Alexia Willetts IP counsel: IP-flyer

Alexia Willetts, West Brom fan and IP counsel at FIFA, has gone from Birmingham trademark trainee attorney to key player for the world’s biggest sporting events

Willetts

Sat in the bowels of the 45,000-capacity Loftus Versfeld Stadium in Pretoria, South Africa in the summer of 2010, lawyer Alexia Willetts was typing away on her laptop in a changing room toilet while wearing a bullet-proof vest.

Daily 6am security briefings were followed by long days with the stadium management team, ensuring the FIFA World Cup fixtures passed off without any infringements affecting the corporate sponsors. It was quite a leap from her grounding as a trainee trademark attorney in Birmingham, but that was the environment she had parachuted into upon accepting the job as IP legal counsel and head of trademark registration for world football governing body FIFA.

Keepy-uppy

Currently, Willetts is attempting her own game of keepy-uppy. As a key player in the preparation of global sporting events watched by billions, Willetts is juggling a number of international tournaments stretching a decade into the future. Ongoing projects include finalising Brazil 2014, Russia 2018 and starting the process of Qatar 2022.

Then there’s the FIFA Womens’ World Cup in Canada 2015, the African Cup of Nations, youth tournaments and even beach soccer events.

Willetts is surrounded by sport – indeed, her day job brings her into contact with a range of sports far broader than just football. On the day The Lawyer caught up with her, she was surrounded by sports cars at a celebration of speed event.

Willetts certainly had to make a racing start when she took on the role in the run-up to the 2010 FIFA World Cup, staged in South Africa. But that steep learning curve has armed her with a wealth of IP experience at the cutting-edge of global tournament staging – a topical area given the scrutiny of Locog’s execution of the London 2012 Olympic Games.

The FIFA IP department is split into two units, with Willetts’ team responsible for IP registration and another unit protecting the brand.

Willetts works closely with the brand development team, including designers, to create marketing assets and then trademark-protect everything from the ‘dressage’ of the event through to the official mascot.

“I’m the custodian of the trademark portfolio,” Willetts says. “This is quite diverse and is put in place for every tournament we do. Depending on the scale it involves developing a series of marketing assets to promote the event, such as posters, emblems and slogans.

“This process starts as soon as the host country is announced, if not before, so at the moment we’re working 11 years in advance.”

Willetts says there is a certain methodology that can be applied to each tournament, but that one of biggest challenges is getting to know the legal parameters in different host countries.

“Due diligence is essential at this point because a lot of money is spent on the design and we have to be sure what can and can’t be registered, how unique the design is and if there’s any conflict,” says Willetts. “We have to look for any potential cultural insensitivity and avoid political messages too. We have to be switched on about geography and history – are we copying historical artworks with the designs? Then there’s the challenge of languages and filing trademarks in different jurisdictions.”

Willetts and her small, award-winning unit of five IP managers (they won the World Trademark Review IP Team of the Year in 2010) are essentially creating a legal framework to prevent misuse of the events’ assets. The official ‘look’ of a tournament has grown in significance and is now such a wide-ranging remit that the registration unit is constantly looking for creative ways to protect it.

“It goes way beyond a logo,” explains Willetts. ”It is the whole imagery of a FIFA World Cup. You can’t possibly lock down everything, but we do as much as we can. The scale and volume is mind-blowing. There are six of us in the in-house team coordinating all of this, with a big network of external counsel.”

Willetts regularly uses Mark Holah, head of Field Fisher Waterhouse’s trademarks and brand protection group, as well as her old firm Marks & Clerk, former FIFA trade mark attorney David Gill and a strong contacts book of lawyers from the UK.

Home help

Willetts insists on consistency within the FIFA portfolio, but says using domestic firms based in the host country is beneficial in terms of lawyers’ understanding of language, culture, legal procedures and local issues. Her unit advises FIFA’s team on what remedies are available to safeguard commercial affiliates of the events and whether the country has  legislation to protect sports rights holders and special events providers.

With a job of this size, Willetts says the toughest task is project managing all the forthcoming events. This means having a “good synergy” with the brand management and artistic teams, and having experienced lawyers on the ground to “navigate any surprises”.Willetts did not offer a comment on the infamous 2010 World Cup Bavaria Beer ambush marketing stunt, where 36 orange-clad women were arrested under the Contravention of Merchandise Marks Act. That side of the trademark enforcement is led by the brand protection team, but it surely highlights the original thinking that constantly tests IP law.

Then there are the last-minute suggestions from local organising committees (the football family) that need “guiding”, which Willetts puts down to FIFA’s unique business model of retail and licensing and staging sporting events.

“You have to be reactive to that,” the West Bromwich Albion fan adds, with an appropriate analogy. “You need to kick the football back that’s being kicked at you.”

Willetts tracked the coverage of London 2012 organiser Locog’s trademark protection with a keen professional interest. Locog faced criticism in some quarters for being heavy-handed about the logo and wording, as well as boundary-pushing advertising campaigns by unaffiliated companies.

“It’s the same for all big sports event providers,” argues Willetts. “They do their best to protect the events and the trademarks. The Olympics and FIFA events are based on related models. It takes a lot of money and that has to come from somewhere. It’s not unreasonable [for Locog to take action] when some try to take advantage without supporting the event officially.”

FIFA itself is constantly under scrutiny for the way it runs the world’s most popular sport and also with recent bribery allegations.

Alexia Willetts, FIFA

Position: IP legal counsel and head of trademark registration

Industry: Football

Turnover: $1,070m

Staff: 350

Legal capability: Six

Main external law firms: Field Fisher Waterhouse, Marks & Clerk

Terry Miller, head of legal, Locog

Terry Miller

The London Organising Committee of the Olympic and Paralympic Games (Locog) had one brand protection team of 10 people at its peak. It was responsible for registration and enforcement, and it reported to me.

We worked with the brand and marketing department as it developed the logo, and were involved all the way through the pre-registration period.

As well as standard trademark infringement statutes available to everybody Locog has special rights under the London Olympics Association Right (Loar), put in place in 2006, which includes statutory ‘anti-ambush’ rights we can enforce until it expires on 31 December.

Sponsors are delighted about the success of the Games and want to use their exclusive marketing rights until the Loar ceases to exist.

With such a sophisticated market in London we were anticipating some attempts to ambush and made it clear we would use Loar to deal with commercial abuse.

There were some quite clever campaigns – some were fine, but others where the wrong side of the line. Some of these we talked to if we were unhappy and they fixed things, while others did not.

In each of these situations you have to decide what to enforce and what not, bearing in mind that forcefully addressing a campaign can, in fact, add a huge amount of publicity to it.

Alexia Willetts’ career

The “cloak and dagger world” of IP was the furthest thing from Willetts’ mind when the law graduate became disillusioned with the profession after leaving the University of Birmingham.

Following a couple of employment law placements in the second city Willetts spent the next four years as a recruiter with Angela Mortimer Group and then Michael Page Legal in Birmingham. She met Forrester Ketley & Co (now Forresters) trademark attorney Matthew Shaw, who recognised her “commerciality” and convinced her that her future was in IP.

Although Shaw was not hiring, he recommended that Willetts apply to Marks & Clerk.

Despite not being the average trainee fresh out of university, Julie Kay and Rebecca Tew took a chance on the 26-year-old and she joined the Birmingham office in 2006.

Willetts says her “aggression” and ambition drove her to complete her Institute of Trade Mark Attorneys qualification before she was 30 and she worked with clients such as kitchen appliance company Pulse (managing brands such as Breville and Nicky Clarke), orthopaedic surgeon Derek McMinn and Sugar Puffs cereal producer Big Bear.

During her time with Marks & Clerk Willetts says she learned “a lot of what’s involved in the creation of a brand”, especially the importance of taking a long-term strategic view.

“People can be a little short-sighted, they just don’t appreciate the expansion of a brand and wrongly assume it’ll be fine to take it into the next market,” she explains. “You have to map clients into the future, see what other people are doing in growth areas and look at other jurisdictions if the client goes international.

“As a result of filing trademark applications you can get aggressive rivals coming to the table accusing you of infringing their rights.”

Willetts’ strongpoints are in the groundwork phase, working with parameters for marketers and getting clearance by addressing any concerns from patent examiners. Yet she says she is partial to negotiating over the “odd squabble” too.

In 2009 she responded to a job alert and sent a speculative CV to FIFA, forgetting all about it until she got a call six months later. By November of that year she was heading to Zurich to help run the world’s biggest footballing event – a headline-grabbing transfer from her days as a recruiter in Birmingham.