Earlier this year, a United States District Court located in Oregon upheld a copyright registration held by Nike, Inc. for a design of “The Claw” logo depicting Leonard’s initials “KL” and his jersey number “2” within an open hand. Leonard had been claiming that he was the owner of the design, as he had originally drawn a rough sketch of it back in 2011, and that Nike had created a derivative work of his original drawing when he was under an endorsement deal. The court ruled that contrary to Leonard’s position, The Claw was not a derivative work of Leonard’s original drawing, but rather was an “independent piece of intellectual property” that Nike had full rights to.
While this is certainly a blow to Leonard, and highlights the need for creators to consult with an attorney to make sure they protect their intellectual property rights, it also is a prime example of the differences, and unintended overlap, between trademark and copyright law.
Copyright law protects creative and original expression. It covers all types of creative works, from music to film to books to art. Trademark law, on the hand, protects brands. It covers devices (words, phrases, logos, etc.) that providers of goods and services use to identify their goods and services and differentiate them from those of other providers. While these are typically very distinct areas and cover vastly different rights, one area that they overlap is logos.
A logo can be both a copyright and a trademark as it can be both a form of creative expression and used to identify a brand. However, as mentioned above, each covers different rights. A copyright in a logo would prevent others from reproducing, distributing, making derivative works, or displaying the logo without the owner’s permission. A trademark on the other hand, would prevent other businesses from using a logo that is either the same, or would likely cause confusion, to identify and promote their own similar goods or services. As a note, one can gain what are referred to as “common law rights” in a trademark (once used “in commerce”) or copyright (once “fixed” in a “tangible medium”) without formally registering with government entities, but they are not as strong as registered rights, which are always recommended to be obtained when possible.
So how does all this relate to the Leonard v. Nike situation? Here’s how:
- When Leonard first drew his original logo back around 2011, he potentially gained a common law copyright in that drawing.
- During the deal, Nike made changes to Leonard’s drawing, and started selling it on shoes, potentially granting Nike a common law trademark in its new logo.
- When Nike filed for a copyright with the United States Copyright Office, it gained rights in a registered copyright.
- After the deal ended, Leonard, without knowing Nike filed the copyright, filed for and received a registered trademark from the United States Patent and Trademark Office for the new logo for use on various clothing items, but not including shoes.
- At this point, when Leonard sued Nike for copyright infringement, he was claiming that his common law copyright should trump Nike’s rights in its registered copyright as a derivate work.
- However, as stated above, a federal court has held that Nike’s logo is not a derivative work of Leonard’s, but rather its own independent creation.
- Additionally, once Leonard sued Nike for copyright infringement, Nike sought to have Leonard’s registered trademark cancelled.
- However, on March 13, 2020, the Trademark Trials and Appeals Board overturned a cancellation of Leonard’s registered trademark, restoring it in full force and effect.
Some additional observations:
- If Leonard would have consulted an attorney about his logo when he entered into the endorsement deal with Nike, he could have avoided all this by including language in the contract stating that he is the owner of all rights in the logo including any changes to it.
- If Leonard had included shoes in his trademark registration, he may have faced a tougher time keeping it, since he used the new logo and Nike could argue it was the first user of the mark and had a common law trademark.
- If Leonard would have filed for a registered copyright in his original logo, he may have had more success in arguing that the new logo was a derivative work.
- The U.S. District Court that ruled in Nike’s favor is located in Oregon, home to Nike’s headquarters.
- Is the new logo really an independent creation, and not a derivative work? Decide for yourself (see below):