leonard’s complaint, Nike allegedly informed Leonard it owned his logo in December 2018, and when Leonard objected and asked Nike to rescind its copyrights, it sent its cease-and-desist letter in March.
The degree of the alteration could have an affect on Leonard’s bid to nix Nike’s copyright, according to intellectual property attorney Gregg Sultan of the Law Offices of Gregg Sultan. If Nike’s version changed Kawhi’s design enough to give it a new expression, it would be a distinct expression.
“They could say there was a transformative use, that it changes the original work. I don’t know if that will fly. It’s unfortunately not black or white for either side,” Sultan said.
Several communications demonstrated the parties’ belief he owned the logo, including Nike references to it as “Kawhi’s logo,” Leonard alleged. Leonard said in his complaint that Nike refused to act when Leonard’s representatives found third-party infringement, “consistent with Nike’s position as a party without any ownership.”
Leonard is represented by Sullivan & Worcester LLP. Leonard’s counsel did not respond to requests for comment.
Kawhi Leonard v. Nike Inc., S.D. Cal., No. 19-1035, Complaint 6/3/19