The next Football world cup, the 2010 fifa World Cup South Africa, is fast approaching. Millions of fans around the globe will find out in November if their national team has made it through the qualification round to the final tournament in South Africa next June. The FIFA World Cup, run by the Fédération Internationale de Football Association (FIFA), is known throughout the world as ‘the World Cup’, is the largest single sporting event in the world. It generates such passion and commercial interest that businesses everywhere desperately seek to get involved in the action. Many companies will already be planning marketing campaigns to benefit from the worldwide excitement generated by the tournament. Some will be large enough and lucky enough to become official sponsors. But the vast majority will not. This article is intended to assist the in-house lawyers of responsible companies who wish to avoid their companies unintentionally infringing the marketing rights in the World Cup.
background
Although the massive interest surrounding the event might suggest it is a public affair, FIFA is a private organisation and the events it runs take place on private land. FIFA thus controls exclusive rights of exploitation for the World Cup such as the name of the event, rights of access to the stadiums (by ticket or accreditation only) and rights to broadcast the matches. FIFA also owns intellectual property (IP) rights in the logos and marks for the tournaments. It uses these rights to enter into sponsorship deals with third parties. Those third parties are thus entitled to use the logos and other indicia to advertise themselves as official sponsors of the games. This official sponsorship will, they expect, enhance sales of the sponsors’ products and the value of the sponsors’ brands, as the World Cup progresses.
Some companies, which have no sponsorship connection, deliberately set out to benefit from the publicity and excitement surrounding the World Cup by creating promotional campaigns that mislead consumers into believing that they are somehow associated with the tournament. This has become known as ‘ambush marketing’. This can be done in either a direct, blatant way or through indirect means, deploying sophisticated campaigns with subliminal association. Often the direct, unsophisticated campaigns are clearly illegal, breaching traditional laws of IP (such as trade marks, designs, copyright, passing off and unfair competition). Such companies know they are breaking the law or are reckless to the fact. But most companies, responsible corporate organisations, do not intentionally break the law.
Over recent decades, as the value of official sponsorship packages have grown and grown, so too have FIFA’s efforts to tackle unauthorised companies from infringing the marketing rights that it grants to the tournament’s official sponsors. For the last World Cup, Germany 2006, FIFA’s rights protection team handled over 3,000 separate reports of ambush marketing in over 90 different countries. In a large number of these cases, the entities that engaged in acts of illegal unauthorised association claimed they were unaware that their activities were breaking the law. To reduce the number of unintentional acts of ambush marketing, FIFA has increased its efforts to communicate the nature and scope of its marketing rights as widely as possible, including publishing a set of guidelines on its website at http://www.fifa.com/mm/53/42/06/2010_fifa_public_guidelines_en_260908.pdf. This FIFA public information sheet provides further information on its trade marks and copyright works for companies that are not sponsors or licensees of the tournament, together with illustrated examples of common problems experienced over the years.
This article looks at the various rights owned by FIFA, the ways in which third parties, intentionally or otherwise, infringe those rights, and the steps that FIFA takes to stop them. FIFA’s rights are complex and the aim of this article is to help those who may be unaware of those rights and who are keen to ensure that they avoid conflict. Before doing so, however, I should declare my interest as author. I have advised FIFA on trade mark matters in varying capacities over the years. This article will, I hope, give a useful insight into the rights FIFA owns and the way in which it enforces them, with the objective of helping to avoid any unintentional infringement of those rights.
Unauthorised Association
Official sponsorship works on the principal of the invisible transfer of brand values between the sponsored property and the sponsor’s brand that takes place through consumer experiences, advertising campaigns, product packaging, in-store decoration or consumer promotions – intertwining the sponsor’s brand with the sponsored property.
Ambush marketing seeks to benefit from the same invisible brand transfer, intertwining the ambusher’s brand with words, images and experiences of the tournament, but without payment to the event organiser. This is seen as unfair, by FIFA and official sponsors alike.
All of the examples discussed in this article fall under this umbrella of unauthorised association or ambush marketing. In unsophisticated campaigns this may involve blatant IP infringement and misrepresentation, but companies often develop campaigns that associate with the tournament without confusion. Whether or not such association is unlawful will depend on the rights FIFA holds in, and the laws of, the countries in which the campaigns are run. As many campaigns are run in more than one country it is important to check the legal position in each.
Separate sponsorships
There is a difference between the rights of the individual teams entering the World Cup and the rights of FIFA. A sponsor of a participating national team will have various rights arising from that sponsorship. However, those national teams do not have, and are therefore in no position to grant to third parties, the right to use words or images referencing the World Cup tournament itself. This gives rise to many cases of ambush marketing.
Each national team’s tournament participation is subject to explicit contractual agreements between the participating member associations and FIFA. The teams are therefore limited as to what rights they can give to third parties such as sponsors. In-house lawyers of any sponsor of a participating national team should take note and ask to see the full set of contractual terms and guidelines before clearing their company’s advertising campaigns.
Ticket giveaways and competitions
Many companies do not realise that the right to give away tickets for the World Cup is a jealously guarded exclusive right granted by FIFA to its sponsors. Participating national teams all receive a ticket allocation from FIFA, on contractual terms. Those national teams usually divide their tickets among their own sponsors. While the teams are permitted to give those tickets to their sponsors, there is a specific contractual condition on all tickets that prohibits them from being sold or given away as part of a promotional competition. Only FIFA’s sponsors are allowed to run such ticket promotions for World Cup tickets. In addition, South Africa has passed specific legislation making such unauthorised dealing in tickets a criminal offence.
Although companies that run unauthorised ticket competitions in other countries may feel that South African law cannot be enforced against them, the FIFA ticketing office has a team of lawyers looking to enforce this against companies and ticket agencies outside South Africa who do not play by the rules. FIFA makes it clear that any unauthorised dealing in tickets renders the ticket void. The prize winners could then face the possibility of travelling to South Africa only to be refused entry to the stadium. This has already been pioneered at a major international football tournament with dramatic effect. Companies do not want the potential for huge loss of face and damage to their reputation in their home country if their guests and prize winners are refused entry to the stadium in South Africa.
Promotional public viewing and ‘fan fests’
Likewise, many companies may be unaware that FIFA does not permit non-sponsor companies to organise branded public viewing events, ie showing the match on a big screen. Pubs and bars will still receive an automatic free licence to show the broadcasts in their premises, provided that they do not charge an entry fee or deliberately brand the experience. More information can be found on FIFA’s website at http://www.fifa.com/worldcup/organisation/publicviewing/index.html.
Unauthorised use of FIFA’s marks
It may surprise many in-house lawyers that numerous, apparently reputable, companies continue to launch campaigns blatantly copying FIFA’s emblems in their advertising campaigns or incorporating FIFA’s registered trade marks within their company’s brand in special promotional logos. Prudent in-house lawyers will put structures in place to avoid any unchecked marketing campaigns, for example by building strong working relationships with their marketing departments, overseas offices and affiliates. The costs in both time and money to clean up the mess of an ill-advised campaign can be immense.
Editorial/Legitimate Descriptive Use
Certain companies, such as news organisations and companies offering travel and accommodation services, may have legitimate reasons to use FIFA’s registered trade marks on their products and in their advertisements. In such cases FIFA provides an online service to provide free high-quality artwork of its official marks for editorial or legitimate descriptive purposes. Further details of this and the web address can be found in the public guidelines referred to previously. But companies should be aware that editorial use does not cover advertorials, informational pieces about the tournament on a corporate website or corporate press releases. In such situations, the nature of the written piece is promotional. The piece would not be entitled to the benefit of the free service and the use of FIFA’s marks could be contrary to FIFA’s rights.
Lack of awareness of FIFA’s marks
FIFA’s registrations differ from country to country. Any registered trade marks will appear in a search of the local register, but many companies do not search before launching a campaign. FIFA’s list of registrations includes terms such as:
- SOUTH AFRICA 2010;
- WORLD CUP 2010;
- even WORLD CUP on its own in certain countries; and
- sometimes including the local translation such as COPA MUNDIAL or COPA DO MUNDO (Brasil).
While section 2 of FIFA’s public guidelines gives a longer list of official marks, the list is not a full list and is not country specific. There are many other trade mark registrations and copyright works that do not appear on this shortlist. As in any case where a company wishes to use a third party’s marks, there is no substitute for a proper search of the local trade marks register.
Copyright
Many of FIFA’s emblems and artistic devices may not protected by trade mark registration, but are protected by copyright. By their nature, copyright works are not registered so cannot be found by a public search. Images of FIFA’s main emblem, mascot and trophy marks are shown in s2 of the public guidelines. Again, this is not a full list.
Other rights
Even if a word or a term is not a registered trade mark in that country, if it is used without permission to refer to FIFA’s tournament in a way that creates an association in the mind of the consumer between the user and the tournament, the activity may amount to passing off or unfair competition. FIFA hit the headlines back in 2002 when it successfully obtained emergency injunctions in several European and Latin American jurisdictions forcing a multinational soft drinks company to immediately pull their TV adverts at great expense because they included the unregistered term ‘TOKYO 2002’. This was considered by the courts to be a clear unauthorised association with the 2002 World Cup Korea/Japan.
Special laws against Ambush Marketing
South Africa as host country of the tournament will be key. It has some very tough legislation making ambush marketing a criminal offence, and the, directors of an infringing company can be personally liable. For example, one such law (s15A Merchandise Marks Act 1941 (inserted by s2, Act no 61, of 2002)) prevents the use of a company’s own trade marks in relation to the World Cup ‘in a manner which is intended to derive special promotional benefit’ from the tournament, known as ‘ambush marketing by intrusion’. Further information about this can be found at annex 2 of the public guidelines. This is generally perceived as a radical new law – but not when compared to Germany, which is considered a relatively conservative country when it comes to IP law and practice. Under traditional unfair competition laws, the Regional Court of Cologne upheld an emergency injunction during the 2006 World Cup, forbidding a multinational beer company that was not a sponsor of the tournament (but was a sponsor of several participating national teams) from displaying their own trade mark on promotional materials outside the entrances of the World Cup stadiums. Companies that are used to ‘playing the game’ under traditional IP laws should be cautious of campaigns that may be run in or spill over into South Africa, or any other countries with different attitudes to unfair competition.
Examples of Dos and Don’ts
FIFA provides many more examples of potential problems in section 3 of the public guidelines, including website content, domain names, hyperlinks, mobile phone content, in-store decoration, use of the match schedule and examples of legitimate descriptive use.
I recommend these guidelines to all in-house lawyers who wish to help their companies avoid unintentional conflict with FIFA’s marketing rights at http://www.fifa.com/mm/53/42/06/2010_fifa_public_guidelines_en_260908.pdf. The guidelines are not exhaustive and are no substitute for local legal advice and professional IP clearance of any prospective advertising campaigns, but knowledge of them is likely to assist your company in staying ‘on side’, avoiding problems and enjoying a successful tournament.
By David Gill, senior UK and European trade mark attorney, Rouse.
E-mail: This e-mail address is being protected from spambots. You need JavaScript enabled to view it .