Toronto Raptors star Kawhi Leonard claims Nike stole a logo he created, “fraudulently” filed a copyright application for it, and then threatened to sue him for using it. According to Leonard’s complaint, which was filed in a California federal court on Monday, the basketball star partnered with Nike in 2011 as part of a multi-year endorsement deal in connection with which he agreed to allow the Portland-based sportswear giant to “borrow” a logo he created while in college, which features the design of a hand with his initials and the number “2,” for use on his Nike-branded wares.
Leonard claims that he “accepted one of [Nike’s] June 2014 proposals and granted Nike permission to affix the logo, based upon the [one he created], on Nike merchandise during the term of [their] agreement.” Despite permitting limited use of the logo by Nike, Leonard argues that he “never transferred the rights to the Leonard Logo to Nike – conversely, as the many communications, including text and e-mails show, Leonard permitted Nike to use the logo for their mutual benefit and for the specific purpose of effectuating the agreement for the term of the contract.”
In fact, Leonard claims he continued to use the logo on his own during the course of the Nike deal without pushback from the company.
However, things began to unravel in the fall of 2014 when Leonard claims that “without [his] knowledge or consent, Nike filed an application with the United States Copyright Office to register the [logo design].” When the copyright registration for the “Kawhi Leonard Logo” was granted in May 2017, it listed Nike as the sole author and owner of the registration.
Nike’s registration includes another interesting bit of information: it lists Nike as an “employer for hire,” meaning that the design at issue was a work made for hire, and that an employer (i.e., Nike) is considered the author even if an employee – or even an independent contractor – actually created the work. Such a situation comes about, according to the Copyright Office “if the parties expressly agree in writing that the work shall be considered a work made for hire.” (In this case, that language would have to have been included in the agreement between Nike and Leonard, namely, his Men’s Pro Basketball Contract).
Shortly after Nike’s copyright registration was issued and roughly two months after his deal with Nike had expired, Leonard sought protection of his own. In November 2017, he sports star looked to the U.S. Patent and Trademark Office (as distinct from the U.S. Copyright Office) and filed a trademark application for the same logo for use on “hats; shirts; pants; shorts; jackets; sweatshirts; sweatpants; jeans,” which was issued in November 2018.
Leonard claims that he “intends to use the logo on apparel and footwear that he is actively developing and intends to bring to market and to affix on items,” and may even begin attaching the logo to his game footwear, but not if Nike has anything to do with it.
According to Leonard’s complaint, counsel for Nike reached out to him in December 2018, “stating that Nike owns the logo pursuant to the agreement [he signed with the company] and Nike’s copyright registration of the logo.” As a result, Nike’s counsel “demanded that Leonard cease using the logo on non-Nike merchandise.”
Leonard’s counsel responded by demanding that Nike rescind its copyright registration for the logo, alerting Nike to the fact that Leonard intended to continue using the logo, despite further objections by Nike, which prompted Leonard to file suit, asserting that he exclusively “authored and owns” the logo. More than that, Leonard asserts that “to the extent [that Nike] contributed any effort to the creation of the logo, such efforts did not constitute … a ‘work for hire,’” and thus, Nike “has no rights in the logo.”
With the foregoing in mind Leonard has asked the court to determine that he “is the sole author of the logo,” that his use of the Logo does not infringe “any rights of Nike,” and that Nike “committed fraud on the Copyright Office in registering the logo.”
*The case is Kawhi Leonard v. Nike, Inc. 3:19-cv-01035 (S.D.Cal).