The importance of intellectual property rights in sport [1]

by Prof. Dr. Ian Blackshaw[2]

 

Introductory remarks

In this seminar, we will consider the important part played by Intellectual Property Rights (“IPRs”) in Sport, especially in the marketing and promotion of sports events. Indeed, without IPRs, it would be impossible to market sports events, sports persons and sports teams, because sports bodies and individuals would have nothing to commercialise or sell. No one is going to pay for the grant of any rights to be associated with sports events or to sponsor sports personalities and teams without those rights, especially exclusive ones, being recognised by law and, as such, being legally enforceable against others that have not been granted those rights and – even more importantly – have not paid anything at all for the privilege of exploiting them commercially.

Not only do IPRs play an important role in the marketing of sports events, but their creative use is also crucial for the protection and commercialisation of the valuable image rights of sports personalities, such as David Beckham and Tiger Woods. This is an important and complex topic in its own right and would merit an entire Seminar devoted to it!

Sport is now big business and has become a global industry in its own right, worth more than 3% of world trade and 3.7% of the combined GNP of the twenty-eight Member States of the European Union. So, there is much to play for both on and off the field of play.

As mentioned, in this seminar we will see just how important IPRs are, especially trademarks and copyright[3], and in what ways they can be used creatively for the successful commercial exploitation of sports events, especially international ones. For a broader and more extensive treatment of the subject of IPRs and their importance in sport generally, see the paper on The Importance of IP Rights in Sport, presented by Prof. Ian Blackshaw at the 2008 Global IP and Patents Meeting in London[4].

 

Marketing of sports events

Generally

The basic problem sports events marketers face under English law lies in the fact that there is no legally recognised property or other right in a sporting event per se. See Victoria Park Racing and Recreation Grounds Co Ltd v. Taylor and Others [1937] 58 CLR 479. In that case, Latham CJ held that:

A spectacle cannot be “owned” in any ordinary sense of that word.”

In other words, a sports event as such is not a species of legal property that can be protected in its own right. So, those wishing to commercialise and market sports events need to rely on other rights that are legally recognised and protected under English law.

Basically, we are concerned with trademarks and copyright. But, we will also cover in this seminar, sports registered “domain names”, which, in some respects and in function, constitute quasi trademarks when – as they often do – they identify the source/origin of goods and services, and are a valuable way of marketing and promoting sports bodies and their events and sports persons who take part in them on the world wide web.

Firstly, we will consider trademark protection, and then copyright protection.

 

Trademark protection

Perhaps the most distinctive and recognised sports mark in the world are the five interconnected rings in blue, yellow, black, green and red symbolising the world-wide reach of the Olympic Movement and the Olympic Games – often referred to as the “greatest sporting show on earth!”.

The Olympic rings enjoy special legal protection at the international and national levels around the world. At the international level, they are protected by the so-called “Nairobi Agreement” – the Agreement on the Protection of the Olympic Symbol of 1981.

At the national level in the UK and in connection with the staging of the Summer Olympic Games in London in 2012, the rings – as a bid pre-condition – were protected under the provisions of the London Olympic Games and Paralympic Games Act of 2006. This act also protected the use of the Olympic motto and the use of such expressions as “the Games”, “Olympians”, and “Olympiad”, as well as “strap lines” in advertisements, such as “Come to London in 2012” and “Watch the games here this Summer”. All these measures were designed to provide comprehensive Olympic brand protection and combat various forms of so-called “ambush marketing” for the benefit of the official sponsors of the Games, who pay mega bucks for a package of “top line” sponsorship rights, against those who, in the advertising and promotion of their products and services, falsely and unfairly claim an association or affiliation with the Games. However, these statutory measures have been described by the UK advertising industry as “draconian” and threatening the right of free speech, which includes commercial speech, that is, advertising! The author of this article would agree with this point of view.

As regards trademark protection, which is probably, in practice, the most important form of legal protection of sports events, sports bodies and organisations and also sports persons (particularly in relation to their valuable image rights as already mentioned), the UK Trade Marks Act of 1994 defines a trademark in section 1(1) as:

“[…] any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.”

This is a wide definition[5] and so a trade mark may be granted in respect of, for example, distinctive sounds, as in the case of the Australian Football League, which has registered the sound of a football siren for football and associated services.[6]

Thus, provided the basic legal requirement of distinctiveness is satisfied, it is possible to register the names and associated logos of sports events as trademarks. However, the name “Euro 2000” failed the distinctiveness requirement and could not be registered as a trademark per se. But, prima facie, combined with a distinctive logo, this event name could be registrable as a trademark.

Likewise, an attempt in 1998 to register the name “World Cup” also failed through lack of distinctiveness. Again, combined with a distinctive and original logo, such a mark can be protected as a trademark and also enjoys copyright protection as an “artistic work”.[7]

In such cases, it is possible to use the marks unregistered and, in time, through such commercial usage, they acquire what is known as “a secondary meaning” and identify a particular source of the goods or services to which they relate and, thereby become registrable as a trademark, which is often defined as “a badge of origin”. Such unregistered and so-called “common law” trademarks are protected under the ICANN Uniform Domain Name Dispute Resolution Policy, described later.

Under section 4 (1)(a) of the UK Copyright Designs and Patents Act of 1988, “a graphic work, […] irrespective of artistic quality” qualifies for legal protection as an “artistic work” under the Act.

Sports event “mascots” may also qualify, in principle, for registration as trademarks, again subject to their being distinctive. And also as registered designs.

Although not a sports event mark, it would perhaps be remiss not to mention the Adidas “three stripes” trademark case, in which, at the time, the long-awaited Preliminary Ruling by the Court of First Instance of the European Court of Justice (ECJ) (C-102/07) was rendered on 10 April, 2008. This case, which well illustrates the need for trademark protection in the sporting arena generally, concerned the extent of the legal protection under trademark law within the European Union afforded to the three vertical stripes on sports and leisure goods produced and sold by Adidas. The facts of this case were as follows:

The parent company of the Adidas Group, Adidas AG, is the proprietor of a figurative trademark composed of three vertical, parallel stripes of equal width that feature on the sides of sports and leisure garments in a colour which contrasts with the basic colour of those garments. Its subsidiary company, Adidas Benelux BV, holds an exclusive licence, granted by Adidas AG, to use this mark on garments marketed in the Benelux countries.

Marca Mode, C&A, H&M and Vendex are competitors of Adidas, who also market sports garments featuring two parallel stripes, the colour of which contrasts with the basic colour of those garments.

Adidas took the competitors to Court in The Netherlands claiming the right to prohibit the use by any third party of an identical or similar sign which would cause confusion in the market place. Marca Mode and the other defendants to these proceedings, however, claimed that they are free to place two stripes on their sports and leisure garments for decorative purposes. Their defence was based on the so-called requirement of availability, namely that stripes and simple stripe motifs are signs which must remain available to all and, therefore, they did not need the consent of Adidas to use the two-stripe motif on their garments.

Adidas won at first instance; were overruled on appeal; and the case finally came, on a point of law, before The Supreme Court of the Netherlands (Hoge Raad der Nederlanden), which sought clarification from the ECJ on the main point at issue, namely, whether the requirement of availability is an assessment criterion for the purposes of defining the scope of the exclusive rights enjoyed by the owner of a particular trademark.

The ECJ ruled, first, that the requirement of availability of certain signs is not one of the relevant factors to be taken into account in the assessment of the likelihood of confusion. The answer to the question as to whether there is that likelihood must be based on the public’s perception of the goods covered by the mark of the proprietor on the one hand and the goods covered by the sign used by the third party on the other. The national court must determine whether the average consumer may be mistaken as to the origin of sports and leisure garments featuring stripe motifs in the same places and with the same characteristics as the stripes motif of Adidas, except for the fact that the competitors’ motif consists of two rather than three stripes.

Secondly, the ECJ turned its attention to the specific protection granted to trademarks with a reputation. It noted that the implementation of that protection does not require the existence of a likelihood of confusion between the sign and the mark. The mere fact that the relevant section of the public establishes a link between the two is sufficient. Since the requirement of availability is extraneous both to the assessment of the degree of similarity between the mark with a reputation and the sign used by the third party and to the link which may be made by the relevant public between that mark and the sign, it cannot constitute a relevant factor for determining whether the use of the sign takes unfair advantage.[8]

Protection of a registered trademark in the UK lasts for an initial period of ten years and, provided the mark is used commercially and the renewal fees are paid, the registration can be renewed for further periods of ten years ad infinitum.

It is advisable, for trademark protection reasons, to use the device R in a circle (®) after the trademark wherever and whenever it is used; and/or the legend: “X is registered trademark of the ABC corporation”. In either or both cases, in this way, notice of trademark claims are given to the whole world! This serves as a legal warning to would-be infringers.

As already mentioned, the Olympic Games are considered to be the “greatest sporting show on earth” and, so, it is not surprising that the Olympic Charter contains some very strict provisions designed to safeguard and protect the IPRs in the Games (referred to and defined as the “Olympic properties”). Art. 7 of the Olympic Charter, the latest version of which dates from 9 September 2013, provides as follows:

 

7 Rights over the Olympic Games and Olympic properties

     1   As leader of the Olympic Movement, the IOC is responsible for enhancing the values of the Olympic Movement and for providing material support in the efforts to organise and disseminate the Olympic Games, and supporting the IFs, NOCs and athletes in their preparations for the Olympic Games. The IOC is the owner of all rights in and to the Olympic Games and Olympic properties described in this Rule, which rights have the potential to generate revenues for such purposes. It is in the best interests of the Olympic Movement and its constituents which benefit from such revenues that all such rights and Olympic properties be afforded the greatest possible protection by all concerned and that the use thereof be approved by the IOC.

     2   The Olympic Games are the exclusive property of the IOC which owns all rights and data relating thereto, in particular, and without limitation, all rights relating to their organisation, exploitation, broadcasting, recording, representation, reproduction, access and dissemination in any form and by any means or mechanism whatsoever, whether now existing or developed in the future.

     3   The IOC shall determine the conditions of access to and the conditions of any use of data relating to the Olympic Games and to the competitions and sports performances of the Olympic Games.

     4   The Olympic symbol, flag, motto, anthem, identifications (including but not limited to “Olympic Games” and “Games of the Olympiad”), designations, emblems, flame and torches, as defined in Rules 8-14 below, may, for convenience, be collectively or individually referred to as “Olympic properties”. All rights to any and all Olympic properties, as well as all rights to the use thereof, belong exclusively to the IOC, including but not limited to the use for any profit-making, commercial or advertising purposes. The IOC may license all or part of its rights on terms and conditions set forth by the IOC Executive Board.

As the IOC is the proprietor of the Olympic properties, it is obvious that the IOC should take steps to protect these “properties” to the extent necessary to safeguard their value, especially the goodwill that they represent, to enable them to be commercialised fully by the IOC and their sporting and commercial partners.

Certainly, as part of this ongoing process, the IOC exercises strict control over its most valuable IPRs and not least as regards “ambush marketing” in relation to the Summer and Winter Games. Furthermore, the IOC demands that the host cities enact special anti-ambush marketing measures to protect them, as well as designing and implementing so-called “brand protection programmes”!

Other major international sports bodies, such as FIFA, the world governing body of association football, takes similar measures in relation to the hosting of its flag ship event, the FIFA World Cup! This was particularly so in the case of the organization and staging of the event in South Africa in 2010. In fact, infringers of the World Cup marks and emblems were relentlessly pursued by FIFA and the local organising committee! Reputedly, some 450 infringement legal actions were brought against “offenders”. See “Sport as a Brand and its Legal Protection in South Africa” by the leading South African IP practitioner and academic Prof. Owen Dean[9], who reaches the following conclusion:

“[…] all parties involved should understand that the administration of professional sport and the staging of major sporting events are big business and they should be treated like any other business enterprise in the context of intellectual property rights. Sports brands are valuable items of property and should be treated as such. The example of FIFA and the 2010 World Cup should be salutary and its intellectual property rights protection campaign should be used as a template. When that stage has been reached sport and branding will come properly into its own.”

Furthermore, in his article, Prof. Dean listed, according to the records of the South African Companies and Intellectual Property Commission (CIPC), the following trademarks that FIFA registered in South Africa in respect of the 2010 World Cup held there:

–   trademark nos. 2004/09046-082 South Africa 2010 in classes 1, 3-12, 14-16, 18, 20, 21, 24-43;

–   trademark nos. 2005/24252-288 World Cup 2010 in classes 1, 3-12, 14-16, 18, 20, 21, 24-43;

–   trademark nos. 2006/11308-344 football player & device (the official logo) in classes 1, 3-12, 14-16, 18, 20, 21, 24-43;

–   trademark nos. 2007/28914-939 Zakumi (the name of the official mascot) in classes 1, 3-12, 14-16, 18, 20, 21, 24-43;

–   trademark nos. 2007/29240-265 2010 mascot device in classes 1, 3-12, 14-16, 18, 20, 21, 24-43;

–   trademarks nos. A2006/0721, A2006/0707 and A2006/0710 official emblem design in classes 2, 19 and 21.

 

This extensive list of trademark registrations demonstrates the importance that major international sports bodies, such as FIFA, attach to the protection of their IPRs in relation to the organisation, staging and commercialisation of their prime sports events!

See also “The importance of trade marks in sports marketing” by Sean Corbett[10], trade mark attorney of Formula One Management in London, who not only stresses in his article the importance of trademarks in the marketing of major sports events, such as grand prix motor racing, but also the need to look after and protect them in all cases:

“[…] whether one is marketing a brand of running shoe that helps you sprint like Usain Bolt; the merits of a particular golf club that help golfers hit the ball as far as Bubba Watson; or the announcement of a competition to win tickets for a prestigious event […] the success of a trade mark rests in the hands of the parties controlling how it is used and, therefore, the overriding message for trade mark owners is look after your trade marks and your trade marks will look after the brand.”

Finally, reference should also be made to the recent three-part series of articles by Canadian entertainment and sports lawyer, Len Glickman (in collaboration with some of his colleagues), entitled, “Trademarks in sports: an overview”, the first of which was published on 2 September 2013, on the LawInSport-website[11]. In that article, the authors expressed the importance and value of IP brands generally and IP sports brands in particular and how to protect them in the following terms:

Intellectual property can be a company’s most valuable asset. The brand value of multi-national corporations like Walmart, McDonalds or Starbucks is well recognized; however, professional sports teams and leagues are some of the most valuable brands. Real Madrid (US$ 3.3 billion) topped Forbes’ list of most valuable sports franchises released July 15, 2013, followed by Manchester United (US$ 3.17 billion), Barcelona (US$ 2.6 billion) and the New York Yankees (US$ 2.3 billion). To protect their core brands, these franchises file trademark applications for team names, logos and even mascots. Individual athletes, such as Tiger Woods and Serena Williams, have developed their own brands thereby creating business and endorsement opportunities for themselves. To protect their brands and their future business ventures, professional athletes trademark their own names, nicknames and catch phrases.”

 

Copyright protection

The difference between trademark protection and copyright protection lies in the fact that in order to obtain the former, it is necessary to register the trademark concerned in a public registry, whereas in the case of copyright in a protected “work”, no such registration is generally required: copyright exists by operation of law once the work is created and published.

As mentioned above, copyright protection exists and can be claimed in respect of a composite event mark, which combines the name of the event incorporated in a distinctive and original logo by the use, for example, of distinctive lettering and colours. Such a logo is regarded for copyright purposes as an “artistic work” irrespective of artistic merit, pursuant to the provisions of section 4 (1)(a) of the UK Copyright Designs and Patents Act of 1988 (see above). The “work” need not, for example, be a Picasso!

Copyright in an artistic work lasts for the life of the author plus 70 years (see section 12 of the 1988 Act).

Wherever and whenever the logo appears, it is advisable to claim copyright in it by using the international copyright notice, consisting of a C in a circle (©), the name of the copyright owner and the year of publication. For those countries (and there are not that many of them) in the world that are not members of the Berne Convention for the Protection of Literary and Artistic Works, the words “all rights reserved” should be added.

Another point to note: generally speaking, there is no copyright in a slogan, as a literary work. See the decision in Exxon Corporation v. Exxon Insurance Consultants International Ltd.[12]

As regards the extent to which copyright protection has been used and leveraged in association football in the UK, not always for the benefit of fans and the good of the “beautiful game”, see the interesting, challenging and different point of view expressed in the dissertation by Stefan Hagan entitled, “Intellectual Property Rights in Sport” and subtitled, “A critical analysis of Intellectual Property Rights within Sport, focusing upon the role of Copyright in Football”[13]. The essence of his thesis may be gleaned from the following summary of his dissertation:

Sport has commonly been heralded as a universal language that brings competitors and fans together with no distinction of class or race. This public inclusion has been particularly evident in football/soccer, where fans created most English clubs and the sport is often referred to as “the beautiful game” open to everyone of all walks of life and belonging to the people. The professional game has come a long way since then, particularly since the creation of “The Premier League” in 1992, which ensured total club revenues of over £ 1.3 billion in 2003-04.

Football Clubs now act as businesses as have therefore recognised the value of intellectual property rights (IPR’s) and have striven to privatise anything possible of profit, using IPR’s to protect materials from pictures to fixture lists. This total business approach is inappropriate and it is reducing the public domain and forcing fans with a very distinct and unique moral claim, to now pay for the materials that once belonged to them. This greed is an exploitation of fan loyalty and a failure to recognise the innovative market strategies that have become available through the development of technology such as the Internet.”

Although somewhat dated, this dissertation makes some controversial points, with which not everyone would agree, on the use made by sport of its IPRs, which are still relevant and hotly debated at the present day.

 

Sports domain names

Generally

As already mentioned, with the rise of the internet as another information and marketing platform, sports domain names constitute a quasi IPR and, as such, are also a valuable kind of property and, like trademarks, are an effective marketing tool, and, therefore, worthy of legal protection. In this part of the article, we will summarise the way in which sports domain names are protected against infringers without the need to resort to the courts, which can be time consuming and expensive.

The internet is generally regarded as either a blessing or a curse, depending on one’s point of view, usage and experience of it. And it has been described by some commentators as being akin to the “wild west”. In other words, because of its global reach and all-pervading nature, it is difficult to police and regulate – there are no obvious boundaries.

However, when it comes to the registration and use of domain names – internet addresses – the Internet Corporation for Assigned Names and Numbers (ICANN), which was created by the United States of America Department of Commerce specifically to introduce some measure of order and regulation into what was fast becoming a chaotic system, particularly in relation to the unfair registration and use of domain names and the need to provide effective procedures for settling disputes concerning them, as they are a very valuable form of intellectual property. Indeed, domain names are widely considered to be a form of electronic trademark and need to be legally protected as such. They are subject to their own particular form of registration procedure, different from that of trademarks generally, through the various domain name registries, which operate under and according to the ICANN Policy and Rules.

The ICANN Uniform Domain Name Dispute Resolution Policy (the UDRP Policy)[14] sets out the legal framework for the resolution of disputes between a domain name registrant and a third party (i.e., a party other than the registrar) over the abusive registration and use of an internet domain name (“cybersquatting”) in the generic top level domains or gTLDs (e.g. .biz, .com, .info, .mobi, .name, .net, .org), and those country code top level domains or ccTLDs[15] that have adopted the UDRP Policy on a voluntary basis.

At its meetings on 25 and 26 August 1999 in Santiago, Chile, the ICANN Board of Directors adopted the UDRP Policy, based largely on the recommendations contained in the Report of the WIPO Internet Domain Name Process[16], as well as comments submitted by registrars and other interested parties.

All ICANN-accredited registrars[17] that are authorized to register names in the gTLDs and the ccTLDs that have adopted the Policy have agreed to abide by and implement this Policy for those domains.

Any person or entity wishing to register a domain name in the gTLDs and ccTLDs in question is required to consent to the terms and conditions of the UDRP Policy.

On 24 October 1999, the ICANN Board adopted a set of Rules for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules) setting out the procedures and other requirements for each stage of the Dispute Resolution Administrative Procedure. The WIPO Arbitration and Mediation Center (the WIPO Center) acted as technical advisor to the ICANN drafting committee charged with finalizing the UDRP Policy and Rules.

The principal advantage of the UDRP Administrative Procedure is that it typically provides a faster and cheaper way to resolve a dispute regarding the registration and use of an internet domain name (an internet address – also, as mentioned above, often described as an “electronic trademark”) rather than going to court. In addition, the procedures are considerably more informal than litigation. And, furthermore, the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the internet, and alternative dispute resolution.

The Procedure is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar of the disputed domain name or the domain name registrant/holder or the complainant are located.

The Dispute Resolution Administrative Procedure is administered by dispute resolution service providers accredited by ICANN. The WIPO Arbitration and Mediation Center is one such dispute resolution service provider and, in the professional experience of the author of this article as a WIPO Domain Name Panelist, a very important, prolific, efficient and effective one too!

 

Registered sports “domain names”

Many domain names are registered and used in connection with sports bodies, sports events and sports persons and disputes in relation to them can be settled “extra-judicially”.

The World Intellectual Property Organization (WIPO) is a specialised agency of the United Nations, based in Geneva, Switzerland. The WIPO Arbitration and Mediation Center offers arbitration and mediation services for settling IP related and other disputes. Such disputes also include sports-related ones.

It is generally known that there have been some such disputes handled by the Center, but as such proceedings are confidential, no actual details are known, although it is believed that one of them involved a sports-related patent dispute in relation to a well-known sporting goods brand.

As mentioned above, the Center also handles, pursuant to the ICANN (Internet Corporation on Assigned Names and Numbers) Uniform Domain Name Dispute Resolution Policy[18] of 24 October 1999 (as subsequently amended), domain name disputes, many of which involve sports trademarks. In fact, the very first domain name dispute handled by the Center in 1999 concerned the sport of wrestling and the World Wrestling Federation (WWF). See WIPO Case No. D1999-0001 and the domain worldwrestlingfederation.com. As a result of this case, the World Wrestling Federation had to change its name to World Wrestling Entertainment and use the acronym WWE, in order to avoid using its previous acronym WWF, by which the World Wildlife Fund is widely known.

The outcomes of all these domain name disputes are published on the WIPO official website[19].

In order to prove a case of “cybersquatting” – the abusive registration and unfair use of a domain name – and obtain the transfer or cancellation of the offending domain name, the complainant must prove each of the following basic elements of paragraph 4(a) of the Policy, namely:

(i)     The disputed domain name is identical or confusingly similar to a trademark or

          service mark in which Complainant has rights; and

(ii)          Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)    The disputed domain name has been registered and is being used in bad faith.

 

Notice that point (i) above refers to a trademark which has been interpreted in WIPO Decisions as including an unregistered (a so-called “common caw” trademark) as well as a registered mark.

Regarding point (iii) above, what, one may reasonably ask, is meant by the expression “bad faith”? Paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith.

They are as follows:

(i)     Offering to sell the domain name to the trademark owner or its competitor;

(ii)          An attempt to attract for financial gain Internet users by creating confusion with the trademark of another;

(iii)    Registration of a domain name in order to prevent the trademark owner from reflecting its mark in a corresponding domain name; and

(iv)    Registration of the domain name in order to disrupt the business of the competitor.”

It should be noted that this list is not exhaustive, but merely illustrative of the kinds of situations that may fall within the concept of “bad faith”.

In practice, many domain name disputes, including sports-related ones, are not defended by the respondent, and this fact, along with a failure to respond to or comply with any “cease and desist” letter from the complainant, issued before the WIPO proceedings were commenced, may constitute further evidence of bad faith on the part of the respondent.

Likewise, the respondent may have been previously involved in registering disputed domain names that have been the subject of previous WIPO cases, in which those names have been found to be without legal justification and ordered to be transferred to the complainants in those previous cases. Again, this would constitute evidence of bad faith.

As also would registering a fanciful or bizarre name, which happened in the so-called tangentially sports-related Pepsi case (PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).

In that case, an Italian Company, with the name of “Partite Emozionanti Per Sportivi Italiani”, which, in translation, stands for “Leave the Histrionics for Italian Sports Fans”, and known for short as “P.E.P.S.I.”, registered 70 domain names incorporating the famous soft drink trademark PEPSI in relation to an extensive range of sports, including “pepsicricket.com”, “pepsigolf.com”, “pepsisoccer.com”, “pepsirugby.net”, “pepsisuperbike.net” and “pepsivolleyball.net”.

Not surprisingly, the sole panelist in this case held that there was “opportunistic bad faith” because the domain names were so obviously connected with such a well-known product with which the respondent had no connection.

 

Concluding remarks

The importance of IPRs in sport generally and event management and exploitation cannot be overemphasized or underrated. They underpin and provide the necessary legal protection to major international sports events and also provide a sound basis on which sports IPRs can be commercially exploited.

In fact, it is fair to say that, without the creative use and application of IPRs, major sports event organisers would have nothing to commercialise or to sell to sponsors, merchandisers, broadcasters and many others who wish to be commercially – and I would add – officially associated with these events. Such partners require exclusivity, which appropriate IPRs provide.

Getting it right and drawing up the corresponding formal agreements is crucial to ensuring not only the required legal protection but also the successful commercial exploitation of the sports events concerned. For these purposes, event organisers and marketers, sports administrators and managers need to employ the corresponding legal experts.

It is submitted that not to do so, as there is so much at stake financially and in terms of “goodwill”, is not only false economy but sheer commercial and financial folly!

 



[1] This article is an abridged version of a paper presented by the author at the Adams & Adams Centre for Intellectual Property at the University of Pretoria, South Africa, in May 2014.

[2] Prof. Dr. Ian Blackshaw is an International Sports Lawyer, Academic, Author and Member of the Court of Arbitration for Sport, Lausanne, Switzerland. Amongst other appointments, he is also a Visiting Fellow of the prestigious Adams & Adams Centre for Intellectual Property Law at the University of Pretoria, South Africa and a Member of the World Intellectual Property Organization Arbitration and Mediation Centre, Geneva, Switzerland. He may be contacted by e-mail at ian.blackshaw@orange.fr.

[3] Other IPRs, such as patents, for example, are of limited application and importance in sports law, although they do figure – to a certain extent – for example, in connection with the commercialisation of sports equipment and so-called “sports movements” such as the “Fosbury flop”.

[4] Reproduced in The International Sports Law Journal, ISLJ 2008/3-4, at p. 146-150 (both inclusive).

[5] Notice that the list of examples is illustrative and not exhaustive.

[6] For further information on trademarks generally and, in particular, their territorial nature and, therefore, the need, in the case of sports events that are going to be commercially exploited internationally, to register them widely around the world and also in the relevant use classes under the Nice Classification of Goods and Services for Trademarks, see Chapter 10 entitled, “Intellectual Property Rights and Sport”, by Ian Blackshaw in Sports Law by Gardiner et al, Third Edition, Cavendish Publishing, London 2006.

[7] See later.

[8] For the full text of the ECJ Preliminary Ruling in the ADIDAS “three stripes” trademark case, see: http://www.curia.europa.eu/jurisp/cgibin/form.pl?lang=EN&Submit=rechercher&numaff=C-102/07.

 

[9] In: GSLTR, 2012/1.

[10] GSLTR, 2013/2, at p. 23-27.

[12] [1982] RPC 69.

[13] University of Kent, United Kingdom, LW556, Intellectual Property Law Dissertation, 2005/2006: www.kent.ac.uk/law/ip/resources/ip_dissertations/2005-06/Stefan-Hagan.doc.

[19] Official website: www.wipo.int.