We’re all familiar with the iconic Michael Jordan. You’ve also probably seen the NBA legend’s “Jumpman” logo on the Michael Jordan line of Nike footwear and other merchandise. Recently, the Jumpman logo was front and center in a trademark dispute that Nike is embroiled in with a CrossFit affiliate located in West Palm Beach (“CrossFit CityPlace”).
CrossFit City Place filed a trademark registration application for its logo, which features the silhouette of an athlete balancing with one arm on a kettlebell. During the process, Nike filed a Notice of Opposition to prevent CrossFit CityPlace from obtaining the registration. The logos at issue are below.
The purpose of this article isn’t to compare whether the CrossFit CityPlace logo is likely to cause confusion with the Jumpman logo. Instead, the purpose is to explore the specific claims that Nike raised in the Opposition to illustrate an important point when preparing licensing agreements. Especially when the person or company receiving name image and likeness rights seeks to enforce the rights against third party infringement or misappropriation. Two of Nike’s four claims in the Notice of Opposition dealt with name image and likeness issues concerning Michael Jordan. However, only one of these claims illustrates the importance of the licensing agreement language.
In one of the claim, Nike alleged that the CrossFit CityPlace logo involves a false suggestion of a connection to Michael Jordan. Michael Jordan was not a party to the Opposition. For this claim, Nike’s general allegations that through its relationship with Michael Jordan and that consumers have come to associate the Jumpman logo with Nike’s goods and services through registration and duration of use. Although this claim was dismissed, it was for reasons other than enforcement of licensed name image and likeness rights.
The second claim dealing with name image and likeness rights became more focused what interests and enforcement rights, if any, were granted under the licensing agreement between Nike and Michael Jordan. This claim centered around Nike’s allegations that the CrossFit CityPlace logo comprised a portrait of Michael Jordan without his consent.”
As the (TTAB) pointed out, the suggested connection between the CrossFit CityPlace log was not with Nike, but rather Michael Jordan. And Nike, not Jordan was pursuing the Opposition. Although Nike alleged that its licensing relationship with Michael Jordan created a monetary interest in the Jumpman logo, this was insufficient to establish a “cognizable” or “proprietary right” in the logo.
The Lesson Learned
A licensing agreement is permission to use intellectual property belonging to another in a manner that would otherwise constitute infringement. Just because one generates revenue through licensed trademark or name image and likeness rights, does not necessarily mean that this party has the right to enforce the trademark and name image and likeness rights against third party infringement or misappropriation.
It is imperative that licensing agreements include sufficient language creating a “cognizable” or “proprietary” right to build the link or relationship with the person whose name image and likeness is at issue. If the intent is for the licensee (the party receiving the licensed trademark or name image and likeness) to have an exclusive license with the duties and rights to assert claims against third party infringement or misappropriation of an individual’s name image and likeness, the licensing agreement should use clear and unambiguous language establishing this. This language will go a long way to preparing well drafted pleadings, whether a Notice of Opposition or a civil complaint, to avoid being dismissed.
The TTAB’s opinion also contains another practice point. The TTAB asserted that not only is establishing the link or relationship to the person important, but so too is the degree or extent of that link or relationship. Unfortunately, the TTAB has not yet flushed out the degree of linkage or relationship to survive a motion to dismiss. But a best practice in preparing licensing agreements, especially when the licensee is expected to enforce infringement or misappropriation against third parties, is to create clear, unambiguous and unfettered enforcement rights.