Federer’s Trademark Winner Serves as Another Volley for Faulty IP Law Outcomes
Today’s professional athlete has a greater opportunity to grow their brand and image than ever before. An athlete’s nickname, personal logo, signature catchphrase, and social media posts and interactions are prime source material for greater public appeal and larger checks in their pockets. These pieces of intellectual property (“IP”)—especially those created through corporate sponsorship collaborations—are becoming the norm, as athletes look to partner their identities with the established branding and popularity of the companies they agree to endorse. However, legal disputes can arise over the ownership and use of the IP following the breakdown or termination of the endorsement relationship,[1] demonstrated most recently in the high-profile litigation between Nike and NBA superstar Kawhi Leonard.[2]
Nike was awarded copyright ownership of the Leonard “Klaw” logo[3] on the heels of reports that Nike had taken a completely different posture in handling its trademark registration of tennis legend Roger Federer’s famous “RF” logo.[4] Two years after Federer left for UNIQLO, Nike assigned all rights, title, and interest in the trademark registration of the wordmark over to Federer’s asset management company, TENRO AG.[5] At the time, neither Federer nor UNIQLO indicated whether they planned to use the logo on future apparel,[6] so it came as a great surprise for tennis fans when the news broke that the popular monogram would finally be applied onto his UNIQLO hat.[7] A week later, UNIQLO cashed in on their massive endorsement investment[8] with a merchandise release that sold out in under twenty minutes.[9] Why did Nike handle the jettisoned stars differently? And why was there such a stark difference in the two outcomes?
The drama began on July 2, 2018, when UNIQLO announced its partnership with Federer as he simultaneously appeared on Centre Court at Wimbledon for his first round match, no longer donning the Nike “swoosh” and his emblematic initials on his headband, shirt, or shorts.[10] A tidy, straight-set victory left only one question for the 20-time Grand Slam champion: what was to become of his logo? Journalists were quick to note Nike’s registered ownership of the trademark rights and were intrigued to quote Roger claiming the rights were “not theirs forever” and would come to him sooner rather than later, if Nike was willing to “be nice and helpful” in the transfer process.[11] Federer rebuffed rumors of tension between his team and Nike,[12] stating he would continue to wear Nike tennis shoes, while asserting “Ties are not broken there. I have deep roots with Nike. I’ve had a great relationship over the last 20 years.”[13]
Despite Federer’s immediate optimism, many anticipated a legal battle from Nike similar to that ultimately subjected to Kawhi Leonard a year later.[14] Given what we know now about the details of Leonard’s endorsement contract,[15] it’s possible Federer negotiated more favorable terms and that the language of his contract prescribed such an outcome. On the other hand, maybe their contracts were identical and Federer’s cache, worldwide stardom, and public comments were influential in Nike caving in exchange for a buyout. While the details of their endorsement contract and/or any commercial agreement between Federer and Nike have not been made public, the feel-good outcome on the tennis court differed greatly from the one on the basketball court, and sports fans are left scratching their heads. It reinforces a need for clear guidance from both the U.S. Copyright Office and the U.S. Patent and Trademark Office to adjust for the evolving relationships and power imbalances between brands and athletes and prevent disparate outcomes that can hinge on factors of fluctuating weight.
Footnotes
