Intellectual Property

It's a different ball game as Raptors face branding challenges

By Tony Poland, AdvocateDaily.com Associate Editor

After winning their first NBA championship, the Toronto Raptors’ court battles continue as the team and one of its star players have different fights to protect their brands, says Toronto intellectual property lawyer Taras Kulish.

On one front the Raptors are facing a challenge from Monster Energy, makers of a popular beverage, who say the team’s basketball logo is too similar to the stylized 'M' they use.

Meanwhile, NBA playoff MVP Kawhi Leonard has filed a lawsuit against Nike in an attempt to reclaim control over a logo he says he created.

Kulish, a senior associate with Steinberg Title Hope & Israel LLP, says the Raptors are in a trademark skirmish while Leonard is in a fight for the copyright to his 'Klaw' logo.

“It’s this whole issue of sports marketing,” he tells AdvocateDaily.com. “Millions and millions of dollars relate to a logo.”

Neither case has been proven in court.

CBC reports that Monster Energy filed a claim with the U.S. Patent Office's Trial and Appeal Board in 2015.

"[Monster] has sold billions of dollars worth of goods under [its] mark," state the company's documents. "[Monster] will be damaged by registration of the [Raptors] in that the mark will dilute the distinctive qualities of [Monster's] mark ... and will lessen the ability of [Monster's] mark to distinguish its goods," CBC reports.

The news outlet reports Monster's logo is of three jagged vertical gashes, resembling those from a claw, while the Raptors use a basketball with three diagonal claw gashes.

Maple Leaf Sports & Entertainment Ltd. filings explain that the Raptors have used a logo featuring three claw marks and a basketball since 1994, according to the news report, and that the current version is a development of the original one and is "the same or substantially the same."

Kulish, who is not involved with either case but comments generally, says in the Raptors-Monster Energy tussle “the issue always comes down to whether one logo is confusing with the other.”

“It's not as simple as a side-by-side comparison,” he says. “They're probably going to be pulling out all the stops and getting experts to comment on all the similarities or differences between the two logos."

Kulish says the Raptors claw is turned sideways and resembles an 'E.' However, if it was rotated, an argument could be made that it was an 'M' and then “maybe you could question whether there is an association between the two companies."

He says the test is always: “Is it confusing?”

“The judge is going to ask will the public think that the goods in question come from a single source,” Kulish says.

“Is the hurried consumer going to be led to believe that the goods identified by the logos come from a single source,” he says. “When lawyers and experts look at it, they are very slow and deliberate but the man on the street is just looking at things in a hurry. The real question is whether that person would be confused?”

He says the Leonard case presents a different challenge.

ESPN reports Leonard has filed a lawsuit against Nike in an attempt to reclaim control over “a unique logo that included elements that were meaningful and unique to him.”

“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,’” ESPN reports, quoting from the lawsuit. “The drawing Leonard authored was an extension and continuation of drawings he had been creating since early in his college career.

“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,” according to the lawsuit.

Kulish says the issue highlights how important these logos are, noting the argument is not just about “the creative process” and who came up with the idea.

“It would seem reasonable or logical that the person who came up with the original concept should have the rights to the design and receive the profits. But then we have to look at what kind of contract did he have at the time. Did it specifically say, “You give us the work and we own it?” he says. “It’s going to be quite complicated. We couldn't possibly know everything unless we had all the contracts.”

Kulish says it’s a lesson for athletes to protect themselves from the start. With the NBA draft coming up, he says that the top picks could find themselves facing similar circumstances.

“These guys are already designing their personal logos. "Athletes are also entrepreneurs and need to make sure they retain the rights and control of their designs," Kulish says.

“Athletes are also public icons and special words or phrases they say could take off in the public imagination and they should make sure they control their phrases and its marketing."

He points to a recent June 4 U.S. filing for a trademark of the phrase Board Man Gets Paid, for sports shirts.

“The NBA, the Raptors and Kawhi Leonard should be concerned if the man filing was not authorized by any of them to do it," Kulish says.

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