When the eighteenth Fifa World Cup kicks off next Friday (9 June), the millions of spectators worldwide will be unaware of the legal wrangling that has been going on behind the scenes to protect Fifa’s IP.
Fifa’s rights protection programme started two and a half years before the the referee’s whistle which will signal the start of the tournament. Tom Houseman, head of legal affairs at Fifa Marketing and Television, is leading the initiative, bringing together his world dream team of lawyers working across jurisdictions to police the infringements of Fifa’s IP.
“Essentially, the rights the sponsors get are based on IP principles,” player-manager Houseman says. “The sponsorship is worth hundreds of millions of dollars, and if we don’t protect it, and our sponsors’ exclusivity, there’s a grave danger that sponsorship dollars will go elsewhere.”
Much of the Fifa World Cup Organising Committee’s €400m (£272.66m) revenue comes from marketing agreements with its 15 official partners, which trade off the goodwill associated with the tournament.
Houseman’s challenge is to defend Fifa’s IP by preventing goodwill being eroded by trademark infringement, illegal tickets sales and ambush marketing (where a company that is not an official sponsor of the tournament suggests that it has a relationship with Fifa through misleading advertising or marketing campaigns).
More than a billion people are expected to tune in to the World Cup final this year, with a cumulative viewing public of 30-billion for the whole competition. That makes it a very tempting target for many companies.
This means that Fifa often goes head-to-head with household names. For example, Korean electronics maker LG recently broke through Fifa’s defence by sponsoring a special 16-page World Cup supplement in a men’s weekly magazine, despite not having an agreement with Fifa to do so. Although the supplement features none of Fifa’s official trademarks, the proximity of the company’s logo to pictures of international footballers may confuse readers into thinking LG is a World Cup sponsor.
No action has yet been taken on this matter, but it shows the difficulty Fifa has with ambush marketing. There are no specific laws prohibiting it and it often falls into the category of a trademark dispute.
Fifa has to prove that the company is infringing its trade mark by passing off, which is easier to prove in counterfeiting claims rather than cases of ambush marketing.
Fifa has logged 2,500 violations of its IP since the inception of its World Cup 2006 rights protection programme. The rampant infringement has kept a dedicated 12-player team at Fifa busy.
Fifa has bolstered its ties with the in-house team at Uefa in response to the extra work. But the two teams have not combined completely yet, with Uefa gearing up for a similar IP fight for Euro 2008 in Austria and Switzerland. Uefa’s Jerry McGrath (a senior in-house lawyer) says: “There’s a certain element of working together, but in terms of strategy and tactics it’s mostly down to Fifa.”
Houseman’s legal dream team lines up in a conventional formation. The defence receives, logs and monitors potential IP infringements. This work is handled in-house in the main. The midfield is made up of permanent trademark advisers – lone playmakers that, according to Houseman, “bridge the gap between the in-house and private practice lawyers”.
UK trademark adviser David Gill is an ex-Fifa employee and as a result can offer a real insight into how IP works within Fifa’s business, according to Houseman. These lawyers hold many of the keys to Fifa’s outsourced work and so are important figures for law firms on the outside looking in. Fifa has outsourced some of its work to firms in the major European jurisdictions of Germany, the UK,
France, Italy and Spain.
Fifa typically turns to Hammonds for its strikers. The national firm handles Fifa’s pressing priorities, including the illegal trade in match tickets, ambush marketing and match ticket competitions not sanctioned by Fifa. The latter skates the thin line between the banned trade in tickets, trademark infringement and ambush marketing.
Uefa’s McGrath sees the competitions as a major worry. “These competitions are a concern because they cut across sponsor exclusivity and also cause a fairly big safety and security issue: you worry about who’ll be getting their hands on those tickets,” he explains.
In the run-up to the World Cup, Hammonds has beefed up its Fifa client team, which now comprises eight lawyers at any one time. And there is plenty of work, with the World Cup just a week away. “At the moment we’re getting two or three instructions a day,” says Hammonds sports solicitor Stephen Sampson.
Hammonds’ association with the football body stems from partner Alasdair Bell, who was Uefa’s main outside counsel for several years. When he joined Hammonds in 2004 from Olswang, he took the work with him. But Fifa is changing the way it handles its IP and Olswang has been the firm to capitalise in the UK. Olswang partner
David Zeffman has been quick off the mark and has scored the mandate to advise Fifa on the auction of its broadcast rights for the 2010 and 2014
Houseman, whose first major tournament as an in-house lawyer was Euro 2000, is hopeful that he will have less to do in the future.
His plan is to put a stop to ambush marketing before the advertising campaign goes ahead. This will come through closer relationships with national football associations and their sponsors, which can sometimes get carried away in World Cup year.
When the referee blows his whistle to kick off the opening match, he will start a tournament that would not exist without its IP and the lawyers who protect it.