By: Rasan Sahota
Sports are imbued with excitement, unpredictability, and intellectual property rights like trademarks. Trademarks in sports can vary from the UnderArmour branded clothes that an athlete wears to the athlete’s reputation. When persons, companies, or different actors register trademarks, the holder can then utilize it themselves or license it to others for consideration like a payment. [1]
Trademarks on Merchandise
According to the Trademarks Act of Canada, trademarks are any sign(s) that allow goods and services provided by a particular party to be distinguished from those of another. [2] These signs help you distinguish whether a tennis racquet has been made by the Babolat company or by the Yonex company. Say, “Oh, there is a Babolat racquet; I bet that is lightweight, high-end and strong,” one sees the goodwill and reputation that Babolat has built over the years.
In creating this associative thought process, Babolat can attract more customers, which further keeps the company motivated to build and innovate better products in light of its reputation. For the consumers, trademarks help them lower “search costs” because they can rely on these visual markers to ensure that they get good quality goods and services.
With sports merchandise, one must also consider how an athlete using that branded goodwill impact the image of the product. For example, a customer might say, “Oh, this is a Babolat racquet that Rafael Nadal uses, so I bet it is a high-quality and durable racquet with good features.” Such a statement emphasizes the importance of athletes in sports companies’ brand image.
Trademarks related to an athlete’s person
The sports industry is worth over 3% of the world trade. [3] This is not surprising since big athletes like Lionel Messi and LeBron James have made over USD$130 million and USD$96 million respectively in 2021. [4] Interestingly, Messi has earned most of his money ‘on the field’ while James earned his money ‘ off the field.’ This ‘off-the-field’ earning creates an interesting confluence between trademarks and a sportsperson’s reputation.
Athlete’s Name: Registrable mark
A name, famous quote, pose, nickname, slogan, or some logo can become a trademark for a sportsperson. For example, athletes such as Michael Jordan have registered their names, which have since been famously used in the Nike Jordan line. Some athletes like Usain Bolt have registered their poses and slogans like the Lightning Bolt pose and “to di world” slogan, respectively. When an athlete registers such trademarks, the relevant trademark offices in a jurisdiction will protect against others using that sportsperson’s marks (name, pose, etc.). [5]
Additionally, registration ensures that the athlete can control how their marks are used for merchandising or licensing. This type of control means the fans, who will buy the goods or services, can have the confidence that the athlete’s endorsement is authentic. [6]
Given the universal nature of sports, the Madrid System for the International Registration of Marks helps register and manage trademarks globally. Under the Madrid System, a trademark holder can file “a single application and pay one set of fees to apply for protection in up to 120 countries.” [7] This centralized system also means that the holder can easily modify, renew, expand, or shift their global trademark portfolio. [8] This system is beneficial because of athletes’ global reach and popularity.
Athlete’s Reputation: Personality Rights
Apart from registering their names or other slogans, athletes (or sports organizations/teams) can also utilize their ‘personality’ rights.
During their sporting success, some athletes create their own personal brand to leverage and generate huge revenue through endorsements with companies like sportswear (think Cristiano Ronaldo’s lifetime contract with Nike). [9] These personality rights use the identity of a person, including “all identifiable and definite elements … which make said person unique” like “name, physical appearance, voice, gesture, attire, look, image, likeness, and even signature.” [10]
Think about different hand gestures by athletes such as the former Raptor Kawhi Leonard and his famous Klaw hand gesture (pictured). (Note: This hand gesture and the subsequent logo have interestingly been the subject of a dispute between Leonard and Nike over trademark ownership and rights). A Raptors fan understands that this hand gesture (and the sheer size of Leonard’s hands) has been a consistent part of the commentary around Leonard. Therefore, if Leonard were to capitalize on this hand gesture or the likeness of his hands, he will be utilizing this personality rights.
Various sports clubs have also used their players’ image to gain financially after receiving the licenses or merchandising rights to the players’ personality rights. For example, the Real Madrid Football Club has used a player’s ‘personality’ (known as ‘image’ rights in Europe) for a return on their investments. Gareth Bale assigned 50% of his personality rights to the Real Madrid Club – when they got him for £85.3 million in 2013 – which allowed the club to sell merchandise and receive brand/product endorsement funds to recover the money they spent on him. [11] It appears that an athlete’s technical skills as well as image may play a role in how their career maneuvers forward.
Companies and famous athletes carry their brands, and any convergence between the two means they must balance each other’s interests. Trademarks in sports merchandise and personality rights are the two ends of that delicate balance.
Disclaimer: The information provided in this response is for general informational purposes only and is not intended to be legal advice. The content provided does not create a legal client relationship, and nothing in this response should be considered as a substitute for professional legal advice. The information is based on general principles of law and may not reflect the most current legal developments or interpretations in your jurisdiction. Laws and regulations vary by jurisdiction, and the application and impact of laws can vary widely based on the specific facts and circumstances involved. You should consult with a qualified legal professional for advice regarding your specific situation.
Sources
[1] World Intellectual Property Organization, “The International Trademark System and Sports”, online: World Intellectual Property Organization (WIPO) <https://www.wipo.int/ip-outreach/en/ipday/2019/madrid_trademarks_sports.html>.
[2] Trademarks Act, RSC, 1985, c T-13, s 2.
[3] Ian Blackshaw, “Understanding Sports Image Rights”, online: World Intellectual Property Organization (WIPO) <https://www.wipo.int/ip-outreach/en/ipday/2019/understanding_sports_image_rights.html>.
[4] Brett Knight, “The World’s 10 Highest Paid Athletes”, online: Forbes <https://www.forbes.com/sites/brettknight/2021/05/12/the-worlds-10-highest-paid-athletes-conor-mcgregor-leads-a-group-of-sports-stars-unfazed-by-the-pandemic/?sh=243f519c26f4>.
[5] Upcounsel, “Sport Trademarks: Everything You Need to Know” (6 November 2020), online: Upcounsel <https://www.upcounsel.com/sport-trademarks#:~:text=A%20sport%20trademark%20can%20also,athletes%20who%20compete%20in%20it>.
[6] World Intellectual Property Organization, “Sport and Branding”, online: World Intellectual Property Organization (WIPO) <https://www.wipo.int/ip-sport/en/branding.html>.
[7] World Intellectual Property Organization, “The International Trademark System and Sports”, online: World Intellectual Property Organization (WIPO) <https://www.wipo.int/ip-outreach/en/ipday/2019/madrid_trademarks_sports.html>.
[8] World Intellectual Property Organization, “The International Trademark System and Sports”, online: World Intellectual Property Organization (WIPO) <https://www.wipo.int/ip-outreach/en/ipday/2019/madrid_trademarks_sports.html>.
[9] World Intellectual Property Organization, “The International Trademark System and Sports”, online: World Intellectual Property Organization (WIPO) <https://www.wipo.int/ip-outreach/en/ipday/2019/madrid_trademarks_sports.html>.
[10] Suvigya Buch, “Personality rights in sports : an analysis” (26 October 2021), online: iPleaders <https://blog.ipleaders.in/personality-rights-in-sports-an-analysis/>.
[11] Suvigya Buch, “Personality rights in sports : an analysis” (26 October 2021), online: iPleaders <https://blog.ipleaders.in/personality-rights-in-sports-an-analysis/>.