If you’re a huge football fan like me (aka, “soccer” in the U.S.), then you’re eagerly counting down the days until the 2014 World Cup matches begin in June. This time, Brazil is hosting, which is great news for North American fans: We won’t have to stay up all night to watch the key matches. We’ll just be less productive workers or mysteriously ill for weeks, until the games are finished and the victorious team is crowned.
Introducing the World Cup Infringement Games
As you might imagine, football’s international governing body (FIFA) drives a hard bargain and exacts big concessions from each World Cup host country. FIFA is also extremely aggressive when it comes to policing intellectual property rights in the games, particularly trademarks. Do you remember the @SpaceHijackers kerfuffle with (Locog) during the 2012 Olympic Games in London, which I covered in the Twitter Kicks Olympic Parody blog post? Well, you should expect more humorous and bizarre stories of trademark disputes involving FIFA and this year’s World Cup.
Let me set the stage for the next international games trademark battle royale.
It All Started When FIFA Got a Sweetheart Trademark Deal from Brazil
When Brazil won the right to host the 2014 World Cup, it had to agree to some extraordinary terms and conditions that FIFA places on the host country. They include:
- FIFA’s right to file and fast-track registration of any trademarks it wants relating to the 2014 World Cup in the Brazilian Patent and Trademark Office (INPI) and not pay any fees;
- An exemption from any bond requirements relating to FIFA’s activities in the Brazilian courts, including payments relating to any efforts to enforce FIFA IP rights; and
- INPI agreement that all of FIFA’s World Cup trademarks are of “high renown” without the requirement that FIFA show any evidence of their fame.
Trademarks that enjoy a good reputation and fame (high renown) in Brazil are valuable assets that receive exceptional protection in “all fields of activity.” Importantly, Brazil has agreed that FIFA can sidestep the usual requirement that it submit significant evidence to show that each trademark is broadly known throughout the Brazilian territory, in all circles, in order to obtain this status. This means that FIFA can elect the all-important famous trademark status for any mark it chooses to register in association with the World Cup.
FIFA has filed new applications for almost 100 marks that will enjoy protection in all goods and services classes. So what kinds of marks will FIFA enjoy super-trademark rights in? Well, its new marks include the official games emblem, slogan (“All in one rhythm”), the FIFA World Cup Trophy image, and the names of all the cities hosting World Cup events, plus the year. This list includes Pagode 2014 and Natal 2014. Pagode is a city and a style of popular music in Brazil; Natal is not only a city that will be hosting games this summer, it is also the Portuguese word for “Christmas.” That’s right—FIFA has just secured exclusive rights to the term Natal 2014 (“Christmas 2014,” in English) in Brazil for all goods and services classes—until the end of 2014. It’s going to be a tough holiday season for local shop owners.
How to Get a Trademark Infringement Letter from FIFA or, Better Yet, Get Thrown in Jail
In my humble opinion, the easiest way to get into trouble with FIFA is to use its World Cup designs or marks, or make reference to the games in a manner that might suggest that your company or group has some official association or sponsorship relationship with the games, a team, or a player—but is not actually a sponsor. This is called ambush marketing, and the more direct the association suggestion you employ in a marketing campaign, the greater the risk that you receive a nice little letter from FIFA’s attorneys (or worse). FIFA’s website explains that it will not tolerate this type of marketing ploy.
Some of the most blatant examples of ambush marketing (and trademark infringement) involve unauthorized use of FIFA’s trademarks such as the games logo, slogan, and the association’s name in connection with your business. More subtle forms might involve images of Brazil or football games without specifically discussing or identifying the World Cup or FIFA. The context of the use is the driving factor. And remember, social media is a form of advertising too. In case you’re interested, FIFA’s provided a handy little guide on its brand protection policies and has even written public guidelines for use of FIFA’s official marks.
Under a special Brazilian World Cup Law, there is a 2-kilometer invisible bubble around each venue hosting World Cup games. Inside that bubble, only official World Cup sponsors’ products can be sold, distributed, or advertised. In the past, spectators trying to enter the games with “unauthorized” beverages, food, or swag from companies that weren’t official sponsors had to leave their goodies behind. Under this law, anyone engaging in “ambush marketing” could be held for 3 months to a year if they are found violating the anti-ambush laws.
So if you happen to score a group of tickets for this summer’s games, think twice before your group rolls into the stadium with matching company t-shirts and branded foam fingers. Or, alternatively, don’t forget your toothbrush.