Ryan Brida – The business of sports occasionally creates rifts between athletes and those who seek to profit from their name, image, likeness (“NIL”). Filed in September 2022, the petition for trademark control filed by NBA player Luka Dončić against his mother, Mirjam Poterbin, made evident the complexity of mingling sports and business.
It is no secret that the popularity of sports in the United States and internationally can lead to the exploitation of the world’s best athletes’ NIL for purely economic motives. Luka, in a legal battle against his mother, is attempting to revoke consent owned by his mother for the registered trademark “Luca Doncic 7.” A trademark that has been owned by Poterbin since 2018, has prohibited Luka from registering the trademark “Luka Doncic” and “Original Hoops of Luka Doncic” as the United States Patent and Trademark Office found those trademarks confusingly similar to “Luka Doncic 7.”
In 2021, Luka wrote a letter to his mom revoking his consent for the trademark, effective immediately, stating that he did not consent to the future use of the trademark and any trademarks relating to his name. He insisted that he is no longer affiliated with Poterbin or the trademark’s goods and services. This dispute raises a potentially unprecedented legal controversy regarding the consent of a trademark referencing a famous individual and then subsequent revocation of that consent. Luka argues that consumer confusion will result because he does not approve of or sponsor the trademark’s goods. He asserts that consumers will incorrectly presume, because of the trademark, that the goods they buy are supported by Luka. Additionally, Luka argues that his mother has not used the trademark because there are no known licensees, and therefore she abandons the rights to the trademark. Because use is the backbone of trademark law in the United States, his argument may have novel merit. As there is no mention of trademarks in the United States Constitution, Congress only has the ability to regulate trademarks through the powers they are enumerated in the Commerce Clause. Thus, the use of a trademark in commerce is vital for Congressional control. Alternatively, Poterbin could use §2 of the Lanham Act to argue that she had consent at the time of registration from her son. Consistent with § 2(c), Poterbin could argue that because of this consent, there is no sufficient basis to terminate her trademark.
If this case is ever tried before a court, a decision for either party would (1) affect professional athletes who are in a similar situation as Luka; and (2) serve as a general rule for college athletes who are new to the concept of capitalizing on their NIL. The Supreme Court’s decision in NCAA v. Alston has allowed college athletes to retain the rights to their NIL, rather than these rights belonging exclusively to the NCAA. A year following the Alston decision, the sports industry has seen major sponsorship deals with top college athletes (some of which are outlined in College Football Recruits Are Reportedly Cashing In With Hefty NIL Deals). Luka’s controversy with his mother serves as a warning to college athletes who are engaged in giving companies consent for their trademarks to do so carefully, as their consent could permanently jeopardize their ability to use their NIL in future deals. Unlike professional athletes, the problem for star college athletes is that they are often young and inexperienced with the business aspect of sports. With the novelty of NIL in college athletics, potential exploitation of a student-athlete’s NIL is a growing concern.
There are several ways to prevent what happened to Luka from happening to college athletes, and it begins with education. Although protecting one’s brand may seem like a straightforward process, brand management in a social media driven society is more complex now than ever before. One solution is for universities to provide resources for their student-athletes. This solution not only helps the student-athlete, but it also protects the university’s reputation. Leading the way has been The University of South Carolina (the “University”) as South Carolina creates first in-house NIL firm with help of Everett Sports Marketing. By creating an in-house resource for their student-athletes, the University is offering free help in protecting and building their student-athletes brands. Until more institutions adopt initiatives like that of the University, student-athletes can also register their own trademarks to profit from their NIL. As explained in NIL Laws: How College Athletes Should Protect Their Name, Image & Likeness, it is best to employ an experienced trademark attorney. By employing an attorney, student-athletes may be able to prevent a situation like that of Luka and his mother.
Ultimately, Luka’s situation is an unfortunate reality of the negative effect that mingling business and family can create. Although this type of dispute between mother and son is likely rare, it serves as a great example of just how cautious student-athletes need to be when navigating through NIL post-Alston. If student-athletes can learn anything from this case, it is that they must protect their brand. Once that is taken, it is difficult to get back.