On June 15, 2020, a was filed against the National Collegiate Athletic Association (NCAA) on the grounds of breaching federal antitrust laws. Regulations such as the NCAA’s amateurism rules prohibit college athletes from using and being compensated for the use of their name, image, and athletic reputation. In recent years, these regulations have been increasingly contested by college athletes, alleging that the NCAA, a billion-dollar corporation, is protecting its monopoly over college sporting in the United States.

An athlete’s reputation, name, and image are the foundation of the intersection between intellectual property and entertainment. The World Intellectual Property Organize notes that “.” Once a student-athlete has developed into a professional athlete, how they can protect their image grows exponentially.

In this class-action lawsuit, the NCAA attempted to justify its regulations by claiming that the status of “” was not categorically valid in the commercial setting. However, considering the modern context of college sports, especially college basketball, there is a strong argument to be made in favour of recognizing players as celebrities.

Recently, there has been a growing media frenzy surrounding the NCAA’s March Madness event. As the NCAA’s popularity skyrockets, issues regarding right to image and compensation surfaced as athletes found themselves increasingly restricted by the amateurism regulations.

O’Bannon’s Legacy for College Athletes

In 2008, Edward O’Bannon, a University of California, Los Angeles (UCLA) basketball player, was depicted in a video game by Electronic Arts (EA). In said game, there was an avatar O’Bannon never consented to having his image used in the video game, and EA, a multi-million dollar gaming software corporation, never offered to compensate him for their use of him as a character.

When O’Bannon’s case was brought before the district court in 2015, Judge Claudia Wilken that the NCAA’s amateurism rules violated federal antitrust law, and ordered colleges to pay male basketball and football athletes up to $5,000 per year for the use of their image. The cumulative sum was to be paid after they graduated.

During the , the majority of the Ninth Circuit Court upheld Wilken’s ruling on the illegality of the NCAA’s amateurism regulations, but struck down the injunction forcing schools to pay specific athletes up to $5,000 per year. This decision left the college community uncertain on where the courts stood in regards to allowing college athletes to use and profit from their image.

As Oregon’s star basketball player, Sedona Prince, said:

Prince is one of many college athletes who have joined the class action filed earlier this year. Her words resonated with the college athletics community, and acted as encouragement for others to step forward and join the suit. , the law firm spearheading this suit, has opened the case for all active athletes since 2016 and announced that there would be no fee to join the suit or benefit from the settlement or lawsuit.

What’s Next?

While this case has just begun, it presents an opportunity to revolutionize intellectual property law in amateur sports. We may see the NCAA push this case up to the Supreme Court for a final ruling on whether student-athletes should be entitled to compensation for the reputation they craft on the court. If the ruling favours the college athletes, there would be reforms across amateur sports. This includes renegotiating contracts between players, colleges, and the NCAA, the repeal of regulations limiting compensation for image and likeness, and an expansion of intellectual property law more generally. This is definitely a case to keep an eye on.

Written by Adele Zhang, a first-year JD student at Osgoode Hall Law School. Adele is interested in the intersection between IP,  sports law, business law, and employment law.

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North American professional sports, in general, are far from a beacon of political correctness. Vivid imagery of racial stereotypes is strewn throughout the professional sports landscape with teams like the Atlanta Braves, the Edmonton Eskimos, and most famously, the Washington Redskins. In recent years, public scrutiny over their use has attracted a number of noteworthy legal decisions.

In June 2014, the Washington Redskins found themselves at the wrong end of a after the United States Patent and Trademark Office cancelled six of their trademark registrations for “Redskins”. In that case, petitioners sought cancellation of the marks on the ground that the registrations were obtained contrary to , a provision that prohibits registration of marks that may disparage persons or bring them into contempt or disrepute. The appeal board that the registrations must be cancelled “because they were disparaging to Native Americans at the respective times they were registered.”

In another similar incident in 2016, ahead of a hotly contested playoff matchup between the Toronto Blue Jays and the Cleveland Indians, Indigenous activist and renowned architect Douglas Cardinal sought an against Cleveland preventing them from using, displaying, or broadcasting their team name or logo. Cardinal grounded his claim in the , noting that use of the name and logo constituted discrimination against him on the grounds of race, ancestry, colour, ethnic, and national origin. Ultimately, the court ruled against Cardinal and the application was dismissed. However, all was not completely lost. Beginning in the 2019 season, the “Chief Wahoo” logo from all uniforms.

Use of Indigenous names, symbols, and practices in sports is a complicated issue. On one side, there are the fans, who have developed an attachment to the team, its history, and traditions. On the other are Indigenous peoples, who were forced onto reserves, forced to attend residential schools, and forbidden from practicing some of the actions that fans of these teams have adopted. While the leagues and teams will argue that contemporary use of the names and images has shifted towards honouring and respecting Indigenous peoples, a of Twitter commentary has shown otherwise. In an with CBC, Jason Black, Fulbright Research Chair at Brock University's Centre for Canadian Studies, explained that “As people see [Indigenous] folks, in particular in stereotyped ways, the less likely they are to do things like reconcile”. "They're less willing to understand Indigenous history or vote for a particular candidate who has Indigenous reform in mind.” And so, a vicious cycle of racism and inaction spreads.

Teams seeking to make meaningful changes in their organizations should be cognizant of the 93 recommendations put forward by the (TRC) in 2015. Specifically, Call to Action 92, which calls on the corporate sector to adopt and apply the principles set forth in the (UNDRIP). This includes meaningful consultation, and free, prior, and informed consent with Indigenous peoples before proceeding with economic developments. In other words, teams need to engage in proper consultation with Indigenous people when it comes to team logos, branding, or any other activity that may reasonably affect them.

A recent by True North Sports and Entertainment, owners of the Winnipeg Jets and Manitoba Moose hockey clubs, shed some light on what this might look like in practice. In January, the Winnipeg Jets, along with their minor-league affiliate the Manitoba Moose, unveiled a new special jersey design bearing Indigenous-styled logos. The jerseys were all part of the second annual Winnipeg Aboriginal Sport Achievement Centre () Night, and all proceeds from the sales of the jerseys are going towards Indigenous youth activities. Here, the jerseys were not designed by the teams, nor by Adidas (the official jersey sponsor of the NHL), but in consultation with local artist from Pimicikamak Cree Nation.

Initiatives such as this are important for building stronger relationships in the local community but are also key in the broader reconciliation picture. Had the Cleveland franchise assessed themselves more honestly and humbly in the face of litigation, looked at documents like UNDRIP or the TRC recommendations – the cost-benefit analysis (both commercially, publicly, and morally) would weigh in favour of reconciliation. While it may be a complicated issue, it should not stop teams from doing the right thing and thinking more critically and responsibly about their branding imagery. The rest of the sports world should look to the Jets for leadership in moving toward accountable reconciliation and away from racism.

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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In August 2019, New England Patriots quarterback Tom Brady was refused trademark protection for the mark “”, and in September, Los Angeles Lakers star Lebron James was refused protection for the mark “”. While these applications might easily be passed off as frivolous attempts by an athlete to garner attention, they are, as I identified in a , part of a growing trend whereby athletes are strategically using trademarks to either establish, grow, or protect their personal brands. Interestingly, despite being denied by USPTO, the applications still ended up achieving what they were intended to do – provide greater certainty surrounding the use of a mark.

In the case of Brady, the USPTO refused the application for , both relating to former New 91��ɫ Mets pitcher Tom Seaver. First, for falsely suggesting a connection with Tom Seaver, and second, because the applied-for mark consisted of a name of a particular individual (Tom Seaver) who did not provide written consent. The refusal was due in large part because of a letter sent by Mets fan protesting the application. The letter included references from news articles, encyclopedias, and columns referring to Tom Seaver by the nickname “Tom Terrific”. The evidence in the letter helped the USPTO establish that Tom Seaver was sufficiently famous for purposes of a false connection.

In comment, that, despite the stated intent of his application, he never actually wanted to use the trademark for commercial use. Brady, similar to and his application for “T����Ƿɾ��Բ�”, wanted to control the way the mark was used, specifically to distance himself from a nickname he didn’t want to be associated with. Regardless of the decision by the USPTO, Brady ultimately achieved what he had set out accomplish.

In James’ scenario, the application was because “Taco Tuesday” was a “commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment”. Again, despite the refusal, the application, according to a , achieved exactly what it was intended to do – to get the U.S. government to recognize that someone cannot be sued for its use. Prior to filing, James had been using the term “Taco Tuesday” in a number of his Instagram videos showcasing his family’s taco nights. The videos quickly became a weekly , eventually leading to an application that spanned several different services such as podcasting services, online entertainment services, and advertising and marketing services.

From a branding perspective, it is important for brands to have a clear brand vision and to be consistent in their messaging. Despite the refusals, the applications still provided greater certainty moving forward for these two athletes by allowing them to maintain a clear and consistent brand unhampered by uncertainty over use of use of a phrase, or concern about misappropriation. This strategy might be useful for any brand who might fear an undeserved association with a nickname or is concerned about what they can and cannot say. Ultimately, these refusals speak volumes about the benefits of applying for a trademark and showcase why not every application needs to be a successful one to achieve the desired outcome.

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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As previously mentioned, esports share many of the common elements found in traditional sports. There are professional leagues, teams, sponsorships, media deals, agents, and fans. However, unlike traditional sports, esports differ most significantly in the proprietary nature of the activity. Major League Baseball does not own baseball, the National Hockey League does not own hockey, the National Basketball Association does not own basketball, but in the Overwatch League (OWL), someone does own Overwatch. Overwatch is, therefore, eligible for copyright protection as an audiovisual work. In Canada, the does not identify video games as a specific category of work. However, the courts have recognized  video games to be protected by copyright, both as a whole and in its individual elements such as the soundtrack, voice acting, character design, and level design. For the most part, the owner of the copyright in a video game is the game’s producer.

Similarly to most copyright owners, game producers assert their exclusive rights by controlling reproductions, distributions, public performances, and creations of derivative works that involve or stem from their copyright-protected work. In esports, these exclusive rights provide game producers with significant power over the direction of the industry. Game producers possess the ability to dictate not only the use of their games in tournaments, but also the way the tournaments will function, and even who can participate in the tournaments. Game company Activision Blizzard’s recent decision to switch from a merit-based league to a franchised league for its game Call of Duty is one recent example of a producer exercising this control. This decision was ultimately met with criticism after the iconic Call of Duty World League (CWL) team backed out of the estimated $25 million franchise fee required to join the new franchise league. Their decision effectively concluded their participation in the game Call of Duty for the time being.

Given that tournament organizers, teams, players, broadcasters, spectators, and advertisers all rely on access to a publisher’s IP to participate in esports markets, there is a concern that a publisher’s behaviour could constitute anticompetitive IP exploitation. As one , a game publisher’s IP in a game effectively grants them a permissible monopoly, and publishers will rationally seek to minimize competitive pressure from other entities in the market through vertical integration of the downstream market. However, the issue of whether a single videogame could constitute a relevant market under competition law is unclear. Currently, there are many different esports leagues, numerous publishers, and countless current and emerging games, as opposed to just a single league with monopoly power. Moreover, it would be difficult for any would-be plaintiff to demonstrate that a publisher’s actions were anything not otherwise already afforded to them through federal IP protection. While it’s unlikely there would be any clear violations of competition law, those within the esports industry need to be cognizant of these issues, particularly in an era in which publishers are demanding franchise fees in the tens of millions of dollars for games yet to be released.

While publishers will often flex their IP muscle at the expense of tournament organizers, leagues, teams, advertisers, and broadcasters, there is one particular area where publishers typically turn a blind eye – streaming. When a user purchases a game, what they are buying, in addition to the physical copy, is a copyright licence to make use of the game subject to certain terms and conditions. Generally, streamers receive a “carte blanche” from publishers when it comes to streaming on services such as YouTube and Twitch because it makes commercial sense given the promotional value that streamers provide to the game.

The recent launch of the game Apex Legends is a testament to the influence that streamers have on the industry. Much of the game’s early success can be attributed to clever marketing on behalf of the publisher. s indicate that the game’s publisher, Electronic Arts Inc (EA), paid a number of streamers, including a reported $1 million to top streamer Tyler (Ninja) Blevins, to play the game for the week. The game was an instant success, the game generated over 25 million players, with nearly 64 million hours of live viewership on the streaming site Twitch. All this success occurred even though the game was not announced to the public until a day before it was actually released!

While the gaming community is certainly capable of giving a game life, it also possesses the power to take it away. In 2017, fans organized a of EA’s Star Wars Battlefront II to protest the game’s unfair use of “”. As a consequence of the boycott, EA failed to meet sales targets by roughly one million copies, their stock price fell, and their reputation was permanently damaged. Needless to say, the gaming community plays a significant role in this emerging industry, acting as a type of de-facto regulator in a mostly unregulated industry. 

From an outsider’s perspective, there often appears to be unbridled control on the part of game producers in the esports industry. Still, it should not be forgotten that a game’s real success depends on its reception in the gaming community. If a game producer chooses to deploy exploitative IP strategies, copystrike its players, or engage in manipulative profit-maximization, the community will be aware, and a game publisher will suffer.

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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Ever since a dispute regarding the rightful ownership of a logo began in December between Leonard and Nike, a number of his Raptors teammates, conceivably learning from his oversights, have registered trademarks themselves. In March, Fred VanVleet registered a mark for a stylized in a triangular shape for use with athletic apparel. Less than a month later, teammate Pascal Siakam filed for trademark protection of the word mark with the intent to use it on apparel and condiments. On May 4^th, the day after Kawhi filed his lawsuit against Nike, Siakam filed to have another trademark protected for a stylized in a heart shape for use in clothing.

In , I explained how both Leonard and Nike are claiming ownership of all intellectual property rights in the “Klaw” logo. Although Leonard owns the US trademark for the logo, Nike owns the copyright for the logo. In his , Leonard claimed that the logo used by Nike was an “extension and continuation of drawings he had been creating since early in his college career” and that he only allowed Nike to use the logo on certain merchandise. Generally, an original work is automatically protected by copyright the moment it’s created. However, in a , Nike reportedly claims that the design Kawhi provided and the one created by Nike designers are not the same, nor is Nike’s a derivative work. As a result, Nike maintains the logo is an entirely new and original work wholly owned by Nike, not Leonard. Leonard’s drawing and Nike’s logo can be viewed .

The recent registrations by Raptors players not only illustrate the importance of legally protecting original works (e.g. trademark registration, copyright), but also a growing trend whereby athletes are increasingly using trademarks as a means of distinguishing themselves from other athletes and growing their personal brands. Athletes are recognizing that it is better to develop and own their own intellectual property rights than it is to allow a company the right to create with their name. For today’s modern athlete, their individual brand marketing may arguably be just as, if not more, important to their ability to earn endorsements as their play on the field.

Here are several ways athletes have used trademarks to their benefit in the past.

1. In anticipation of securing lucrative endorsements.

A registered mark allows athletes to easily negotiate licenses and endorsement deals by providing potential partners with an accessible path into the athlete’s IP portfolio. In 2015, during his rookie season with the Calgary Flames, Johnny Gaudreau’s agency sought trademark protection for the mark . Gaudreau’s agent at the time said the agency “felt that Johnny was going to be a special player and if he takes off the way we felt he could, he has the potential to have endorsement opportunities that could be very valuable.” Likewise, former NFL quarterback Johnny Manziel, aka “Johnny Football”, attempted to have the mark protected back in 2014. However, Manziel’s stint in the NFL was short-lived, and the mark was never put into use, leading to its abandonment in 2018. 

2. As a way of growing their own brand.

Recall at the Super Bowl media day in 2015, NFL running back Marshawn Lynch answered every question with some variation of “I’m just here so I won’t get fined.” Amidst a flurry of social media attention following the affair, Lynch filed to have the with the US Patent and Trademark Office (USPTO). Months later, Lynch’s official clothing brand, , was selling T-shirts featuring the phrase. Lynch’s persistence at the USPTO not only aided him in establishing his Beast Mode brand but it may have also led to his numerous other endorsement deals with brands like Pepsi, Xbox, and Skittles.

3. To add value to a pre-existing endorsement.

Tiger Woods’ iconic , often seen on Nike apparel, is a design mark owned by ETW Corporation, the licensing agent for Tiger Woods, not Nike. The logo gained protection in 2000, four years after Tiger originally signed with Nike and two years before Tiger started using the logo during tournament play. The partnership between Nike and Tiger is one of the in all of sport, generating hundreds of millions of dollars for Tiger and helping elevate Nike into a premier golf brand.

4. To control the way a mark is used.

In 2011, former NFL quarterback Tim Tebow caught media attention for his unique form of prayer and reflection, which became known as “T����Ƿɾ��Բ�”. Tebowing quickly emerged as a pop-culture phenomenon, leading Tebow’s representatives to have the word protected with the USPTO. For Tebow, trademarking was less about commercial use of the mark and more about controlling the way it was used. Tebow, a devout Christian, his reasons for protecting the mark were “to just control how it’s used, make sure it’s used in the right way.” Ultimately, the mark was never put to use and was abandoned soon after registration.

Generally, trademark law serves the public interest by protecting both the manufacturers who have built up goodwill in a mark and the consumers against dishonest or misleading trade practices that could confuse or deceive them. However, athletes increasingly recognize trademark law as a means of differentiating themselves from the competition, allowing the athlete to increase the marketability of their brand and those with whom they are, or may become, associated. Unsurprisingly, with the value of endorsement contracts steadily rising, and the new amendments to Canada’s , specifically the ability to allow anyone to register a trademark regardless of whether they intend to use the trademark or not, this is likely a trend that we will continue to see far into 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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