Analyzing the "More Than An Athlete" Lawsuit Against LeBron James' Uninterrupted

LeBron James' media company, Nike, ESPN and Take-Two Interactive were all named in a lawsuit by a Maryland youth group over the "More Than An Athlete" phrase.
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The slogan “I am more than an athlete” consists of six words from the English language. No one owns those words, individually or as a collective. However, the ability to profit from this phrase has sparked a multiyear legal controversy that involves LeBron James and his growing business empire.

In a complaint filed last week in the U.S. District Court for the District of Columbia, Game Plan, a Maryland-based nonprofit, insists that James’s Uninterrupted, Nike, ESPN and NBA 2K publisher Take-Two Interactive Software have illegally used the slogan to generate ill-gotten gains. Game Plan, which obtained registration for “I am more than an athlete” with the U.S. Patent and Trademark Office in June 2018, asserts that the defendants have infringed on the nonprofit’s trademark rights and conspired to engage in unfair competition.

Game Plan seeks a jury trial and at least $33 million in damages. It also demands a court-ordered injunction to top the defendants from further use of the phrase. Judge Dabney Friedrich, who served as associate White House counsel to President George W. Bush and is a former federal prosecutor, is the presiding judge.

While their federal court litigation is new, Game Plan and Interrupted are hardly strangers in the legal system. Since November 2018, they battled before the federal Trademark Trial and Appeal Board (TTAB) over “I am more than an athlete” and the similar slogan “more than an athlete”.

The facts behind the controversy

Game Plan doesn’t claim to have concocted “I am more than an athlete”. Research confirms this sequence of words appeared years ago.

Most notably, in 2009, the phrase appeared in an Ebony Magazine story authored by Myron Rolle. At the time, Rolle was a Rhodes Scholar and a Florida State safety. He later played for the Tennessee Titans and Pittsburgh Steelers and is now a neurosurgery resident at Harvard Medical School. “I am more than an athlete,” Rolle wrote. “I am a man who wants to change the world. Sports may help me get there, but I don't see it as my end—only my means.” Rolle is indeed much “more than an athlete.” The list of neurosurgeons who were Rhodes Scholars and who played in the NFL begins and ends with Rolle.

Game Plan thus can’t claim to have invented the slogan at issue. The nonprofit instead asserts that the relevant timeline began on Dec. 28, 2016. On that the date, Game Plan filed an application for trademark registration with the USPTO for the logo and word mark “I am more than an athlete.” Game Plan sought legal protection for a narrow purpose: the charitable fundraising services it conducts through selling t-shirts. The sales of these t-shirts raise funds for educational and entertainment programs.

“I am more than an athlete” and the accompanying selling of t-shirts reflect Game Plan’s core mission. That mission is to provide education and resources for Washington D.C. metro area teens in hopes of helping them obtaining essential life skills.

To illustrate, Game Plan hosted the “I Am More Than An Athlete Town Hall” in Feb. 2017 at the Charles Herbert Flowers High School in Springdale, Maryland. The event, according to a press release, was “geared towards helping student athletes learn how to establish game plans for life after high school and college.” Game Plan has garnered media attention for its charitable work. Four years ago Game Plan was featured in a story authored by Kelly D. Evans for The Undefeated.

Game Plan likely sought trademark protection for several reasons. One was to inform the public that the nonprofit is the source of goods and services associated with the slogan. Game Plan asserts that it first used the phrase in commercial activities on October 8, 2017. This occurred when Game Plan CEO and president, Sam Sesay, attended a Washington Wizards preseason game at Capital One Arena. The Cleveland Cavaliers were the opponent.

Prior the game, while Wizards and Cavaliers players warmed several feet away, Sesay and a group of students affiliated with Game Plan met up with Wizards guard John Wall at courtside. The students all wore black-t-shirts. On the front was expressed, in large, bold and white font the phrase “I AM MORE THAN AN ATHLETE” along with Game Plan indicia.

Game Plan’s complaint, which is authored by Washington D.C. intellectual property attorney Ryan Jones, includes an appendix that contains photos of the pregame meet up:

The exposure for Game Plan, writes Jones, “would greatly grow the program and its awareness to the public.” Jones also stresses that Wall spending time with the students occurred directly in front of NBA players. Wall’s interaction, Jones maintains, caught the attention of those players. One may have been James, who was out with an ankle injury but apparently in attendance.

Game Plan has used “I am more than an athlete” phase in the sale of apparel. The company’s website sells a black t-shirt with white lettering and a white t-shirt with black lettering. Both t-shirts feature the slogan at issue. It’s not clear when Game Plan first sold these shirts, either in person or online. However, an Internet archive search shows the shirts began to be sold online no later than Sept. 2, 2018.

Through Jones, Game Plan maintains that James saw the mark during that Wizards-Cavs game. Assuming James actually saw the t-shirts, the observation apparently left an impression on him. Jones highlights that James began to use the “I am more than an athlete” slogan on Feb. 16, 2018. This occurred on Instagram, when James responded to criticisms leveled by Fox News commentator Laura Ingraham.

The James-Ingraham clash started when James shared his views on President Donald Trump’s controversial remarks about African, Central American and Caribbean countries. James, while appearing on Uninterrupted, lambasted the President’s statements as “laughable and scary.” Ingraham dismissed James’s critique and suggested that he just “shut up and dribble.” James fired back, with a simple message on Instagram. The message was captured in a neon light sign bearing the words, “I AM MORE THAN AN ATHLETE”, along with the hashtag, #wewillnotshupanddribble.

According to jones, the sign shown in James’s Instagram image is found within the Los Angeles offices of Uninterrupted. James, who currently has 60.3 million followers on Instagram, received considerable media attention—including in political circles—for his blunt and unequivocal rebuke of Ingraham.

As told by Jones, Uninterrupted and its business partners sought to profit from the viral moment. “I am more than an athlete” gradually began to appear in products, including apparel, merchandise and video games, and in media content productions.

Nike, for instance, sells a pullover called “The LeBron ‘More Than An Athlete’ Pullover.” The pullover retails for $100 and uses a very similar, if not identical, font type as the one that appears in the Instagram image.

Nike also incorporates the following product description, which suggests the phrase is directly linked to James:

"I am more than an athlete" is a phrase that sums up LeBron's incredible life story while inspiring others to strive for greatness. The LeBron "More Than An Athlete" Pullover is made from softly brushed fleece with premium embroidered graphics.

NBA 2K also features the phrase as part of the game. Like Nike, the font type mimics the one used in the image posted by James on Instagram.

NBA 2K screenshot

NBA 2K screenshot

According to the complaint, Uninterrupted entered into agreements with ESPN, Nike and NBA 2K, among others, for the licensing of “I am more than an athlete” mark. These agreements, the complaint asserts, occurred in July 2018—one month after the USPTO registered the mark to Game Plan:

more-than-an-athlete-lawsuit

Game Plan and Uninterrupted have been litigating against each other in a federal administrative proceeding since 2018

Game Plan isn’t the only company to have sought trademark protection for “I am more than an athlete.” The Crossover has found that while Game Plan was first to apply for trademark protection—and, to date, is the only company to have received registration from the USPTO—Uninterrupted has also applied for registration of the mark.

To that point, on March 10, 2018, Uninterrupted submitted four applications to the USPTO for the phrase. Two are for the “handwritten printed words”:

The other two are for the “standard character mark”:

Collectively, the four applications seek protection for the following goods and services:

· Entertainment services, namely, providing a website featuring non-downloadable videos, podcasts, films and social media posts in the field of sports.

· Clothing, namely, t-shirts, sweatshirts, hats, and jackets.

In November 2018, Game Plan and its attorney, Jones, filed a notice of opposition to the TTAB, an administrative board within the USPTO. Game Plan argued that it already owns the rights to the marks that Uninterrupted seeks to register. The nonprofit also stressed that Game Plan was “engaged in the production, distribution, sale, advertising and promotion in interstate commerce of apparel and media and entertainment products and services” for the phrase and would be harmed if Uninterrupted secured registration.

In subsequent filings, Uninterrupted, which was represented by NYC intellectual property attorney Howard Shire of Pepper Hamilton, both rejected Game Plan’s arguments and counterclaimed Game Plan. Uninterrupted insisted that Game Plan “had made no use in commerce” of the phrase with respect to the goods and services identified in Game Plan’s applications.

In addition, Uninterrupted maintained that it is the owner of the very similar mark, “more than an athlete” (it’s the same except lacks “I am” at the start). In April 2012, marketing and brand strategist De’Andra Alex applied to register the mark for “publicity and sales promotion services.” Thirteen months later the USPTO registered it in her name. In the years that followed, “more than an athlete” was used in connection with a variety of clothing and accessories, including the following:

On August 30, 2018, Alex assigned her ownership of the mark to Uninterrupted.

She also joined Uninterrupted’s staff as an expert.

Game Plan fired back, arguing that Uninterrupted failed to challenge Game Plan’s registration for “I am more than an athlete”. Game Plan also maintained that Uninterrupted has “unclean hands” by marketing goods “that have caused a likelihood of confusion, dilution, deception, and mistake.”

The TTAB matter involving Game Plan and Uninterrupted has been put on hold. Game Plan filed a motion to suspend the case pending the new litigation in D.C. federal court.

Unpacking Game Plan’s claims in D.C. federal court

Game Plan maintains it sent Uninterrupted a cease and desist letter, but the company continued to market “I am more than an athlete.” This set the table for Game Plan to sue in federal court, raise five civil claims and demand tens of millions of dollars in damages. To that end, Game Plan maintains that the defendants’ “unauthorized use” of the nonprofit’s mark “has harmed and significantly diminished the ability for Game Plan to operate its business of selling t-shirts in the stream of commerce and making media and live content production and presentations.”

Game Plan’s complaint includes a claim for trademark infringement. Infringement occurs when there is an unauthorized commercial use of a word, phrase, symbol, design or other mark. To prevail, Game Plan must show the defendants’ usage of “I am more than an athlete” probably causes consumer confusion about its source. Game Plan insists that the defendants’ uses of the slogan “are likely to cause confusion, mistake, or deception as to the origin, sponsorship, or approval of the fake and unauthorized versions of the goods and services of Game Plan.”

Game Plan also asserts that the defendants are liable for trademark dilution. Dilution refers to a protected mark that becomes so diluted that it no longer distinguishes a product or service. Whereas infringement focuses on consumer confusion, dilution focuses on whether marks are no longer sufficiently distinctive. There are different ways dilution can occur. Game Plan maintains that the defendants are guilty of “dilution by tarnishment.” Tarnishment consists of an objectionable or inappropriate use by the defendants of a protected mark. As Game Plan sees it, their trademark was “gaining fame and strongly associated with Game Plan” when the defendants’ “use or colorable imitation” triggered dilution and thus damaged the nonprofit.

In addition, Game Plan maintains that the defendants are liable for unfair competition. Game Plan insists that the defendants knowingly conspired to mislead and deceive consumers into believing their products were associated with Game Plan or, alternatively, diverted them away from Game Plan’s products and services.

Likely defenses

Uninterrupted and the other defendants will answer Game Plan’s complaint and, undoubtedly, deny that they have broken any laws. The answer will surely incorporate arguments raised by Uninterrupted before the TTAB. One such defense will integrate Uninterrupted’s possession of the registration for the similar “more than an athlete” mark—a mark that predates “I am more than athlete” by several years. Another defense will likely claim that Game Plan failed to sufficiently utilize the mark in the stream of commerce.

Uninterrupted’s public statements about Game Plan’s complaint also reveal insight. TMZ (which was first to report on the lawsuit) quotes a statement from an Uninterrupted spokesperson in response to the complaint’s filing. In it, the spokesperson dismisses the complaint as “meritless” and full of “factual inaccuracies.” The spokesperson also claims that Uninterrupted “owns prior rights in and to” the trademark at issue.

The spokesperson’s reference to “prior rights” is instructive. By registering with the USPTO, Game Plan obtained certain legal benefits. They include a statutory presumption that Game Plan is the owner of the mark and has the exclusive right to use the mark. Yet these preemptions are rebuttable. Uninterrupted can overcome them by, among other steps, establishing with sufficient certainty that the company used the “I am more than an athlete” mark prior to the date of filing (Dec. 28, 2016).

In addition, Uninterrupted could argue that consumers aren’t confused. Many, if not most consumers, may not have ever seen Game Plan’s t-shirts or know anything about this nonprofit. Also, apparel sold by Game Plan and Nike use different fonts. In addition, Nike expresses that the phrase is directly linked to James—and not some other source. It’s possible Uninterrupted could offer survey data and other empirical evidence to debunk the idea of consumer confusion. Likewise, the dissimilarities between the uses of the slogan would help the defendants show that neither dilution nor deception occurred. In that same vein, it’s not yet established that James knew of Game Plan or the t-shirts before using the slogan in response to Ingraham. Lastly, Uninterrupted could countersue Game Plan, just like it counterclaimed the nonprofit in the TTAB proceeding.

Next steps

As detailed above, Uninterrupted and the other defendants will answer the federal complaint and raise arguments discussed above. The parties’ proceeding before the TTAB is also unresolved at this time. This multi-forum litigation is poised to last months, if not longer.

Meanwhile, a settlement is a possibility. Common sense suggests that both Game Plan and James’s business and business partners could resolve their debate through a licensing agreement. In it, one side would be the nominal “owner” of the slogan and the other would license to use it. In that scenario, both sides could use “I am more than an athlete” without the threat of litigation.

The Crossover will keep you updated on key developments.

Michael McCann is SI’s Legal Analyst. He is also an attorney and Director of the Sports and Entertainment Law Institute at the University of New Hampshire Franklin Pierce School of Law.