IANAL, but someone here probably is. (BTW, this all happens in Texas.)
The question: can I lease or sell a non-profit logo/name?
Here’s the situation, hypothetical-ized. Sorry it’s so long, but I hope interested parties will read it.
Let’s say that I started a non-profit arts organization called the Chicken Little Arts Program for Little Kids. I’ve been running it for 30 years concurrent with the school year. I bring in guest artists as instructors who run classes and workshops for children age 4-8. I’m well-known in the city and have a stellar reputation. I raise funds from private donations, private foundation grants, some from the city, some from the state, NO federal money, and some small program income. I don’t charge much because I want it to be available to all. Many school children attend for free.
The Chicken Little logo is very well known. We dress her up for Halloween, Christmas, July 4th on our posters and website. We have t-shirts with her on it. We sell cookies with her in icing on them. She is as identified with the program as Tony the Tiger is with cereal or Alfred E. Newman is with MAD magazine. She IS the program.
A local big shot dies and his bazillion-dollar estate is directed by his will to set up a non-profit arts education organization, which it does. It’s called the Pie in the Sky Arts Education Program and it runs year round. They are not a competitor of Chicken Little, because they deal mostly with older kids, college students, and adults. They also go after private donations, grants, and generate some program income with class/workshop fees.
After a while, I’m tired of looking for funds year after year not to mention venues to hold my classes; and at the same time, Pie in the Sky likes that I have a huge loyal mailing list of kids who will soon be a pool of potential participants for their programs. They approach me to become a partner, which means I can use their venues for my classes, and my Chicken Little name/logo appears on their website and all of their materials. They also process my fees and pass the money to me. They do not assist with any direct funding of my programs. It’s mutually beneficial, as I get the cachet of being associated with this big, prestigious organization, and they indirectly serve little kids. It’s all good.
Now, I’m ready to retire, and PITS would like to take over my whole program. I’m ready to let it go and move to Hawaii and live on the beach for the rest of my life. Outwardly, nothing will change. My org name/logo will continue to be on their website and materials and they will continue the long tradition of offering arts classes to little kids.
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The question repeated: **can I lease or sell the Chicken Little logo and the name of the program to the Pie in the Sky organization? The logo is not a registered trademark. Surely I don’t have to just GIVE the name and reputation that I have spend 30+ years building up outright to PITS and get *nothing *in return?
This situation isn’t really mine, but it is real. It’s a friend who has run just such an organization for 30+ years and is in such a relationship with a bigger, also non-profit, entity. He thinks he cannot derive any financial reward from giving over use of the logo/name to this other organization. He said, “because we’re both non-profits, and that means you’re not allowed to make a profit.”
That seems naive to me. Non-profits make LOTS of money and LOTS of profit… it’s just that they don’t have shareholders. But they can certainly make money that they then plow back into the mission (after they pay their CEO out the wazoo, build giant buildings/stadiums, and sock the money away in Endowment Funds).
I just want to know if he CAN derive some financial benefit from turning over this logo/name/identity that he has spend three decades turning into something Pie in the Sky wants to own? What sort of a lawyer would know the answer to this?