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The Real Athlete Blog

 

Expert Contributor: Kanika Corley

 

Biography

Kanika Corley

Kanika Corley is an associate attorney with Sedgwick LLP, based in the Los Angeles office. Kanika’s practice focuses on the representation of major media, entertainment and advertising entities in the areas of copyright and trademark infringement litigation. She has experience negotiating and drafting intellectual property agreements, as well as registering, policing and protecting trademarks and copyrights. Kanika can be reached at 213.426.6900.

 
 

Most Recent Articles

 
  1. The Battle for Linsanity – Lessons Learned from a Young Star’s Rise and … Injury

    by Kanika Corley 04-21-2012 04:41 PM Legal | Image Branding

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    In today’s fast-paced, global media environment athletes must be prepared for a sudden bolt into stardom. Jeremy Lin rose from a D-League vagabond to the face of the NBA overnight. After a dominating performance on February 4, 2012, as the new point guard for the New York Knicks, Lin led the team to seven straight wins and became a virtual obsession for the media. Lin’s popularity has been helped by his unique brand: a combination of Ivy League pedigree, Taiwanese heritage and a superior ability to break down defenses and get to the basket, which has captured the hearts of basketball fans all over the world.  

    Before learning of a torn meniscus, the phenomenon surrounding his popularity was coined “Linsanity” and in the early part of 2012, “Linsanity” ruled the airwaves. During that time, “Linsanity” created an explosion of merchandise and goods that helped Lin establish his brand.[1] Surprisingly, however, most if not all of the profits made by the use of "Linsanity" do not involve or benefit Jeremy Lin. Others quickly capitalized on the popularity of “Linsanity” to market their own goods bearing the moniker. 
     
    Many ask us if this is legal—someone else profiting from another’s popularity and good name? 
     
    Unfortunately for Jeremy Lin, the use of his name and reliance on his reputation by others might be legally permissible simply because of Lin’s own professional missteps. In short, Lin wasn’t prepared for stardom and may not have acted quickly enough to capture and preserve his rights. As a result, various competing claims over “Linsanity” has propelled it into the legal world. While the media frenzy over “Linsanity” has cooled off a bit, the legal dispute over who gets to use “Linsanity” will have a far-reaching impact on Jeremy Lin’s future as well as the futures of his commercial competitors.
     
    Linsanity in the Trademark Office
     
    As of the time of this article, there have been ten (10) trademark applications attempting to claim ownership of the term “Linsanity” for use on goods and products ranging from clothing to eyewear. Two (2) of the trademark applications were filed prior to Jeremy Lin’s application. The first, filed February 7, 2012, by Yenchin (Matthew) Chang seeks registration of “Linsanity” for the sale of men’s, women’s and children’s clothing. The second, filed on February 9, 2012, by Andrew Slayton seeks to register the use of sports apparel. Jeremy Lin joined the party and filed his registration application for “Linsanity” on February 13, 2012, covering a wide range of sports products and clothing.
     
    Jeremy Lin’s entry into the “Linsanity” bonanza did not seem to deflate the hopes of others since seven (7) other applications were filed after his filing. And with good reason. In most cases, the law encourages competition and innovation by rewarding those who arrive first and those who diversify the marketplace. As a result, Lin now faces a battle to obtain and protect the “Linsanity” trademark and maintain control over his emerging brand; a battle that could have been avoided. 
     

     

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  2. Maximizing the Benefits of Running a Nonprofit Organization While Minimizing Risks Is Crucial to the Athlete’s Success

    by Kanika Corley 10-24-2011 11:36 PM Legal | Philanthropy

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    Charitable giving, or the expectation of charitable giving – whether it is the giving of time or money – seems to go hand in hand with being a professional athlete. These days, it seems that if an athlete does not have a charitable organization or private foundation in his/her own name, it is likely that she/he spends time volunteering at a local children’s hospital, for example, as a result of being on a professional sports team. But why do individual athletes maintain charity organizations? Certainly it cannot simply be that athletes sign their names onto golf tournaments and athletic skills camps as a result of a directive issued by a sports agent or other career manager.

    As most would agree, although there are exceptions, people are not generally altruistic or philanthropic by nature. The most basic economic theories advise that people act in their own best self-interest in an attempt to maximize their financial standing. Well, in an effort to inject philanthropic motives into society – thereby decreasing self-interest – many governments have devised plans that effectively incentivize high-income earners to work for, create and/or manage nonprofit organizations.
     
    Nonprofit Organizations Are Public Service Businesses
    A nonprofit organization (NPO), or charity, is essentially a business set up to perform work that benefits certain underprivileged classes of people. Historically, charities were developed to meet certain needs of society and were formed to do public good – to provide aid to segments of the community that tend to fall outside of the general scope of public assistance. In the U.S., NPOs are set up and qualified by the Internal Revenue Service (IRS). In turn, the IRS gives the charity various tax benefits, including complete tax exemption, or 501(c)(3) status. Obtaining 501(c)(3) status let's all who do business with the charity know that their donations and services may also be entitled to reap the benefits of tax exemption. As a result, people who are more likely to work for and/or with a business that not only helps a segment of society in need, but in so doing, garners tax benefits.  
     
    A Legal Way to Decrease Tax Liability
    Finding oneself in a higher income bracket means learning about increased tax liability. In an effort to decrease the sting, some athletes are able to drop down into lower tax brackets by investing in charities as a method of legally decreasing tax liability. Lucky for some, U.S. federal and state tax laws have been enacted to encourage the making of charitable gifts and to facilitate the operation of charitable organizations. These laws reflect the public policy favoring charitable giving and recognize that many charities relieve the public tax rolls from the burden of financing human and community services.
     
    A donor (corporate or individual) can claim a personal federal income tax deduction for contributions made to a 501(c)(3) tax-exempt charity. In some parts of the U.S., corporations can make deductible charitable contributions of up to 10% of their annual taxable income. In other jurisdictions, individuals can deduct up to 50% of their adjusted gross income in any year for contributions made to 501(c)(3) public charities and to some types of 501(c)(3) private foundations. However, donations to most types of private foundations are limited to 30% of an individual’s adjusted gross income in each year. (To be sure, consult your trusted, licensed tax and/or financial professional for all matters dealing with tax liability.)
     
    Given the availability of a charitable donation tax deduction that presumably lessens tax liability, the question remains: Why is it that so many athletes seem to be running their own charitable organizations?
     
    Develop Real-World Business Skills
    By developing a charitable organization, athletes give themselves the opportunity to develop business acumen and experience by managing an organization from the ground up. Athlete/employers will have direct oversight over the business, which will enable the athlete to make immediate changes should the need arise within the charity.
     
    Ultimately, running the charity ensures that the athlete obtains hands-on experience by making decisions that will have an immediate impact on the organization’s bottom line, learning the importance and role of each staff member, determining who should/should not have leadership and control in the business, and assessing the financial viability of the company. Such real-world business lessons will prove invaluable experience to the athlete, who will one day transition into the business sector of society when professional sports provide no further opportunities.
     
    In addition, for those athletes who find themselves providing financial support to family members and friends, funding a NPO may give these recipients a way to earn the money to which they have become accustomed.

     

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  3. Why Is My Trademark Limited?

    by Kanika Corley 09-14-2011 10:59 PM Sports Business | Marketing | Legal | Image Branding

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    As athletes make the transition from professional sports into the business sector, some find it helpful to rely on name recognition established in years past. It is the hope of those who represent these athletes-turned businessmen and women that the sports-related reputation carries sufficient weight in the corporate world to garner a significant amount of contract negotiating power. But even if our clients’ reputations are strong now, who’s to say they will continue to be popular enough, good enough or even pure enough to maintain the interest of the consumers who are purchasing goods and services tied to the athletes’ names? This is where the concept of “brand protection” typically enters the discussion. Take a survey of a PR firm, an intellectual property attorney, sports agents and talent managers and you are bound to hear various definitions for the term “brand protection,” and even more explanations on the best methods of achieving it.

    In recent years it seems that business professionals have increasingly encouraged clients to achieve a certain level of brand protection by obtaining a formal trademark for their names, logos and even catchphrases. If, by doing so, the hope is to stave off would-be infringers and/or increase the chances of legally stripping infringers of profits generated from the unauthorized use of a protected mark, obtaining a trademark may or may not be the best vehicle to achieve these goals.
     
    A person can trademark a word, phrase, symbol or design that identifies and distinguishes the source of a good from goods associated with someone else. Although trademark holders have the exclusive right to use their registered marks, this federally recognized right may not provide the extensive level of legal protection we typically associate with “trademarks.”
     
    Intuitively, we believe people who sell goods—license plate holders, key chains, t-shirts, cups, etc.—  bearing a swoosh symbol, distinctive bunny ears, or a black prancing stallion on a yellow shield, should be sued and forced to turn over their profits if it is the case that the sellers are not actually licensed by these multinational trademark holders. It also seems reasonable to think that the unauthorized sale of cloth patches bearing the initials of a national sports league, or figurines/dolls wearing a jersey bearing a popular player’s number should also be deemed unlawful behavior. (Note that this article will not discuss alternative legal bases a person may rely on to challenge this seemingly illegal behavior, independent of trademark laws.) Surprisingly (and for mark holders, unfortunately), in many parts of the United States, our intuition with regard to the protection afforded by trademark laws is wrong.
     
    In a federal case filed in Arizona, a district judge concluded that the unauthorized sale of license plate holders and key chains branded with a popular symbol for a German auto manufacturer did not constitute infringement. The trial judge explained that consumers are less concerned about who actually manufactures these license plate holders and key chains and more concerned with the functional use of the products that happen to include an aesthetically pleasing insignia. The function of the license plate holders and key chains outweighs the use of the German brand name. As a result, there is no trademark protection because trademark laws do not provide exclusive protections for functional goods. This decision was ultimately overturned on appeal; however, weighing “function” against “aesthetic” charm continues to be a major consideration when a trademark holder sues an infringer.

     

     

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  4. As a Pro, You Created a Brand; Now, Protect It!

    by Kanika Corley 07-08-2011 03:04 AM Sports Business | Marketing | Legal | Image Branding

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    In these times of multiple threats of league lockouts and increasing salary caps, many athletes are finding themselves searching for alternative revenue streams. Even pros whose sports continue to keep them working are steadily looking to supplement income, primarily through business deals based exclusively on name recognition. As a result, brand protection is of increasing and paramount importance. Once an athlete steps into the business sector, that athlete must remain cognizant of the public’s perception of his or her image. Thinking of oneself as a brand has been a widely covered topic of late. While many understand the need for brand protection theoretically from a PR perspective, many fail to see it practically from a legal perspective.
     
    Brand Birth
    The general public, including prospective employers, get to know athletes by the personality traits captured on tape, manifested through commonly observed technical and social skill sets displayed on and off the court (or field as the case may be) – which goes to the heart of branding. While brand development typically starts in high school and travels with the athlete all the way through to post-professional play, it is the public’s perception that dictates the pervasiveness of athlete brand recognition. Ultimately, surviving in the business sector necessitates that when an athlete leaves competitive sports for the business world, the athlete must carry a strong brand along with a (different kind of) team eager to protect it.
     
    Disconnected Branding
    High school-aged athletes are typically still learning their craft when audiences begin watching them and making decisions about the athlete’s likeability. During this time, most athletes do not have handlers, media trainers, lawyers and other consultants whose jobs are to create and cultivate what will one day become the athlete’s brand.
     
    Athletes who go on to compete in college under NCAA guidelines assign to the association all rights to the commercial use of their names, pictures or likeness, while in college, and arguably in perpetuity. (See, Holmes, J. & Corley, K., “Defining Liability for Likeness of Athlete Avatars in Video Games,” Los Angeles Lawyer Magazine (May 2011).)
     
    A slightly less extensive grant of rights is assigned by pro athletes who seek to compete in leagues, tournaments, circuits and tours. The major distinction here is that the pro maintains some rights to also license likeness, although such a contract cannot conflict with the primary agreement. As such, it is in this time frame, when an athlete turns pro, that the athlete is permitted to earn money from the commercial use of likeness. 
     
    Taking Control
    These days athletes are lending their likenesses to the promotion of consumer goods and services such as clothing, shoes, and insurance; social events, including parties and charity tournaments; and even reality TV shows. What many do not understand is that the value of the athlete’s likeness to the company employing that athlete is usually multiplied by the athlete’s failure to negotiate greater protections for the use of the athlete’s brand, in conjunction with that of the employer’s.
     
    Following the 2011 NBA Finals, there were rumblings that a multinational company might replace one athlete’s endorsement contract with another player. (This article will not speculate on the legality of such a move.) Evident from this notion of a seemingly unilateral decision by one contracting party to completely nullify an agreement is that the athlete might not have taken control of certain key terms when the agreement was initially negotiated. While it is typically the case that one party to an agreement will have slightly better bargaining power than another, he who holds the weaker position must fight for as much control in the negotiations as possible.
     
    The Key Elements
    Being asked to sponsor and/or endorse a consumer good or service is quite an accomplishment; it’s also a testament to the brand you and your team have created. However, don’t get caught up in the glitz and glam! Protect your brand by focusing on five key elements over which negotiation is both warranted and expected: scope, duration, territory, enforcement and price.

     

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