Roger Federer vs Nike: Match Point?

Roger Federer is arguably one of the most recognisable and famous tennis players of this generation. Having won 20 Grand Slam singles titles, more than any other male player in history, and holding the world no. 1 spot in the ATP rankings for a record total of 310 weeks; his accolades speak for themselves.

For a sports superstar who is naturally publicity-shy and never courts controversy, he has found himself in the middle of an interesting, if not wholly novel, legal predicament. Mr. Federer’s presence extends not only to the courts on which he delivers his breath-taking tennis, but also to the sporting garb worn by the sport’s aficionados all over the world. Having signed with Nike for the majority of his successful career, he had developed, in collaboration with the brand, his most famous ‘RF’ logo – adorned on a variety of Nike’s sporting products.

Mr. Federer’s endorsement deal with Nike, reportedly worth US$10 million a year, expired in March 2018 – after which it was announced that he signed a new 10-year deal with Japanese clothing behemoth, UNIQLO (who also currently sponsor Novak Djokovic and Japanese no. 1 Kei Nishikori), rumoured to be worth somewhere between US$300 million and US$400 million. Having now been kitted out in UNIQLO’s finest, Mr. Federer finds himself unable to flaunt his famous ‘RF’ logo as the trade mark is still legally owned by Nike.

This predicament is an interesting one, which highlights to what extent a corporation or business can realistically keep hold of a logo or trade mark that is so personally connected to an individual. In legal terms, the ownership will entirely depend on the provisions set out in the contract between Mr. Federer and Nike, and whether the end of their contractual relationship was envisaged.

During one of his first interviews at the start of Wimbledon 2018, Mr. Federer said, “So the RF logo is with Nike at the moment, but it will come to me at some point… I hope rather sooner than later, that Nike can be nice and helpful in the process to bring it over to me. It’s also something that was very important for me, for the fans really… But the good news is that it will come with me at one point. They are my initials. They are mine. The good thing is it’s not theirs forever.

It appears that Nike’s legal position, in terms of the ownership of the “RF” logo, is fairly settled. It is completely conceivable that, subject to any other contrary provisions in the agreement between Nike and Mr. Federer, Nike would have the right to use and exploit any logos or marks they create, as well as preventing any other third parties (including Mr. Federer himself) from using it without their express permission.

In this situation, it would appear that Mr. Federer has the following options:

  1. Request a formal transfer (also known as an “assignment”) of the “RF” logo owned by Nike, either directly to Mr. Federer (or his image rights company);
  2. Obtain an exclusive licence from Nike in exchange for a licence fee(s);
  3. Challenge Nike’s trademark registration of the “RF” logo on the grounds of invalidity;
  4. Sacrifice commercial revenue streams by not selling merchandise with the “RF” logo and thereby not infringing Nike’s trademark registration.
  5. Continue to apply pressure in the public domain by releasing statements regarding the “RF” logo in the hope that Nike are encouraged to discuss in good faith the transfer of the “RF” logo to avoid any negative publicity (from either fans of their own brand or fans of Mr. Federer).

Ultimately, this situation demonstrates the importance of considering all relevant intellectual property rights in the instance there is a breakdown or termination of an agreement. In hindsight, this is certainly a matter that should have been envisaged (and even negotiated) when both parties entered into an agreement of this nature. Nevertheless, it will be interesting to monitor how both parties deal with this now very public affair – Mr. Federer may be winning on the court, but will it be game, set and match for Nike at the end of the day?

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http://blog.mackrell.com/roger-federer-vs-nike-match-point/
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Mohit Pasricha

Mohit Pasricha

Solicitor at Mackrell Turner Garrett
Mohit is a solicitor and Head of Sports at Mackrell Turner Garrett, advising and representing clients within the sports sector by providing specialist advice on a wide range of commercial, corporate and intellectual property matters. His clients include clubs, commercial sponsors, sports agents, and individual sporting professionals.
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