High school and college athletes can now get paid by licensing the rights to their name, image and likeness.
But what does this really mean, and how can you do it?
Your Personal Brand Is Your Intellectual Property!
Everyone has the right to monetize their names, likeness and image. There are several different types of intellectual property (IP) rights attached to personal brands.
Rights of Publicity
One of these IP rights is called a right of publicity. This is the right for each person to have control over who uses their name, likeness and image and to set the usage and payment terms.
Names, slogans and logos can also be protected under trademarks, which protect the usages of names as they relate to the sale of certain goods and services. Think: Air Jordan for shoes.
Your image and related content, including photos featuring you, can be protected under copyright law. Copyrights protect creative works such as photos, art work, and music.
Athletes Make BIG Money Not From Salaries, but from Monetizing Their IP
In our digital age, this is how most professional athletes make most of their money. A salary may only get a professional athlete so far, and when an athlete gets injured, they may no longer have that source of income. . It’s their sponsorships, speaking engagements, branding deals, and other licensing deals that make them millions to support them for the rest of their lives.
But what about the high school and college athletes that are well known, but do not go on to be pro? Or they go on but only play for a few years? It’s more important than ever for these athletes to monetize their intellectual property rights early so that they can get paid and have an income to support themselves and continue to license those rights.
But how do athletes license rights to their personal brands? Here are the top 3 legal IP-related steps.
3 Steps to Make Money from Your Personal Brand
Step 1: Registering Your Trademarks
Athletes need to quickly register their names, logos and slogans with the US Trademark Office before someone else does. There are ways to try and get them back if someone else files before you, but it’s expensive, time consuming and emotionally draining. The cost to get your trademark on file is inexpensive compared to having to try and get the rights back. Registering your name is an affordable cost and one that the athlete should invest in as soon as possible. An IP lawyer will run a trademark search to confirm there are no issues with registering the name, strategize the filing descriptions and details and get the application on file. Using a lawyer is recommended because if not filed correctly it may not be possible to make certain changes once filed, and you won’t find out until months down the road if there is a problem requiring you to re-file.
It is not recommended to rely on unregistered trademark rights—in other words, register your names. While not impossible to enforce, it’s much more expensive, time consuming and challenging to go after third parties for using your names without your permission without having a federal registration.
Step 2: Registering Your Copyrights
Athletes can also file to register their images and photos with the US Copyright Office. In order to enforce your copyrights and claim statutory damages (which can potentially be up to $150,000 per work!), registration is required. The government fees are under $100, making registration affordable. There are various benefits to having an IP lawyer file—including ensuring the application is filed correctly and also helping you strategize ways to file multiple works under one application to save costs down the road.
Step 3: Get a Licensing Contract
Anytime you give someone permission to use your names and images, you are giving them what’s called a “license” to use your IP rights. Licenses come with a variety of terms and if they are not written down in a detailed agreement, the terms will be inferred through the course of your dealing or communications. It’s critical to have a license in writing that is clear and sets out the main terms, including the WHO, WHAT, WHEN, WHERE, WHY, HOW MUCH and FOR HOW MUCH?
Who: Who are you giving permission to use your name? Is it all of Disney including their related companies—or just ESPN? If you don’t have the right owner name in the contract, that would make a huge difference in your compensation and ability to negotiate with other business units of a company in the future.
What: What rights are licensing, and what goods/services will the IP be used for? This is critical. You need to define what specific IP rights you are granting, the scope of those rights, and the products/services that will feature the IP. Are you giving all intellectual property rights, including your trademarks, copyrights and rights of publicity? Or just your names? Even then, be specific and list out the exact names, photos or images you are giving.
When: For how long is the license? By having a lawyer draft your contract, you will set the term and know that you are not signing anything that will give away your rights forever. Unfortunately this happens all of the time, and ends up with people losing rights to their names.
Why: What’s the purpose of the agreement? You can be clear about this and have it in writing to prevent any breakdown during the course of the relationship.
How much: You can decide whether to give the other side exclusive rights or non-exclusive rights—meaning you can either let the entity be the sole entity to distribute your intellectual property that you’ve clearly defined, or you can make it clear that you retain the right to still license it out to others, including yourself. This is usually reflected in the payment/royalty, but it’s critical to have this be made clear and in writing.
For how much: What is your compensation for granting the rights to your IP? Are you collecting a flat fee, or a royalty? There are various ways to structure payment terms, so be sure to consult with an expert. Once the deal is signed, it’s very challenging to go back and change the terms.
The above is nowhere near an exhaustive list of the points to negotiate in a license. These are complicated deals that can govern your rights through the course of your relationship, or for the rest of your life if you sign a bad deal without having a lawyer negotiate it for you. Just look at the designer formerly known as Hayley Paige, who recently lost rights to her name and is now legally prevented from using her birth name because she signed a bad contract in her 20s without having a lawyer look at it for her.
Don’t just take a template agreement that you found online or one that someone gave you. These are custom tailored deals that require custom tailored design and drafting. Work with an expert to make sure you’re protected and do not end up giving away more of what you wanted for less.
You can have a lawyer draft one standard agreement that you use for all of your deals, assuming that you and your lawyer update and tailor it each time to the specific situation before sending it to the other side.
Know your rights and protect them early with the right trademark and copyrights filings and contracts.
REGISTER YOUR NAMES AND OTHER IP. This can’t be stressed enough.
If you do not have the right filings in place, someone can try and steal your rights and to get them back will be expensive, time consuming, and emotionally draining.
If you go into a bargaining situation without the right IP filings in place, the other side can try and negotiate to have them filed in their name, or claim some sort of ownership.
Have a lawyer draft a custom license agreement for you that you can then use for future situations when tweaked each time. You wouldn’t want to perform your own surgery, would you? When it comes to your names and face—the core essence of YOU—you do not want to mess around.
Sometimes the other side, particularly if they are a bigger brand or name, will hand you a contract to sign. NEVER SIGN THESE WITHOUT HAVING A LAWYER REVIEW IT AND NEGOTIATE IT FOR YOU. The terms are almost always one sided and assume that you put in the time to get a lawyer and would push back on any terms you do not agree to. Otherwise, you could end up signing away more than you thought. Saying “I didn’t know” to a judge is not a valid defense and won’t get you your rights back. You have a legal duty to read the contract, and most contracts will even say that you understood all of the terms and had the right an opportunity to hire a lawyer.
Francesca Witzburg, Esq. is an intellectual property and contract expert, representing talent, personal brands, businesses and startups. For more information on how to secure your IP rights and start monetizing your IP today, please schedule a call at https://francescawitzburg.as.me/discovery.
© 2021. Francesca Witzburg, Esq.