FIFA, Vuvuzelas And Facebook: The Global Trophy Of IP Protection

In the run-up to the Fédération Internationale de Football Association (FIFA) World Cup in South Africa, sometimes described as the biggest marketing event in the world, there have been a number of instances where FIFA and local businesses have conflicted over the use of terms to advertise their products.

FIFA has been enthusiastic in its protection of all terms and marks that could be related to the 2010 Football World Cup in South Africa. This stems from its desire to guard against ambush marketing – the practice of trying to benefit from the advertising of a competitor by linking a product or service with a competitor’s name – among other intellectual property infringements.

Swiss-based FIFA relies on a number of South African statutes to protect its trademarks and designs. The World Cup being declared a ‘protected event’, in terms of Section 15 A of the South African Merchandise Marks Act, available here [pdf], has reinforced this protection.

In order to prevent arguments of a lack of knowledge or understanding as to the use of terms or marks, FIFA has produced a guide to what constitutes an infringement [pdf]. According to this guide, an infringement occurs when material creates an unauthorised commercial association with the 2010 FIFA World Cup. This association can be made by the use of an official mark, ticket promotion or giveaway, the use of a work, emblem or other reference to the event.

FIFA’s website explains that the guide is intended to be a more user-friendly version of the FIFA rules on trademarks, however research online has failed to discover the actual rules.

Other sports federations have been busy in recent years with similar efforts to protect rights (IPW, Trademarks/Geographical Indications, 12 February 2009).

FIFA has enforced its trademark rights in a number of instances in the lead-up to this week’s event. News24, a South African news source, reported that FIFA announced that it has had 400 cases related to ambush marketing and trademark infringements and three have led to court proceedings. According to News24, of these three, one was settled by a court order consented to by the parties; another is still pending and in the third the court found in favour of FIFA.

In an example that has been well-known to South Africans for months, when Kulula.com, a low-cost airline, produced an advertisement about the prices of its flights during the World Cup, FIFA asserted its IP rights. Although Kulula.com withdrew the advertisement, it subsequently produced another advert which satirised the perceived heavy-handed approach taken by FIFA. Original ad here. Subsequent ad here.

FIFA’s efforts at protection are not new. After South Africa was announced as the host of the 2010 Cup, on 15 May 2004, FIFA registered a number of trademarks in order to protect its interests and was declared a ‘protected event’ in terms of the Merchandise Marks Act on 25 May 2006. Deutsche Welle newspaper reported that when Germany hosted the World Cup in 2006, a court in Karlsruhe rejected FIFA’s attempt to register “Fussball WM 2006”. The court found that it was a generic phrase that referred to a sports event and not to a body such as FIFA and called on lower patent courts to make case-by-case decisions on companies using just the “WM 2006” slogan on products, WM being a German abbreviation for World Cup.

South Africans have started a trend of using the South African flag as decoration on everything from cars to wigs and vuvuzelas (a blowing horn, approximately one metre in length, commonly blown by fans at soccer matches in South Africa). Although the use of the flag is controlled by the Heraldry Act, and also constitutes a mark under the Merchandise Marks Act, it seems that this use has not been termed an abuse in terms of either statute.

The sale of counterfeit World Cup merchandise is a battle that FIFA has been fighting for a number of years. According to FIFA since the World Cup in France in 1998 there has been a strong drive by them to investigate and prevent the sale of counterfeit paraphernalia in the host country and around the world. FIFA has created a rights protection programme (RPP) which, is aimed primarily at tackling organised “ambush marketers”, counterfeiters, unauthorised ticket sellers and other “event pirates”. This programme is made of experts who work on the ground in the host country in partnership with local authorities.

A South African-based blogger for Afro-IP today gave a tongue-in-cheek account of the experience of a consumer on the ground dealing with IP protection and the high prices associated with that protection.

FIFA’s required use of the TM symbol above every reference to the World Cup (except for media purposes) has shown itself in a variety of places. For instance, a European Broadcasting Union press release was somewhat awkwardly riddled with TMs, and a World Intellectual Property Organization exhibition in Geneva with the South African government celebrating cultural diversity, IP and the World Cup led to a press release with TMs.

World Cup Meets Social Media

This year’s World Cup will create some precedents with relation to new media. What has changed since 2006 is the development and rampant democratisation of online social networks such as Facebook.

According to a recent survey conducted in France by Havas Sports and Entertainment marketing firm, referenced in news articles (in French) here and here, 500 people aged 15-35 years were surveyed in May on which new media they will use to follow the Cup action. According to the articles (the survey itself is not readily available), some 77 percent said they will follow on Facebook, 46 percent will use video platforms such as YouTube or Dailymotion; and 21 percent blogs and other forums.

Havas predicted that substantive “changes in the consumption of sport” would occur as a result of this massively followed World Cup.

However, it might be a source of conflict when social media users post videos without authorisation. Conflicts have arisen in the past between the social networking platforms and some European football associations, according to reports. What will be the case during the South Africa World Cup remains to be seen.

The brands clearly understand the benefits of investing in these community spaces. According to sources, here and here, most of the fourteen sponsors in the World Cup have already developed operations on social media.

In the end, this will be a sort of World Cup of IP rights issues. And that’s not even including the fight for rights over rules of the game or the ball itself.

Emma Broster (South Africa) and Cheikh Kane (Senegal, Switzerland) are currently researchers for Intellectual Property Watch.