Typically, people believe that just because they created something artistic (a work of art, a novel, etc.) that the creator then has all the rights to the creation. However, that is not always the case. If you are creating something for your employer, then the rights under copyright law may belong to your employer. This is one issue that will undoubtedly be raised by Nike in the case against it by Kawhi Leonard, concerning the logo Leonard created as his personal brand.[1]
Leonard claims that he designed a logo which was later used by Nike on product endorsements by Leonard. The logo consists of a depiction of Leonard’s distinctively large hand, with his initials and his jersey number. Leonard claims to have designed the logo in college, before he had an endorsement deal or any other agreement with Nike.
The case was only recently filed with the United States District Court for the Southern District of California, and Nike has not yet filed its answer. However, it appears that there may not be much dispute about Leonard’s contribution in creating the logo. The dispute arises over who (Leonard or Nike) actually “owns” the logo and has the rights to use it
In copyright law, the “author” (i.e. creator) of an original work has the right to reproduce it, distribute copies, display the work publicly, etc. However, there is an exception to the rule that the “author” has the rights, when the work was a “work made for hire.” There are generally two types of work that qualify as “work made for hire:” (1) work by an employee in the scope of their employment, and (2) a specially commissioned work.
Work by Employee, in Scope of Employment:
Simply put: if you work at a graphic design firm and (as part of your job) you design a graphic for someone, then you (the actual creator) do not have the rights to the graphic you created. Your company does.
There are various factors that go into the analysis, but it essentially comes down to determining whether you are an “employee” (as opposed to a contractor) and whether it was within “the scope of your employment.” In other words, if you work as an accountant and write a fiction novel in your spare time then your employer does not have the rights to it. Even though you are an “employee,” it is outside of your job description to write works of fiction and the novel was written during non-work hours.
In the Leonard v. Nike case, it appears that Nike may try to argue that Leonard designed the current iteration of the logo-at-issue while working for Nike under their endorsement deal. If so, Nike would have to prove that Leonard was an “employee” of Nike and not just a contractor. Then, there is the obvious issue of timing – did Leonard design it while he was an employee of Nike?
Specially Commissioned Work:
The other category of original work that gives someone other than the author the rights to the work is when the work in question was specially commissioned. To qualify under this category, the work must fit into one of the nine (9) categories listed in the copyright statutes.[2] Those categories include things such as motion pictures, translations, compilations, test materials, or an atlas. Also, another important requirement is that there be a clear, signed document which indicates it is a work made for hire.
It is unclear whether Nike will seek to use this argument against Leonard, as the logo at issue in the case does not appear to cleanly fit inside of the nine enumerated categories. If, for the sake of argument, it did fit in one of those categories, Nike would then have to produce the signed writing which clearly specifies that the logo made by Leonard was going to belong to Nike.
No matter which way Nike goes about it, two of the big things to keep an eye out for are timing and the contracts. It seems clear that the language of the agreements between the parties, and the timing of when the logo was designed in relation to those agreements, will be key in determining who owns the rights to the logo.
If you have a dispute over an original work that you created, contact the trial attorneys at Goosmann Law Firm, PLC, in our Omaha, Sioux City, or Sioux Falls offices.
[1] Kawhi Leonard v. Nike, Inc., US District Court, S. District of CA, Case No.: 19-CV-1035-BAS-BGS (2019)
[2] 17 U.S.C § 101, definition of “work made for hire”