Intellectual Property

Kawhi takes to a different court looking for victory

By Tony Poland, AdvocateDaily.com Associate Editor

Toronto Raptors superstar Kawhi Leonard’s fight to regain rights to the logo he says he created is a reminder to consider every contingency when it comes to protecting your creative property, says Toronto intellectual property lawyer John Simpson.

ESPN reports Leonard has filed a lawsuit against Nike in an attempt to reclaim control over the logo.

“In 2011, just after being drafted to the National Basketball Association, Kawhi Leonard authored a unique logo that included elements that were meaningful and unique to him,” ESPN reports, quoting from the lawsuit. “Leonard traced his notably large hand, and, inside the hand, drew stylized versions of his initials ‘KL’ and the number that he had worn for much of his career, ‘2.’ The drawing Leonard authored was an extension and continuation of drawings he had been creating since early in his college career.”

According to the suit, “Several years later, as part of an endorsement deal with Nike, Leonard allowed Nike to use on certain merchandise the logo he created while Leonard continued to use the logo on non-Nike goods. Unbeknownst to Leonard and without his consent, Nike filed an application for copyright registration of his logo and falsely represented in the application that Nike had authored the logo.”

Simpson, principal of IP and new media law boutique Shift Law, says “the best and only time” to ensure your copyright is protected is when you enter into a deal with another party.

“When you’re dealing with something inherently valuable, or that could become a worthwhile marketing commodity, be absolutely sure where the rights lie,” he tells AdvocateDaily.com. “And if you were involved in the creation of it be very careful that you don’t inadvertently assign your rights away, and be sure to maintain rights to derivative variations of it.”

The lawsuit states Leonard and Nike have been in touch recently regarding the use of the logo. In the last correspondence in March, Nike told Leonard “it owns all intellectual property rights in the Leonard Logo and demanding that Leonard immediately cease and desist from what Nike claimed was the unauthorized use” of the logo, ESPN reports.

Simpson, who is not involved in the case and comments generally, says there could be a question about who is the rightful owner of the logo. While Leonard may have brought the idea to Nike, the company could have restyled it and now believes it should own the rights.

“Part of it may be the distinction between the expression of an idea and the creation. So for example, Kawhi has this claw logo that he designed in college, and when he is working with Nike he says, ‘here, how about this idea’ and they hire an artist who may have turned that into something we now recognize as the logo.”

Simpson says even though Leonard is no longer with Nike, the company may still find worth in the copyright and believe they are the rightful owners.

“Obviously, Nike would have good counsel. They wouldn’t just go out on a whim and register the copyright,” he says. “I think they see real value in it and they’ve got a potential ownership stake in it. It could be a defensive manoeuvre. Nike may want to register it so no one else can use it.”

Simpson recommends striking while the iron is hot when it comes to signing a contract to protect your intellectual property.

“The best time to do that is when you have the most leverage, and when the idea is on everyone’s mind because these situations happen all too often. Everyone’s friendly and excited, and you just want to make something of it, but years later parties end up going in different directions, and the subject matter might be much more valuable at that time,” he says. “Be clear on the details.”

Simpson says it’s also important to remember that it is a business deal.

“Always be aware of big companies. They’re going to have language in their contracts that have lots of tricks and traps,” he says. “They want to gain exclusive rights to as much as they can, and they use every opportunity to do that.”

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