IPR and Sports Marketing Issues in European Sports

Question 1

Why is IPR important?

Answer 1

It enables the sports organisations to exploit not just the sporting event in ways of sponsorships, endorsement contracts, licensing agreements, merchandise sale etc.

Question 2

What is ambush marketing?

Answer 2

A planned attempt by a third party to associate itself directly or indirectly with “the event” to gain the recognition and benefits associated with being a sponsor.

American Express - you need a passport - you don’t need a VISA

When one attempts to cash in on the lucrative opportunity of exploiting names, logos or symbols associated with an athlete or a sports organisation in the hope that this goodwill and popularity would rub off on their own products.

Question 3

How is trademark law regulated in the US

Answer 3

By the Federal Trademark Act - The Lanham Act

Question 4

What is the purpose of a trademark?

Answer 4

To secure trademark owners in the goodwill they have built up and in protecting the public from imposition by the use of counterfeit and imitated marks and false descriptions.
Designating the source of origin.

Question 5

How is a trademark defined in the Lanham Act?

Answer 5

As any word, name, symbol or device or any combination therefore adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.

Question 6

What is a service mark?

Answer 6

A mark used in the sale or advertising of services to distinguish the services of one person and distinguish them from the services of others.
Sports team names and logos are regarded as service marks.

Question 7

What is the difference between a trademark and a service mark?

Answer 7

A trademark identifies and distinguished the source and quality of a tangible product, a service mark identifies and distinguished the source and quality of an intangible service.

Question 8

How long can a mark be registered?

Answer 8

For 20 years and thus possibility of renewal.

Question 9

Does a trademark have to be used?

Answer 9

Yes, it must be protected against infringements - else it will become generic.

Question 10

Are colours protected?

Answer 10

MBL v. Salvino case - yes, colours can have secondary meaning - likelihood of confusion.

Question 11

Are nicknames protected?

Answer 11

The Colts case - The Court found that the likelihood of confusion for the market of professional football greatly outweighed the abandoned mark defence.

Question 12

Is trademark law regulated within the EU?

Answer 12

Yes, EU in 1988 implemented a Directive on trademarks.

Only had in view to approximate the national trademark laws in the various member states.

Question 13

What does Section 1 of the Danish Trademark Act state?

Answer 13

That persons and enterprises may obtain an exclusive right to trademarks.

Question 14

What is a trademark in relation to Danish law?

Answer 14

A distinctive sign for goods or services being used or intended for use by commercial enterprise.

Question 15

What is a fundamental legal requirement in order to render protect to a trademark within Danish law?

Answer 15

The distinctive character. May consist of any sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.

Question 16

What does a trademark often consist of?

Answer 16

Words, slogans, personal names, company names, letters and numerals, pictures and designs, shape etc.

Question 17

How can a trademark right be established according to section 3 of the Act?

Answer 17

1. By registration of a trademark right

2. By commencement of use (the distinctive character can be reached through use - obtaining a secondary meaning)

Question 18

Explain the Superliga case

Answer 18

Danish Football League had registered the trademark Superliga - Danske Spil had made the game Oddset Superliga Manager.
The Court held that the mark Superliga had sufficient distinction and had been used commercially, so that the league had obtained an exclusivity to the mark.

Question 19

How is a trademark protected under section 4 of the Danish Trademark law?

Answer 19

The proprietor of the trademark right shall be entitled to prohibit all persons not having his consent from using in the course of any sign if i) the sign is identical with the trademark and the goods or services for which the sign is used are identical with the goods or services for which the mark is protected or ii) the sign is identical with or similar to the trademark, and the goods or services are identical with or similar to those covered by the trademark, if there is a likelihood of confusion.

Question 20

Explain the Reed case

Answer 20

Landmark ruling regarding the use of marks and badges
Case summary:
In 1989 Arsenal FC registered the word marks ”Arsenal” and ”Arsenal Gunners” for a class of goods comprising articles of sports clothing etc.
Since 1970 Mr. Reed had sold official and unofficial football souvenirs and memorabilia marked with signs referring to Arsenal FC from several stalls outside Emirates Stadium. On his stall he had a large sign with a text stating that “The word or logo(s) on the goods offered for sale, are used solely to adorn the product and does not imply or indicate any affiliation or relationship with the manufacturers or distributors of any other product, only goods with official Arsenal merchandise tags are official Arsenal merchandise”
Mr. Reed clearly distinguished between official and unofficial products when dealing with customers for instance by labelling official products “official”.
ECJ - focus on the guarantee of quality.
Even though badge of support, loyalty and affiliation to Arsenal, not sure that Reed’s use of the trademark would not jeopardise their function - namely to guarantee origin.

Question 21

Explain the Barca case

Answer 21

A cafe in Manchester was names Barca - the question was whether that was allowed since FC Barcelona has registered Barca.
Even if the term Barca did recall Barcelona in some way - the public would not believe that Barcelona had set up a bar in Manchester.

Question 22

How is copyright regulated in the US?

Answer 22

By the US Copyright Act of 1976.

Question 23

What is the purpose of the copyright act?

Answer 23

To protect artists, authors and composers primarily from the unauthorised copying of their original works of authorship fixed in a tangible medium.

Question 24

What does copyright depend on in EU?

Answer 24

To protect a literary or artistic work a requirement of original creation is set up.

Question 25

Can normal sports performances be copyright protected?

Answer 25

No, only sports performances in which the aesthetic element plays a decisive role in the overall impression can enjoy protection, e.g. ice-skating.
The element of unpredictability is important.

Question 26

Explain the Right of Publicity

Answer 26

The property right can be infringed by the unpermitted use of a person’s name, likeness og persona in a commercial setting.
Protects public figures including sports celebrities from having the publicity value of their names and reputations unlawful appropriated by others.
For the first time acknowledged in the US, in the Chewing Gum case.

Question 27

Explain the Cardtoons case

Answer 27

A case regarding baseball cards with the player’s images found on the front and the biographical data on the back - the images were caricatures.
Court: no likelihood of confusion between Cardtoons and officially licensed baseball cards - the Court applied the fair use defence to the right of publicity.
Learning: The important thing is commercial use.

Question 28

What is the landmark decision in Denmark on protecting of the image rights?

Answer 28

The Buster Larsen case.
Since then, Danish Courts have rendered protection against commercial misappropriation of a well-known person’s name, picture og likeness.

Question 29

What can be said regarding the protection of images rights in Denmark?

Answer 29

That no publicly well-known person’s name or picture or likeness may be exploited commercially without his or her consent.

Question 30

Mention some cases on images rights from Denmark:

Answer 30

Sanne Salomonsen:
Sanne Salomonson case (UfR 1986.405Ø)
Picture taken of Danish singer, Sanne Salomonsen, while sunbathing topless, published in men’s magazine without her consent
High Court awarded her compensation for violation of her Right of Privacy but no compensation for the magazine’s economic exploitation of the pictures

Preben Elkjær case (UfR 1988.989H)
PE sued the department store, ILVA, who had made the following add in connection the World Cup match “Laudrup, Elkjær & Co. are closing ILVA tonight at 7 o’clock”
And with smaller text: “Normally ILVA is open until 8 o’clock […] but today we close at 7 o’clock so everyone can go home and watch the WC match”.
Supreme Court: Use of names was done in a relevant and permissible context, where no one could reasonable expect that the players would actually be at the store (since they were in Mexico).

Bamses venner (UfR 1998.1435Ø)
“Brøndby against Bamses Venner” (AGF)
Use of the band name as an eye catcher but the name had not been associated with the sporting event to create a relevant connection between the use of the name and the desire to promote sales.

Question 31

Explain the Karin Mortensen case

Answer 31

Karin Mortensen (UfR 2008.174H)
Poster could not be regarded as part of the editorial coverage of the celebration of the championship. Unlawful commercial exploitation of the plaintiffs image rights.
Compensation of damages amounted to 100,000 DKK

Question 32

Regarding the relationship between leagues and team how is it done in the US in relation to sports marketing rights?

Answer 32

The sale of sports marketing rights in the major leagues have chosen the same path as sports broadcasting rights - collective selling.
The league often through its teams, establishes a separate corporation which acts as the licensing agent for the league and the teams that make up the league.

Question 33

What is the purpose of the established corporations in relation to sports marketing rights?

Answer 33

That they act as agents and have the exclusive right to license for commercial purposes the use of names, logos, symbols, emblems, signs, uniforms and identification of the league and its member clubs.

Question 34

How is the revenue generated from the sale of licensing and sponsorship rights shared in the US?

Answer 34

Equally among all the teams in the league.

Question 35

Explain the Dallas Cowboys Football case

Answer 35

NFLP, Inc. v. Dallas Cowboys Football Club, Ltd. (1996)
NFLP had entered into long term sponsorship contracts with Coca Cola and Reebook and Converse on behalf of all NFL teams
Texas Stadium (DCFC) claimed that each NFL team could do better on their own than what they did by the equal sharing system
Owner, Jerry Jones, entered into a long term contract with Nike and Pepsi Co.
NFLP Sued Texas Stadium for violating the license agreement between DC FC and NFLP and infringing on NFLP’s rights
Texas Stadium argued they were not bound by the agreement
Court: defendants conduct caused violation and derogation of contractual rights granted by the NFLP to its licensees and sponsors, making it impossible to honor contractual obligations.
Counter lawsuits filed by JJ, TS and DC: NFL’s centralized exclusive licensing agreement exercised through NFLP violated the Sherman Act as an unlawful Cartel.
Anti-trust violation argument dismissed by District Court. But found that the other NFL teams had failed to prevent the “campaign of discrimination and harassment by NFL Properties against plaintiffs”

Question 36

How is the relationship in Denmark regarding teams and leagues in relation to sports marketing rights?

Answer 36

Leagues in their capacity as the formal arrangers of the championship and the teams and the practical arrangers would possess joint ownership broadcasting and markering rights.

Question 37

Explain the DBU case

Answer 37

DBU could, as the formal arranger of football matches, prohibit Danmarks Radio from broadcasting “game in progress” news before the end of matches
Court took for it’s basis that the broadcasting and marketing rights belonged to the leagues and teams jointly, 50/50.

Question 38

What is the relationship between teams and players/players associations in the US?

Answer 38

The Players associations need to drive its licensing rights from its member-teams. The teams are under the same obligation towards the players and their associations.
Often a part of the CBA.

Question 39

What can be said in relation to the players own marketing activities?

Answer 39

That many individual player contracts prevent athletes from endorsing any product or services or exercising their publicity rights on behalf of any sports marketeer without the express consent of the team or the league.

Question 40

What is the relationship between teams and players/players associations in Denmark?

Answer 40

Historically: Clubs were allowed to commercially exploit the rights of the players
In 1999 a CBA was entered into between the Danish League Association and the Players’ association containing provisions on image rights. Renewed in 2014.
Uniform Player contract from 2014 contains provisions on advertising and sponsorship rights. The contract has two options; one that adheres to the CBA and one that doesn’t (section 12a and 12b)
All clubs in the best Danish league are party to the CBA

Question 41

Explain the Faxe Kondi/Arla case and the Nicklas Bendtner case

Answer 41

The Faxe Kondi/Arla case
Conflict between The Danish Football Federation and the Players’ Association for the national team
DBU had a sponsor agreement with Arla (dairy products) and wished to protect Arla’s exclusivity
Two famous players, Brian and Michael Laudrup had a personal sponsorship contract with the brewery behind the soda Faxe Kondi which DBU and Arla considered competitors
After much media attention, the conflict ended once DBU agreed not to expel the players

Niklas Bendtner and Paddy Power (European Championships 2012)
Player was suspended for a day and fined EUR 100,000
DBU’s main sponsor at the time was Danske Bank

Question 42

Explain the newest DBU case from 2018

Answer 42

Agreement from 2015 expired shortly after the FIFA WC in Russia → Negotiation of new agreement
› Regulating the terms and conditions for players while they play for the Danish national team
› Main conflicts: Individual commercial rights, playing conditions, employer-employee relation?
› Friendly against Slovakia; Denmark played with amateur players
› Interim agreement (2015 terms) for the UEFA Nations League match against Wales
› 29 September 2018 new agreement was reached, expires 2024