In this special World IP Day article, Prof Owen Dean revisits the theme of IP rights protection for sporting events in South African law, with a focus on the developments and the Cricket World Cup 2019 as an example.
Major sports are big business and vast sums of money are involved in staging sport events. This global trend was brought into sharp focus in South Africa during the 2010 FIFA World Cup.
The 2010 FIFA World Cup provided an excellent example of the role that branding plays in major sports, and how it can benefit the organisers of major sporting events and the sponsors of such events generally and more especially in South Africa. The strategy and formula adopted by FIFA in 2010 in relation to the use and protection of branding is available to the organisers of all major sports events, irrespective of whether they are held in South Africa or elsewhere.
The globalisation of major sporting events has made it necessary for the indicia associated with such events to be protected on a world-wide basis, as indeed was done by FIFA in 2010. Consequently, the organisers of major international sporting events held in other parts of the world commonly protect their intellectual property associated with such events in South Africa as well.
The Federation Internationale de Football Association (FIFA), a long established organisation, has developed a very clear policy for the protection of brands relating to the tournament. This model could be followed by, for instance the International Cricket Council (ICC), the organisers of the Cricket World Cup, and more particularly in respect of the 2019 World Cup tournament which will be held in the United Kingdom, commencing on 30 May when South Africa plays the opening match against the host nation, England.
FIFA adopts and protects several different categories of brands in connection with the World Cup. There are various generic brands which apply to its activities in general and to every World Cup, such as the mark FIFA, and the representation of the World Cup trophy. There are also brands which denote the particular tournament itself, such as GERMANY 2006 and SOUTH AFRICA 2010. Then there are event specific brands such as the official emblem for each World Cup, the official mascot for the tournament, and the name of that mascot. Similarly, the ICC has generic brands for its World Cup, as well as specific brands that relate to specific tournaments. This is true of the 2019 tournament. The official emblem of this tournament consists of a stylistic representation of a set of stumps topped by a cricket ball against the background of a representation of the globe (it is also a representation of the World Cup trophy); the words “ICC CRICKET WORLD CUP: ENGLAND & WALES 2019”.
This emblem constitutes an artistic work in terms of copyright as well as a trade mark. This gives rise to a variety of manners of protection under our intellectual property law.
Trade mark registration
The protection of the ICC’s brands by their registration as trade marks should be at the forefront of their strategy. Generic trade marks, such as the mark ICC, ought to be registered in South Africa in respect of a wide range of goods and services. These registrations would cover all successive cricket world cups. For this year’s event, the specific marks pertaining to it ought to be registered in an extensive range of classes, more particularly those classes comprising goods and services applicable to merchandising. Clothing, ornaments, sports goods and the like come to the fore. The official logo is the principal event-specific mark and requires the most comprehensive protection possible.
Registration of these trade marks enables the ICC to prevent the use of them, or confusingly similar marks, without their permission. This is the key to a successful branding campaign.
Registration of Designs
In addition to registration as a trade mark, the official logo and other logos could also registered as designs under the Designs Act in several classes. These designs are mainly used for the ornamentation of goods, but in the case of ornaments and other three-dimensional articles, they could cover the shape and configuration of the articles. The primary value of design registrations is that they can be obtained within a short time span, as opposed to trade marks which take considerable time to be registered, and the designs can provide useful interim protection pending the registration of trade marks.
Registration of the designs enables the ICC to prevent the use of designs not substantially different to them.
Merchandise Marks Act
The Merchandise Marks Act, 1941, contains a provision, in Section 15, which allows for the Minister of Trade and Industries to prohibit the use of certain marks. The ICC can rely on this provision and make application to the Minister of Trade and Industry for the prohibition of a wide range of World Cup marks. If the application finds favour, the minister will issue a notice prohibiting the use of the marks without the ICC’s consent. It is likely that the protection would be made subject to certain conditions. In the case of an application made by FIFA for protection of its 2010 marks such convoluted and stringent conditions were made that no efforts were made to enforce any rights under that notice. The minister’s attitude in this regard was strange since on previous occasions marks such as the OLYMPIC SYMBOL and designations of other sports events had been granted protection virtually unconditionally.
One of the virtues of this form of protection is that breaches of the protection constitute criminal offences which means that the rights created can be enforced under criminal law with all its measures available to counteract unlawful conduct. This is particularly useful for the seizure of infringing goods.
The common law remedy of passing off provides the ICC with a vehicle for protecting its marks. The significant publicity attached to the staging of the 2019 Cricket World Cup will undoubtedly established a strong and significant repute in the ICC’s various trade marks connected with the event. This repute, and the goodwill flowing from it, will provide a platform for the ICC on which to make passing-off claims where other parties use marks wrongly suggesting an association between goods/services to which they are applied and the tournament, without the ICC’s authority. In the corresponding situation regarding FIFA and its marks, a finding that such a repute had been established was made in the case Federation Internationale de Football Association (FIFA) v Metcash Trading Africa (Pty) Ltd.
FIFA’s ability to rely on passing-off was considerably fortified by an earlier case that it had brought in South Africa in 1994 during the time of the FIFA World Cup was held in the USA. In that case, FIFA had successfully claimed passing-off against a clothing manufacturer which had marketed clothing bearing the trade mark “WORLD CUP” at the time of the staging of the event in the USA. Even at that time, FIFA was able to satisfy the court that the term WORLD CUP denoted a trade connection with itself.
This case was of great significance at the time because in an earlier case the court had held, in dealing with the phenomenon of so-called “character merchandising”, that there was no reason to suppose that the public would associate, for instance, a restaurant trading under the mark DALLAS with a television series having the same name. The court thus refused to accept that the practice of “character merchandising” was established in South Africa. FIFA was able to overcome the court’s unwillingness to recognise this phenomenon and to satisfy the court that the use of the trade mark WORLD CUP in the given circumstances was likely to cause the product in question to be presumed to have a trade connection with FIFA and the football tournament.
Ambush marketing takes place where a non-sponsor of a major event seeks to create the impression that it is a sponsor or seeks to benefit its own trade marks from the publicity attaching to the event. Both of these forms of conduct are aimed at enjoying the advantages of being a sponsor of the event without making any financial contribution to the funding of the event. Section 15A of the Merchandise Marks Act empowers the Minister of Trade and Industry to declare a major sporting or other event to be a Protected Event. Such a declaration gives rise to various procedures to prevent ambush marketing and pronounces violations of the provisions to be criminal offences. The 2010 FIFA World Cup enjoyed the benefits of such protection and it was widely used by FIFA. However, the section is effectively limited to events taking place in South Africa and it would thus probably not be available to the ICC in respect of the 2019 Cricket World Cup.
Copyright in Artistic works
The official logo of the 2019 ICC Cricket World Cup, as well as its other device marks and other visual emblems constitute “artistic works” for purposes of the Copyright Act. Relying on copyright has the distinct advantage that this form of protection is available automatically and instantaneously and requires no form of registration. Unauthorised reproduction or adaptation of any substantial part of these works can constitute copyright infringement, which is a useful form of protection in the context of a major event. The same considerations apply, of course, to any mark which constitutes a “literary work”(i.e. a work expressed in writing) for purposes of copyright law. Copyright infringement can constitute a criminal offence, which means that criminal enforcement measures are open to the ICC as a copyright owner.
Copyright infringement in respect of the official logo was in fact relied upon by FIFA in the build up to, and during, the 2010 FIFA World Cup, particularly at a time prior to the corresponding trade marks being registered.
The Counterfeit Goods Act, 1997, provides effective criminal enforcement procedures and remedies in the case of goods which infringe registered trade marks (and well-known unregistered foreign trade marks), copyright, or rights existing in terms of a prohibition declared by the Minister of Trade and Industry in terms of section 15 of the Merchandise Marks Act. This Act is particularly useful in seizing infringing goods in the market place and preventing trading in them. This facility is available to the ICC in respect of its trade marks and copyright works.
Where a trader causes damage to a competitor through intentional or negligent conduct which is unlawful in that it is contrary to accepted standards or public policy, the competitor has a civil law claim of unlawful competition. The required damage can take the form of lost royalties for use of marks. One of the recognised forms of unlawful competition is conducting a trading practice that offends against a statute. If a trader offends against, for instance, section 15 of the Merchandise Marks Act by misusing a prohibited mark owned by the ICC, that body would have a civil law claim of unlawful completion against that trader over and above the criminal offence that will be committed.
FIFA brought a successful unlawful competition claim against a trader who perpetrated ambush marking in contravention of section 15A of the Merchandise Marks Act in FIFA v Metcash Trading (Pty) Ltd. This common law remedy supplements the various statutory remedies that the ICC can rely on to protect its marks.
The ICC could also derive assistance in protecting their marks from the quarter of the Advertising Regulatory Board (ARB), a voluntary body constituted by the advertising industry. It has a Code of Advertising Practice. The Code provides sanctions against, inter alia, exploitation of advertising goodwill and imitation of advertising. Violations of the Code are censured by the ARB and offending advertisements can be removed from the advertising space by its rulings. These advertising misdemeanours basically correspond to the legal remedies of passing off and copyright infringement and these activities can thus be countered by invoking the intervention of the ARB in addition to, or in lieu of taking legal action in the court.
Proper utilisation of the law
The ICC has a strong armoury of IP weapons at its disposal to protect and capitalise commercially on its branding during the 2019 Cricket World Cup. The commercialisation of the brands connected with the tournament contributes substantially to the tournament being successful in all respects, and particularly from a financial point of view.
It is apparent that South African law grants effective protection for sports brands, provided it is properly utilised, as was the case with the 2010 FIFA World Cup. This requires a proper understanding of the nature of brands in the field of sports and a considered approach to using the law and the facilities that it makes available to the best and fullest extent. However, sporting bodies and administrators appear to lack a proper appreciation of how sport fits into the intellectual property sphere and fail to adopt well planned strategies to maximise the value of intellectual property, and more particularly trade mark law, in protecting their valuable brands to the fullest extent. This unfortunate state of affairs appears also to extend to Government as well and its thinking is somewhat muddled on the issue. 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 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.