Recent events in the ongoing legal dispute between Alan Foster, co-founder of Big Baller Brands, and Charlotte Hornets point guard LaMelo Ball, highlight the importance of safeguarding athlete brands in collaborative ventures.

Filed just one month after the launch of the PUMA x LaFrancé collection, a collaboration between Ball’s lifestyle brand and Puma (for whom Ball has served as brand ambassador since 2020), Foster’s complaint alleges that Ball’s family engaged in a "fraudulent" transfer of Foster's trademarks to a new company, following which Ball secured his lucrative $100 million deal with Puma for signature shoes. 

As a longtime business partner to LaMelo’s parents, Foster claims that he played a pivotal role in creating the name and logo of Ball's “MB1” brand (where "MB" signifies "Melo Ball," and "1" represents Ball’s favorite jersey number), and that he owned a 33.3% interest in the brand through Big Baller Brand LLC. Of course, this branding formula is not novel. Nike has been marketing Air Jordans in collaboration with Michael Jordan for almost 40 years; obtaining a signature shoe deal is now akin to a rite of passage for NBA stars, and many are branded eponymously, or at least incorporate in the brand some indicia of the athlete’s name or likeness. 

Absent copyrightable design elements, there is no legal protection afforded under U.S. trademark law to a person or company that ideates or conceives of a trademark. Rights accrue through commercial use of the mark, and registration may be obtained by filing evidence of commercial use of a mark with the U.S. Patent & Trademark Office (PTO). Other ownership and use rights can be negotiated by contract and are key points of consideration for both the brand and the athlete in a sponsorship or endorsement deal.

Foster’s complaint specifically claims that both he and Big Baller Brand LLC used the MB1 mark since 2017 (any use that Foster allegedly made apart from his role with the company is not detailed). In 2017, Big Baller Brand LLC filed with the PTO an application (signed not by Foster but by the company’s attorney of record) to register the MB1 design mark, and the registration was granted in 2018. An assignment signed by LaMelo’s father, LaVar Ball, as “President” of both Big Baller Brands LLC (assignor) and Big Baller Brands Inc. (assignee) was recorded at the PTO against the MB1 trademark and other related marks.  According to Foster’s complaint, LaVar Ball made numerous misrepresentations in this assignment, including with respect to ownership of the MB1 mark. However, when recording assignments, the PTO does not engage in any determination of “the validity of the document or the effect that document has on the title to an application, a patent, or a registration” (37 C.F.R. § 3.54), leaving interested parties to resort to litigation to resolve any fraudulent or inaccurate filings.

In addition to $200 million in damages, Foster seeks a permanent injunction against the Ball family, preventing them from perpetuating what he claims are "unfair or fraudulent business practices" and restraining them from further use of “his” trademarks. Adding a layer to the legal drama, Puma's new line of LaMelo shoes is now branded as the "MB.03," raising questions about trademark continuity for the MB1 brand. 

For athletes, maintaining ownership and control over their personal name, likeness and any eponymous brand is paramount (recall that Roger Federer had to renegotiate with Nike to port over his “RF” logo when he moved to Uniqlo). For brands and agencies, the flip side is true: a strategy of retaining ownership and control over bespoke logos and other copyrightable branding elements designed in-house for the athlete is important to avoid loss of valuable intangible assets and market reputation if the athlete moves to a competing brand.  Thoroughly documenting the creation and ownership of preexisting and newly created intellectual property (including trademarks) during the venture, and establishing clear agreements on ownership, use, licensing and transfer rights both during and after the term of the collaboration can minimize the risk of transforming the parties from teammates into rivals down the line.

(Co-author credit: associate Lisa Wiznitzer)