Complex Magazine and Sports Illustrated reported that a New 91ŃÇÉ« copyright attorney filed a lawsuit against James on behalf of Steve Mitchell, who took a picture of James dunking during the LA Lakers vs. Miami Heat game on December 13^th, 2019. The following day, James posted a cropped version of the picture on his social media accounts, resulting in the aforementioned lawsuit.

Mitchell’s attorneys are arguing that the fact that James is the focus in the photo does not preclude him from seeking permission to publish the photo. As the owner, Mitchell argues that his copyright has been violated since no contractual agreement was reached between himself, James, and/or the Lakers. Mitchell is seeking damages of up to $150,000 per infringement.

James has been known to repost images from various fans on his account in the past, and as such, fans may be of the view that commencing legal action on these grounds is excessive on Mitchell’s part, as many photographers in the past have settled for the bragging rights. As a seasoned photojournalist whose work has appeared in major publications including ESPN and Sports Illustrated, Steve Mitchell is not likely interested in bragging rights. Mitchell is in the business of licensing his photos to online and print media for a fee, which provides context into the seriousness of the infringement from his perspective.

The essential rules of copyright law would deem Mitchell to possess copyrights in his creative works, absent a contractual relationship that says otherwise. The fact that Mitchell is a credentialed photojournalist that works closely with the NBA would likely only strengthen his claim. 

The complaint further demonstrates that Mitchell registered the photo with the U.S. Copyright office. This is not a necessary step to secure a copyright in a work, as a copyright exists from the moment the work is created and fixed in a tangible form. Despite this, registration allows for additional legal protections, including, the ability to sue for infringement.

The Doctrine of Fair Use

The fair use doctrine, initially a common law creation, was later codified in of the (the Act). It is considered an “”, meaning that courts do not employ a bright line test, but rather, weigh all the relevant facts on a case-by-case basis. The Act provides a non-exhaustive list of factors a court should consider. These include: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; (2) the nature of the copyright protected work; (3) the amount and substantiality of the portion used in relation to the copyright protected work as a whole; and (4) the effect of the use upon the potential market for or value of the copyright protected work.

It likely will not be difficult for the judges to conclude that an infringement occurred, however, James’ attorneys will likely seek a potential defense under the fair use doctrine.

(1) The Purpose and Character of the Use

The purpose of the post arguably was to celebrate the dunk and pay homage to the time James spent playing for Miami, prior to playing for his current team. The fact that the post is freely available, and James is not profiting from the post might also be favorable for James. His attorneys will likely argue that there was no intent to profit from this post. Despite this reality, the fact remains that James’ pages are highly commercial, and these posts contribute to the commercial success of his brand. 

(2) The Nature of the Copyright Protected Work

In terms of the nature of the work, James’ attorneys might argue that there is nothing imaginative or unique about the photo, as it is James dunking a basketball – something he has been known to do a lot of over the years. On the other side, Mitchell’s lawyers could construct a range of arguments to try and rebut this claim. Bolstering an argument around Mitchell’s background as an established photographer with a history of licensed and protected work would be a potentially viable avenue.

(4) The Effect of the Use upon the Potential Market

Market impact will likely be one of the major factors discussed if a fair use argument is raised. From Mitchell’s perspective, his attorneys could argue that James’ post diminishes the value of the original photo. The fact that James’ photo can be easily reproduced is detrimental to the process Mitchell underwent initially, to register and protect his photograph. From a market perspective, time is of the essence, as increased popularity for James’ photo has the potential of further diminishing the value of Mitchell’s photograph. However, in an environment where a signature can , perhaps commencing legal action against one of the most popular athletes on the planet will have the opposite effect.

Written by Jason Clarke, a third year JD Candidate at Osgoode Hall Law School. Jason is also a Clinic Fellow at the Osgoode Innovation Clinic.

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Recently, on December 29, 2019, ahead their divisional wild card playoff game, the Minnesota Vikings football team filed a trademark for “” and “”. The Vikings went on to win their divisional wild card game, but were knocked out this past weekend by the San Francisco 49ers. With the Vikings now out of the playoffs, could an ambitious filing be to blame for their early departure?

In sports, strategic and opportunistic trademarks are nothing out of the ordinary. Earlier this year, rookie basketball sensation Zion Williamson uttered the words “Let’s dance” during an interview after being drafted first overall by the New Orleans Pelicans. Less than 24 hours later, both Williamson and the New Orleans Pelicans filed competing applications for the mark “”. Other notable examples include, Marshawn Lynch’s trademark for “” and Johnny Manziel’s “”.

There are certainly plenty of benefits of a trademark . However, in the deeply superstitious world of sports, history has shown that applicants might want to think twice about when they file for protection. Here are two examples of trademark applications gone wrong in sports:

Pat Riley’s “three-peat”

With five NBA Championships, Pat Riley is one of the greatest NBA coaches of all time. However, in November 1988, ahead of the 1988-89 season, and following back-to-back championships with the Los Angeles Lakers, Pat Riley got a little overconfident and registered the words “” with the US Patent and Trademark Office. While the Lakers made it to the NBA Finals that season, they were swept by the Detroit Pistons, ultimately never completing the “three-peat”.

As fortune would have it, Riley would have a second chance at the “three-peat” years later as an executive with the Miami Heat. Again, following back-to-back championships in 2012 and 2013, the Heat fell to the San Antonio Spurs in 2014.

The New England Patriots and “19-0”

The New England Patriots might be closest thing to football perfection since Tom Brady joined the team in 2001. Since 2001, the Patriots have not had a losing season, have only missed the playoffs twice, and have won six Super Bowls. However, despite plenty of opportunity, the Patriots have never completed the fabled 19-0 perfect season. The closest the Patriots came to a perfect season was the 2007-08 season where they finished the regular season a perfect 16-0.

However, a couple weeks before Super Bowl XLII, the Kraft Group, owners of the New England Patriots, applied for trademark protection for “19-0”, a nod to their then perfect season. In one of the biggest Super Bowl upsets of all time, the 2007 Patriots fell to the underdog New 91ŃÇÉ« Giants 17-14. Ultimately, the mark was not used in the way it was intended, but the application was , and registered in 2016.

What these examples tell us, is that in the world of sports, particularly when championships are on the line, it might be best to develop notoriety in a mark prior to filing for protection.

Written by Alexandre Dumais, IPilogue Editor and JD Candidate at Osgoode Hall Law School. Alexandre is also the Director of Sports, Osgoode Entertainment and Sports Law Association.

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The conflict began not long after Leonard's endorsement deal with Nike ended and he became the face of New Balance’s relaunched basketball program in November. In December, Nike contacted Leonard’s representatives and demanded that he cease all use of the logo on all non-Nike merchandise. In response, Leonard, consisting of and inspired by the logo, requested that Nike rescind its copyright in the logo. However, Nike countered that it owned all intellectual property rights in the logo and demanded that all use of the logo cease immediately.

According to the suit, “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.” However, the suit goes on to claim that Nike, without Leonard’s knowledge or consent, obtained a copyright registration and claimed ownership of the visual material as a work for hire.

Endorsement deals, such as the one Leonard signed with Nike, do not immediately transfer ownership of previously designed works. For Nike to claim ownership of the work, there would have had to be language somewhere within the agreement between Leonard and Nike that specifies it as a work for hire. While a copy of the agreement between Leonard and Nike has not been made public, the claim does however indicate that Nike referred to the logo as “Kawhi’s logo” in written communications and that the company refused to act on several occasions when third-parties were using the logo without authorization.

Endorsement deals can mean big money for athletes, and no endorsement deal is more significant in the NBA than the one between a player and a sneaker company. For example, the in revenue for Nike in 2017 – $100 million of which went to Michael Jordan himself. Another example is rookie sensation, Zion Williamson, who is likely to reportedly from a shoe deal before he even sets foot on an NBA court.

The timing of the lawsuit makes sense when considering the increasingly competitive battle for endorsers in the basketball footwear market. In 2015, estimates indicated that , but with brands like Puma and New Balance recently reentering the market, and more established brands like Adidas and Under Armour gaining more endorsers, it is likely that Nike’s control over the market is going to shift. In addition, creative source identifiers like Leonard’s “Klaw” logo add value to brands and provide a competitive advantage, but since December, when Nike demanded Leonard cease all use of the logo, he and New Balance have been unable to take advantage of the logo in one of the most exciting playoff runs in recent NBA memory.

As a result, Kawhi Leonard will be looking to clear ownership of his logo this off-season in the hopes to better capitalize on his “Jordan-esque” play in the future.

Written by Alexandre Dumais, IPilogue Editor and JD Candidate at Osgoode Hall Law School. Alexandre is also the Director of Sports, Osgoode Entertainment and Sports Law Association.

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