Emily Xiang is an IPilogue Writer, a Senior Fellow with the IP Innovation Clinic, and a 3L JD Candidate at Osgoode Hall Law School.

What do a company in the business of mining and selling construction equipment, and an athletic-wear and sporting accessories brand, have in common? Apparently, the cat has been let out of the bag on this one. On January 10th, 2023, the Federal Court of Appeal released one of its first trademark of the year in .The Federal Court of Appeal held in favour of the construction machinery and equipment company over Puma’s use of the trademark PROCAT in association with footwear and headgear.

Puma first applied for the trademark PROCAT in 2012 for its sub-brand of youth sporting accessories. Caterpillar shortly opposed the application, asserting that, inter alia, the PROCAT mark was confusing with Caterpillar’s own CAT & Triangle Design [shown below]. Caterpillar’s CAT & Triangle Design was also registered in association with footwear and headgear. Specifically, the design was related to a line of work and sport footwear that the company had been operating in Canada since 1994. When the matter was brought before the , the hearing officer held that there was no reasonable likelihood of confusion between the marks. The officer explained that Caterpillar had failed to show that they possessed sufficient control over the character or quality of the goods sold in association with the CAT & Triangle Design through its licensees.

On , Caterpillar submitted new evidence in order to demonstrate requisite control and that it had accrued benefit from its licensees’ use of its marks. The court found the new evidence ��to be material. Moving on to the likelihood of confusion analysis, the court agreed with the hearing officer that the two marks were indeed similar in appearance and sound due to the word “CAT.” But the court also found Puma’s prefix “pro” to be suggestive or laudatory of the company’s goods. Therefore, the prefix was not enough to distinguish it from Caterpillar’s CAT. Puma had also submitted 13 other trademarks to evidence that the “CAT” element had little distinctiveness in the marketplace and should therefore be subject to a smaller ambit of protection. When elements appear over and over again in trade, is generally acceptable in order to allow for fair competition. However, the court in this case found Puma’s evidence to be insufficient in demonstrating the state of the register. The Federal Court therefore overturned the decision of the hearing officer and found that there indeed would be a reasonable likelihood of confusion between the two CATs.��

Unfortunately for the sporting brand, the court of appeal did not have much to say by way of correction either. In appealing the decision to the , Puma argued that the FC judge had erred in her findings. In Puma’s view, the FC judge had failed to consider each of the marks as a whole, and contended that it would be impossible for a consumer that was not “” to be confused as to the source of the two companies’ respectively marked goods. The sporting brand also tried to rely on its other cat-nominative trademarks, such as its better-known “jumping cat” design, as evidence of brand recognition, though this was still insufficient to sway the courts.��

The Federal Court of Appeal was therefore unable to find any palpable or overriding error in the FC judge’s decision. For Puma, its with regards to its use of PROCAT in association with footwear and headgear beyond a trivial level proved detrimentally determinative. Ultimately, Puma’s evidence and arguments were not enough to go up against Caterpillar’s prior registration and surprisingly long-standing presence in the Canadian market.

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Andrew Masson is an IPilogue Writer and 2L JD candidate��at Osgoode Hall Law School.��

One of the biggest names in golf that is not Tiger Woods, for breach of a $145 million deal for the exclusive use what is being Nicklaus, also known as The Golden Bear, is 82 years old and widely regarded as one of the greatest golfers of all time. During his career he won 117 professional tournaments and 18 major championships, which is 3 more than Tiger Woods. Retired Nicklaus now heads his golf course design and construction company, . Nicklaus is one of the most prominent names in golf, so this recent filing has garnered the attention of sports reporters.

On May 17, the reported court filings involving Nicklaus involved both IP use and NIL issues. In May 2007, before the concept of name, image, and likeness became ruling for college athletes, Nicklaus appears to have made a similar deal except it was for . This involved three parties: 1) Jack Nicklaus; 2) GBI Investors Inc.; and 3) Nicklaus Companies L.L.C. Nicklaus incorporated GBI Nicklaus in 1984 and he remained manager when the deal was made in 2007. This deal involved selling business and assets of GBI that related to Jack Nicklaus to Nicklaus Companies. The IP rights and activities related to both Nicklaus as a person and his golf course design and construction activities made the deal worth more than

Nicklaus Companies claims they have paid and continue to pay both Nicklaus and GBI who are not meeting their obligations. Niklaus Companies seems to have put forth for which they are seeking injunctions and damages: 1) Jack Nicklaus continues to make deals regarding his IP and excluding Nicklaus companies from them; 2) these actions are damaging to Nicklaus Companies; and 3) Jack Nicklaus has threatened to continue to do these activities by unilaterally reclaiming ownership of those rights he sold. At first, the deal appeared to transfer the numerous patents and trademarks from GBI to Nicklaus Companies, but in recent years Jack Nicklaus and GBI have not satisfied the deal. Jack Nicklaus has deals regarding his golf course designed in addition to entering a deal to profit of his NIL that excluded the company.

Notably, this story broke within days of Jack Nicklaus turning down to be the face of a new golf series. Though not directly related to this case, his decision may be relevant to broader branding issues associated with his name.

This interesting case will likely become a battle over the terms of the contract with strong arguments on both sides. From an equitable perspective, it appears Nicklaus entered an unfavourable deal in 2007 that meant in the long term he was . This term mirrors the contracts of most universities (like) where professors are not the exclusive IP owners for independent work completed during employment. These contracts can be contentious if they give off the impression that those with money can exploit resource-strapped inventors. On the other hand, the Jack Nicklaus company paid a substantial sum of money on the belief that they would retain the Jack Nicklaus IP into the future. Under the principle of of contract, the Nicklaus Company does not appear to have violated the terms of the agreement and they just want to receive what they have paid for and did not force Nicklaus and GBI to enter the contract. As this was just filed, it will likely be some time before a decision or settlement is reached. But if it gets to trial, there will likely be interesting arguments on the contracting of IP.

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Photo by (Unsplash)

Claire Wortsman is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.

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From the thrilling gold-medal finish of the women’s soccer team to Andre De Grasse becoming the first sprinter to bring home gold since 1996, there was no shortage of exciting moments for Canadians at Tokyo 2020. Penny Oleksiak made history as the country’s most decorated Olympian of all time. Jamaica’s Elaine Thompson-Herah also made history in Tokyo as the first woman to win gold in the 100 and 200 meters in consecutive Games. After posting footage of her impressive feat and her family’s celebration to Instagram, Thompson-Herah was, as she , “blocked on Instagram for posting the races of the Olympic because [she] did not own the right to do so.” The New 91��ɫ Times that a spokesperson for Facebook, Instagram’s parent company, confirmed that it removed Thompson-Hera’s video but claims her access to the app was mistakenly suspended.

The International Olympic Committee (IOC) athletes to share Olympic Games content on their personal social/digital media accounts or website unless it contains audio/video of the areas referred to as the Field of Play (“the area used for a sporting competition or ceremony”) or Back of House (“non-public areas, within and/or surrounding a venue”). IOC regulations are only one of the many sets of rules that surround the intellectual property (IP) of the Olympic Games. James Bikoff, who has extensive experience litigating the IOC’s trademarks, on an episode of that, depending on the country, Olympic IP can be protected by national statutes (see �䲹�Բ��岹’s ), the (which Canada is not a contracting party to, but are), and special protection for the words “Olympic” and “Olympiad” in various languages across the generic top-level domain names (e.g. .com, .org).

�䲹�Բ��岹’s Olympic and Paralympic Marks Act (OPMA) was enacted in 2007 and includes a list of 39 protected Olympics-related marks in Schedule 1. Although one might think that this statute contains all of the necessary information on Olympics-related marks in Canada, matters are further complicated by the fact that the Canadian Olympic Committee (COC) continues to register marks not found in OPMA as official marks under the . Teresa Scassa �䲹�Բ��岹’s official marks system – which allows “public authorities” to sidestep the application and review process otherwise required�� – ��as “anomalous and downright dysfunctional.” The result of COC’s registering of official marks is that certain marks (e.g. ) enjoy simultaneous protection as official marks and under the OPMA, and may continue to receive protection under one after being removed from the other. Another odd result is that certain marks (e.g. the ) are protected as an official mark but not under the OPMA, which may present difficulties as certain businesses look to the OPMA to check their compliance. ��

Canada is not alone in facing criticism for its extensive protection of Olympics-related IP. During her time as a trademark law professor at Drake University, Shontavia Johnson wrote that she the laws created solely to protect the Olympics had been stretched too far. She described her concerns, which include the high level of difficulty for companies, especially small businesses, to know when their activities are illegal and obtain permission to do the right thing. Johnson also explained that most American Olympic athletes scramble to make a living, and that the IOC and national Olympic committees exercise a tight control which may prevent athletes from profiting off of the value which they create for the Olympic Games.

restricts social media posts and advertisements published by athletes and sponsors during the Games, both in volume and content. These restrictions on permitted publications may deter smaller companies who cannot afford to become official Olympic sponsors but who would gladly sponsor an individual Olympian from doing so, either because they feel it would result in an unsuccessful campaign or because they are afraid of accidentally breaking the rules. In Canada, even to congratulate an athlete they sponsor, companies are not permitted to use a multitude of hashtags or words that generate social media buzz, including Tokyo 2020, Olympics, #teamcanada, and #summergames. ��

In light of the popularity of Olympians posting on social media platforms like during Tokyo 2020, it will be interesting to watch for potential clashes between athletes and governing bodies related to IP at Beijing 2022. As social media posts generate buzz and draw fans, spectators will have a chance to enjoy getting behind-the-scenes looks and instant updates from their favourite athletes. This may drive some policy changes. On the other hand, Michael Lynch, a veteran sports marketer, IOC’s IP as its “primary asset.” Striking a balance between generating ample revenue to support athletes and events and serving the interests of individual athletes, sponsors, and fans seems an Olympic balancing act.

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Photo Credit: AJ Maestas & Jason Belzer (ADU)

Ryan Erdman is an��IPilogue��Writer and a 2L JD Candidate at��Osgoode��Hall Law School.��

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The National College Athletic Association (NCAA), a multi-billion-dollar corporation, serves as the dominant sanctioning organization for college sports in the United States. A defining feature of college sports is the amateurism that underlies all competition, where college athletes can only receive “education-related” compensation (i.e., tuition, school-supplies, room and board). To avoid ineligibility, these elite athletes cannot benefit from or be compensated for the use of their name, image, or likeness (“NIL”). However, the intellectual property rights, including the trademarks routinely protected by celebrities and professional athletes, may no longer be a concern to college athletes. Instead, they can be an exciting new opportunity for college athletes to prosper. ��

The NCAA Division I Council plans to on June 22^nd and 23^rd, 2021. All signs point to the group voting on the proposed NIL rules changes that would fundamentally alter athlete compensation. As noted, , college athletes cannot use their NIL to promote or endorse a product, even without compensation.

The movement for college athlete compensation, a controversial topic in light of the high revenue generated by college sports in the United States, has gained traction since California enacted the Fair Pay to Play Act in September 2019. Since then, 18 states are gearing up to place novel NIL laws into effect, some as soon as July 1, 2021. The legislation places immense pressure on the NCAA to enact its own uniform rule changes, as the integrity of college sports and recruiting could collapse with inequitable practices across state lines. As recently as June 19, 2021, NCAA president Mark Emmert his support for uniform NCAA policies by July 2021. The NCAA president was also to stress the need for federal laws despite any national NIL guidelines from the NCAA.

Of course, some still reject the notion that any changes are necessary, as compensation is seen to detract from the athletic and educational components central to athletic scholarships. Compensation is seen to not significantly impact most college athletes who are unlikely to receive several endorsement offers. Although the majority of athletes do not have national name brand equity, athletes will have local opportunities with smaller platforms. There are also concerns that the fast transition to the upcoming academic year leaves little room for oversight. A lack of education related to the legal process, rights and obligations has already given college athletes difficulties in the . Complications often arise when younger college athletes sign contracts with agents or when they “turn pro.” Major programs have already partnering with companies like Opendorse, which provides athletes with education on building and monetizing their brands.

But in a digital era, social media has undeniably shifted players’ balance of power in the field. Discussing NILs, the ABA has to social media as the “referee that moves the sticks of monetization.” College sports’ biggest stars are polarizing public figures, some with incredibly large followings. Even those who do not have millions of social media followers are set to cash in significantly when acting as influencers or brand ambassadors. For example, the University of Connecticut’s basketball star and AP Women’s Player of the Year, Paige Bueckers, with approximately 830,000 Instagram followers, is set to become one of the most influential college athletes on social media. Athletes with larger followings are to make anywhere from hundreds of thousands to millions of dollars in brand deals before their professional career even begins.

At a time when the NCAA is already under significant pressure, the recent unanimous Supreme Court in the antitrust case Alston v NCAA further pushes the narrative of expanded rights for college athletes. While not directly addressing the topic of NIL, the decision won by former student-athletes is a significant moment for defining amateurism in college sports, as the case dealt with restrictions placed by the NCAA on education-related benefits. As critical meetings approach and the July 1^st deadline continues to loom, the next few days could fundamentally change the model of amateurism adapted by the NCAA.

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The value of the intellectual property (IP) rights behind the We The North slogan is hard to quantify, but it is evident that the phrase was a pivotal component of the team’s . WE THE NORTH is a trademark registered in 2014 and is owned by the Raptors’ parent company, Maple Leaf Sports & Entertainment Ltd., in both and the . The trademark protection covers merchandise and other services, and therefore for others to use it, a would be required. During their playoff run, the slogan seemed to gain the most traction on Twitter, with fans and supporters using the to show their support. In August of 2019, the #WeTheNorth tag was the most commonly used hashtag in Canada. Widespread use of the slogan as a hashtag on Twitter is , but the “hype” surrounding the franchise garnered as a result of this widespread use has led to a variety of opportunities for commercialization, such as a more cohesive marketing and product branding strategy. The hats, apparel and a variety of other merchandise brandishing the slogan have been highly sought after by fans, with many lining up or camping in order to have the opportunity to purchase some of the limited stock.

However, the Raptors were not the only successful Canadian athletes of 2019. made Canadian history, first when she won the Rogers Cup title and then again at the US Open when she managed to prevail over the legendary Serena Williams. Throughout her rise to fame, hashtags such as quickly gained momentum, and was used by fans across Canada, including . Interestingly, what began as a clever adaptation of the Raptor’s slogan quickly became a valuable IP asset for Andreescu herself. She filed for the trademark SHE THE NORTH in and the at the end of 2019, and as a result, she now has a titled She The North which was released at the end of last year.

It is interesting to see one athlete ultimately benefit from the hype generated by IP owned by another. Intuitively, one might assume this would lead to legal issues. When asked, Shannon Hosford, Maple Leaf Sports & Entertainment’s Vice President of Marketing and Communications, said that if others wanted to adapt the slogan for their own use, the company would not be “”. Other brands have also opted to use a different version of the slogan, including Bell Lightbox’s “” or the US basketball crowd using “”. The story of how one business’s IP strategy can give rise to many more dependent on its success is a lesson as to how one can commercialize hype using IP protection.

Written by Stephanie Cho, a second year JD Candidate at Osgoode Hall Law School. Stephanie is also a Clinic Fellow at the Osgoode Innovation Clinic.

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Recently, I wrote an discussing the potential of a “trademark curse” in sports. The article explained how, in the past, athletes and teams who have sought trademark protection concerning a mark referencing their achievements (e.g., a championship) before actually achieving them often fail to deliver.

Interestingly, one San Francisco 49ers player did precisely that. On December 30^th, ahead of their first-round playoff matchup, 49ers star quarterback Jimmy Garoppolo filed for trademark protection for the mark “”. The phrase derives from an interview he had earlier this season following a Thursday Night Football win over the Arizona Cardinals that improved the 49ers’ record to an undefeated 8-0. In the with Fox’s Erin Andrews, Garoppolo was asked how it felt to be 8-0, responding simply with “It feels great baby”. Later, on December 29^th, following a big win against the Seattle Seahawks, 49ers tight end George Kittle was seen sporting a “Feels great, baby” t-shirt in a televised, post-game . One can only imagine how many “Feels great, baby” t-shirts might sell after a San Fransisco Super Bowl victory.

In comparison, Garoppolo’s Super Bowl counterpart, reigning MVP Patrick Mahomes, maintains a much different presence at the United States Patent and Trademark Office (USPTO). Despite being listed as the for all licensed products over the last eight months, and owning his own logo, , merchandise, and brand names “Mahomies” and “MVPAT”, Mahomes does not hold a single trademark registration at the USPTO.

With that said, my pick for the Super Bowl is Patrick Mahomes and the Kansas City Chiefs. Perhaps my superstitions are getting the best of me, but those aside, it is noteworthy to see the different brand strategies of two of the NFL’s brightest stars ahead of the big game on Sunday; one choosing to grow his brand through ambitious trademark filings, and the other through use.

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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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 91��ɫ 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.

The post Trademarks, Sports, and Superstition: Why a Premature Filing Could Cost You appeared first on IPOsgoode.

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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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 �䲹�Բ��岹’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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Fortnite, the video game that has been taking the world by storm over the last year and a half, is set to take centre stage at New 91��ɫ’s Arthur Ashe Stadium from July 26-28 in what will be the largest video game tournament in the world to date. Up for grabs? A chance at a share of the $30 million prize pool, with the winner of the solo match receiving $3 million. The inaugural Fortnite World Cup not only boasts the largest prize pool in esports so far, but it is also one of the largest prize pools throughout all individual sports. Comparatively, the was the most lucrative tournament on the PGA this season with the winner Gary Woodland taking home $2.25 million. Tennis’ recent featured the winners of the men’s and women’s singles earning just under $3 million.

Since the release of its battle royale format over a year and a half ago, Fortnite has become a cultural juggernaut. In less than a year after its launch, the game had 125 million registered users, and a few months later that number doubled. The game also blew past the competition in viewership hours on the streaming service Twitch, reaching , compared to runner-up League of Legends at 862.7 million hours watched. It is estimated that the game’s creator, Epic Games, grossed $3 billion in profits in 2018, leading to a $15 billion valuation. 

Fortnite has quickly developed into one of the most popular video games in the world, but it is only a small part of the rapidly growing industry of esports. Esports describes the world of competitive video gaming and has come a long way since groups of friends hosted LAN parties playing Halo 2 in their parents’ basements into late hours of the night. Following the basic structure of traditional sports, the world of esports includes leagues, teams, sponsorships, media deals, and increasingly, money. Games range from first-person shooter games like Call of Duty or Overwatch to multiplayer online battle arena games like League of Legends or DOTA 2. There are even leagues for mobile games such as Clash Royale and Mobile Legends.

With revenues set to in 2019, exceeding $100 million, and players , esports is now big business. Notable celebrities like Drake, Steph Curry and Michael Jordan have all . Traditional sports team owners such as Dallas Cowboy owner Jerry Jones and New England Patriot owner Robert Kraft have . Bell, a Canadian telecommunications company, with Toronto-based OverActive Media Group. Founded in 2017, Overactive Media has quickly developed into an industry-leading esports organization, and the world’s only esports organization to own teams in the three biggest franchised leagues – Overwatch League, League of Legends European Championship, and Call of Duty League.

Currently, sponsorship and advertising make up the largest source of revenue in esports, this year, and non-endemic brands are beginning to play an important role. Brands like Sephora, Nike, and Hershey’s are all entering into the game because they see the opportunity to reach a new demographic of passionate and loyal consumers. In May, Puma announced a , an esports organization, estimated to be worth at least eight figures. In traditional sports, athletic program, one of the largest in college sports, runs an average annual value of over $11 million. Other ways in which brands are entering the esports space is through the sponsoring of tournaments, leagues, and players.

Other companies are going a step further and attempting to maximize their brand outreach by acquiring trademarks. In June, the world’s largest brewer, Anheuser-Busch InBev, filed for trademark protection of “” with the US Patent and Trademark Office. Meanwhile, trading card company Upper Deck will also be looking to move into the esports space after they filed for trademark protection of “” in early July.

Accompanying esports’ shift from niche to mainstream is also a new set of legal issues, in particular, issues relating to intellectual property. Intellectual property lies at the core of esports, from the software and hardware upon which the games are built and played to the content created by leagues, players, and streamers while playing the game. As such, the rest of this series will explore the various ways intellectual property is affecting esports.

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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