The guys discuss the trademark dispute between a CrossFit gym and Nike over the Jordan Jumpman logo. They then answer, “Can I prevent my employees from showing tattoos during work?” What do you think, did this CrossFit gym infringe on Nike?
NASIR: All right. Welcome to our podcast. My name is Nasir Pasha.
MATT: My name is Matt Staub.
NASIR: Oh, I messed you up, right? This is our podcast where we cover business in the news and answer some of your business legal questions that you, the listener, can send in to email@example.com. Very fun episode today. I’m really looking forward to something that I’m very much into which is CrossFit. Actually, I’m not at all. Never done it in my life but I feel like I should say that.
MATT: Yeah, I’ve never done it, never plan on doing it. I have friends that are all about it and I’ve seen people do it. It just seems like it’s asking to be injured. It’s not natural. They’re just, like, jerking around tons of weight awkwardly and – I don’t know – it just seems very questionable but I’m sure it can get you into good shape, if done correctly.
NASIR: Yeah, I think the problem is a lot of people do it incorrectly because they’re either not being trained properly or the trainer doesn’t know what they’re doing. Actually, what I am into is all the CrossFit videos of people getting injured doing crazy stuff. That’s pretty funny.
MATT: I like to watch injuries.
NASIR: Yeah, but they do some really, really dumb stuff and it’s obvious bad form. And then, of course, it’s really what not to do in CrossFit.
MATT: Well, it’s one of two things, right? It’s either people that are pushed too far – like, they just go on to keep doing more and more weight or more and more reps so they’re going to push themselves and compromise their body; or, two, they’re just so tired at that point that you’re not 100 percent and you just let something slip and that’s how you get hurt.
MATT: But I’m not like you and like to watch people get injured.
NASIR: Uh… Well, I mean, that’s about as close as I can get to CrossFit.
NASIR: But there is a joke with CrossFit that I think there’s one rule about CrossFit that you don’t stop talking about CrossFit which is totally true because people that are in it are way in it. I don’t know what it is.
MATT: It’s a cult, basically. So, what we’re going to talk about, this is a CrossFit gym in West Palm Beach, Florida. The reason I like talking about these is they’re just good conversation pieces and we’re dealing with trademark infringement, just to let people know. I like to have the debate of whether this is an infringement or not for these things. So, basically, those of you who are familiar with Nike – which I hope everyone is – they have the Jordan brand which, I’m sure, everyone has seen – even you, Nasir.
NASIR: Michael Jordan!
MATT: Even you who doesn’t watch too much basketball, I’m sure you know who Michael Jordan is and have seen the logo at some point.
NASIR: I stopped following basketball when he retired the first time.
MATT: 1998. Well, that’s a while ago. So, we’ll link it on the show notes but it’s him, you know, just jumping through the air. It’s the iconic shot of him – like, the ball up in the air, one leg up, one leg back.
MATT: On his way to dunk. So, this CrossFit gym, their logo is basically the exact, it’s not exactly the same but it’s the Michael Jordan Jumpman logo but upside down.
NASIR: It’s pretty close.
MATT: I just don’t really understand it, I guess. Is it trying to make some sort of message? I don’t understand it to begin with, but that’s why Nike is going after them, saying, “We own the rights to the Jumpman logo. This is infringement. You’ve just taken our logo and flipped it upside-down.”
NASIR: How come I can’t find their actual logo? I keep finding the Nike logo.
MATT: Yeah, I was just trying to find that, too. If you go to their website, you can see it a little bit better.
NASIR: Oh, okay.
MATT: You’ve got to turn your head upside-down. Like, it’s not exactly, if it was flipped upside-down, their logo, it’s not exactly the same, but it looks very similar to the Jordan one.
NASIR: Basically, he’s taking one of these… What are those things called – a dumbbell?
MATT: I thought you were talking about the Jordon one. I was like, “It’s a basketball.”
NASIR: No, no, no, not the basketball. I’m talking about the CrossFit logo.
MATT: Yeah, the weights that have like a handle on them.
NASIR: Yeah, whatever they’re called. So, the CrossFit logo, they’re basically balancing with one hand. We have to post this image to give an idea. So, basically, he’s balancing on this dumbbell thing – not a dumbbell – whatever it is – medicine ball with a handle. Yeah, it is the exactly opposite and it doesn’t even seem like a coincidence, right? It looks exactly like it.
MATT: I think it’s a kettlebell.
NASIR: Kettlebell, of course!
MATT: That’s news to me. It looks exactly like it just flipped and I would assume – I haven’t looked into this but I would assume – that Nike’s had the rights to this logo for quite some time.
NASIR: I’m sure.
MATT: It’s a pretty clear imitation of the logo. It’s just flipped upside down. Like I said, it’s not 100 percent match, but it’s a good 90 percent of the way there.
NASIR: I don’t know. I think they may get away with this. I think it’s different enough. But, see, what’s interesting about this whole thing is CrossFit themselves, they’re an organization and I think we just actually talked about this a couple of days ago about how they actually license their name out to other companies and other gyms or whatever pay to use this license. So, accordingly, they are very aggressive to make sure that they are able to maintain the sanctity of their brand by suing everyone that uses the brand without their consent because, you know, these other companies are paying a license fee. So, in order for that to have some value, they have to enforce the brand. Here, I mean, if you think about it, if they’re just a licensing brand, they go day by day making sure that no one else is using it so they have a pretty robust legal team to do this. Now, that same legal team has to defend from trademark infringement rather than enforcing it.
MATT: I like the attorneys for the CrossFit gym’s response. “With all due respect to Michael Jordan, I’ve never seen Michael Jordan slam dunk a 70-pound kettlebell upside-down.” That was their response.
NASIR: Yeah, but it’s fair because the question is, you know, we’ve gone through trademark infringement before. The question is, “Is there any likelihood of confusion?” and there is a number of elements but that’s always the element that is hotly contested, right? So, I don’t know.
NASIR: As of the first thing you think of, are you confused that this may be associated or affiliated with Nike or Air Jordan? What do you think?
MATT: If I didn’t have any background to the story, I would think no, personally. I mean, I don’t know if I would even put it together right away that it was. I mean, obviously, if it was flipped around the other way, it would look more like it.
MATT: I mean, I’m just looking at it right now and it doesn’t jump off the pages like, “Oh, it’s definitely the Michael Jordan.” It looks more like a… I don’t know. It don’t even know what it even looks like. But, if you know beforehand, then you can definitely see it.
NASIR: It seems like, if you’re familiar with CrossFit and that particular move, then perhaps you would have no correlation with Nike because you’re like, “Oh, that’s that special move where you balance on that…” What is it called? Kettleball? Dumbbell?
MATT: Kettlebell. Is that a move?
NASIR: Oh, I don’t know! I assume so because I saw another picture of a guy actually doing it against a wall.
MATT: Yeah, I just saw that, too. Well, that changes things, I think. I didn’t know that was an actual thing.
NASIR: Yeah, if it’s an actual thing. If it’s not, even if it’s not, frankly, it’s so obscure.
MATT: The bottom-line is, if I was Nike, I wouldn’t worry about this. CrossFit’s going to be done pretty soon.
NASIR: You think?
MATT: It’s just going to go under or at least be something else. Yeah, it’s all just the newest fad. Once enough people get enough injuries, like you said, then it’s just done.
NASIR: But it’s been a fad for a while. It’s been a few years now, it seems like, but I agree with you. And one of the big problems with CrossFit is that there’s a dilution of the brand itself in the sense that, because of the materials that you need for a CrossFit gym, you can go to any warehouse and rent out a space and, all of a sudden, you’re a CrossFit instructor, right? And that’s what’s kind of happened and that’s why you see all this, like, very bad form and so forth because it’s kind of just so diluted in its industry practice. But I think the top-end gyms will stay there, just like those yoga places that your wife loves, have gone to the sideling, the CrossFit gyms will also do the same.
MATT: I don’t know. I don’t buy into any of this. I’m strictly manual labor outside. That’s my workout – old school.
NASIR: You are very old school, I noticed.
MATT: Question of the day comes from a restaurant owner in Stockton, California. “Can I prevent my employees from showing tattoos during work?” I think this means that they’re wearing, I don’t think it means, like, “Can my employees take their shirt off and show tattoos to the customers?” I think it means can they force them to cover tattoos?
NASIR: Like, they have visible, make them invisible, or you know what I mean. Yeah, that’s a question, I think. There’s been a lot of talk with Starbucks. I don’t know if they just did or recently they’ve had a change of policy for the dress code for covering up tattoos. They used to require tattoos be covered but, now, they allow it so long as it’s not in your face or neck. The question is, this restaurant owner wants to maintain that. And so, the basic question is whether or not your policy is going to discriminate based upon a protected class – whether it is race, gender, in California, sexual orientation, et cetera – you know, disability, for example. So, what’s the answer there? What do you think?
MATT: I would say, if it’s reasonable, then I think you would probably be fine with it. But you’re walking that fine line of opening yourself up for a discrimination lawsuit.
NASIR: Yeah, especially like, for example, if somehow you unevenly apply the rule.
NASIR: I’m trying to think of a circumstance but for with tattoos, but there are exceptions like, for example, there may be some religious reason for having a certain tattoo at a certain location.
NASIR: So, there’s that danger, but then you would just have to make an exception for it. I don’t know. I mean, tattoos – and I think this is what Starbuck did – I mean, tattoos have been taboo in the past but maybe not as much now and it kind of depends what the tattoos are because I think even Starbucks, they limit, if you do have a tattoo, so long as it’s not rude or obscene, then it’s fine – which makes sense because a lot of people consider tattoos like their expression of speech. In the same way, you can’t be an employee of a restaurant or a coffee shop and spout out obscene language in the same way that you’re wearing a shirt or tattoo that says the same as well. That kind of prohibition has no problem.
MATT: Yeah, it’s a similar sort of thing. I think that you should probably just get any employees with tattoos just force them into laser surgery to remove them. Could they do that? Probably not.
NASIR: Yeah, you probably can, especially if you happen to own a laser removal surgery center and would force all your employees to remove it. That might be an interesting policy.
MATT: The serious answer, I mean, yeah, just have a reasonable reason.
NASIR: Yeah, to be safe.
NASIR: I agree; that’s a good idea. Have some kind of connection. For example, if it’s tattoos that are normally covered anyway and no one would see it anyway, then prohibiting that wouldn’t make sense and could open you up to certain liability, for sure.
MATT: The uniforms, what they’re going to be wearing, the only thing it’s going to be showing is face, neck, and then from the elbow to the end of the finger. So, it’s not like there’s that much even. I think it’s only pretty much concerned about, like, arm tattoos – well, I guess there are face and neck tattoos, if you want to go that route, but I think arm tattoos, they’re the way more common tattoo that they’re going to encounter.
NASIR: I wonder if you can only hire people that have tattoos. Like, if you’re in a tattoo shop, you want to have somebody that is sporting the goods, right?
MATT: I had a friend who worked with somebody whose work didn’t allow to show tattoos and he had basically full tattoos from his arms all the way to where he could roll his sleeves up. Like, if his sleeves were rolled up on his long-sleeved shirt and, when they rolled up, that was the exact line where there was nothing.
NASIR: Oh, yeah.
MATT: And then, if you looked even higher, it was just like full sleeve of tattoos.
NASIR: I think I’ve seen that, yeah.
MATT: Yeah, it’s pretty creative. So, just do that.
NASIR: One of the best barber shops that I know of in San Diego is a tattoo place down in – gosh, what’s the location? It’s kind of in the San Diego State College area and they have basically a barber inside of a tattoo parlor which is pretty cool. I think it’s called Papi’s Barber Shop – something like that. Anyway, I highly recommend. It’s Papi’s Barber Shop but it’s in Propaganda Tattoo, if I recall correctly. But, you know, you get there and get a haircut, very old school. They’re good at 1920s haircuts and then you sit down and watch people come in to get tattoos which is kind of a nice people-watching moment as well.
NASIR: I don’t even think he needs business because it’s one guy. You have to schedule, like, days in advance. Always seems to be busy.
MATT: That’s too far out for me.
NASIR: All right, guys. Well, thanks for joining us. Thanks for listening to us and having us in your headphones or speaker.
MATT: And, as always, keep it sound and keep it smart.